- CQV Co., Ltd. v. Merck Patent GmbHNo claims unpatentablePTAB · Oct 14, 2025 · PGR2021-00054 · APJ Kristina M Kalan · PGR · Remand
Claims 1–22 were not shown unpatentable because Sample C was not proven publicly available as prior art, and the original decision found the remaining grounds insufficient.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We agree with Patent Owner that Petitioner’s evidence in Kuntz (Ex. 1026), the Annual Report (Ex. 1028), Masuko (Ex. 1029), and Pfaff (Ex. 1034) is insufficient to show that Xirallic® Sample C was available to the public before the effective filing date of the ’861 patent. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26. Kuntz, the Annual Report, Masuko, and Pfaff may support a finding that the Xirallic® line of products was available to the public, but these documents do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public. We also agree with Patent Owner that the Technical Data Sheets (Exs. 1005–1010), Certificates of Analysis (Exs. 1011–1017), and Material Safety Data Sheet (Ex. 1025) are insufficient to show that Xirallic® Sample C was available to the public. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26–27. Regardless of how the Technical Data Sheets were used in the Opposition against the European counterpart of the ’861 patent (Exs. 1040, 1041) and during the prosecution of the application from which the ’861 patent issued (Ex. 1003, 102–104), the Technical Data Sheets do not refer to or describe the lot of Xirallic® from which Sample C was taken. Moreover, as noted by Patent Owner, the Technical Data Sheets (Exs. 1005–1010) indicate that they are “preliminary” and Petitioner has not provided any evidence that the Technical Data Sheets were ever issued to the public, as opposed to just issued internally. See PO Resp. 18–19. We also find persuasive Patent Owner’s argument that the Technical Data Sheets are preliminary because other, later-dated technical data sheets (Exs. 2012, 2013) lack the “preliminary” label and list characteristics that are different from those in Exhibits 1005–1010. See PO Resp. 19 (comparing, e.g., Ex. 1009 and Ex. 2013; Ex. 1005 and Ex. 2012). The Technical Data Sheets may support a finding that the Xirallic® products they describe existed as of the dates on the documents, but they do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“witnesses. See Elbit Systems of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (citing Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982)). We have reviewed the witness testimony in the record and, more particularly, Mr. Choi’s deposition answers regarding Petitioner’s purchase of the lot of Xirallic® from which Sample C came. We find that Mr. Choi’s responses cast doubt on the credibility of his declaration testimony, namely with regard to the public availability of Sample C. Mr. Choi represented that he was involved in the purchase of the lot of Xirallic® from which Sample C was taken. Ex. 2011, 48:1–23. Mr. Choi stated that he instructed Petitioner’s marketing team manager to buy the sample from a distributor of Patent Owner’s products located in Europe. Id. at 48:24–49:4. Mr. Choi stated that he has evidence of the transaction, but refused to reveal the name of the company from which Petitioner purportedly purchased the lot of Xirallic® (id. at 49:5–50:3) and refused to produce an email in his possession that would corroborate his testimony regarding Petitioner’s acquisition of the product (id. at 50:8–16, 51:10–23). Mr. Choi represented that he does not remember how much Petitioner paid for Sample B. Id. at 56:4–5. Mr. Choi admitted that the entity from which Petitioner acquired the lot of Xirallic® from which Sample C was taken is “not currently a Merck distributor” (Ex. 2011, 50:4–7) and was not “a Merck distributor at the time” that “samples B and C were purchased” (id. at 51:25–52:2). According to Mr. Choi, the company is a “former distributor” of Patent Owner’s products. Id. at 52:3–6. Mr. Choi did not know, according to his testimony, when that unnamed entity first obtained the lot of Xirallic® (id. at 52:7–10) and he stated that he did not have personal knowledge of how the entity obtained the lot of Xirallic® (id. at 52:12–19). Instead, Mr. Choi assumed the entity was “able to obtain the sample through the routine course or process” the entity uses “to take samples or get samples.” Id. at 52:12–19. Mr. Choi believed the sample of Xirallic® from which Sample C was taken was sealed when Petitioner received it because samples from dealers are sealed, and he remembered observing that the package was from a dealer. Id. at 52:24– 54:25. However, Mr. Choi admitted that he did not obtain a technical data sheet or certificate of analysis for the lot of Xirallic® from which Samples B and C were taken. Id. at 59:6–11. Mr. Choi also answered questions regarding Petitioner’s purchase of Samples D and H. Ex. 2011, 62:20–66:8, 67:7–9, 73:12–13, 73:17–22. Similar to his testimony regarding Samples B and C, Mr. Choi admitted withholding an email regarding the purchase of the lot of Xirallic® from which Sample D was taken. Id. at 62:20–63:9. Mr. Choi also admitted that he did not know how Akzo USA or Axalta obtained the Xirallic® the companies sold to him, and admitted that Akzo USA was not a distributor of Patent Owner’s products at the time Petitioner purchased the product. Id. at 63:10–66:8, 73:17–22. Mr. Choi also admitted that Petitioner did not pay Akzo USA for the lot of Xirallic® from which Sample D was taken, and did not pay Axalta for the lot of Xirallic® from which Sample H was taken. Id. at 67:7–9, 73:12–13. Although Petitioner presents declaration testimony from Mr. Choi representing that he purchased the lot of Xirallic® from which Samples B and C were taken in October 2011 (Ex. 1004 ¶ 16), Mr. Choi’s declaration testimony lacks corroborating evidence, and his deposition testimony does not support that the product was available to the public, as we found in our Final Written Decision. See Final Dec. 27–28. Notably, Petitioner produced corroborating evidence for Mr. Choi’s acquisition of Samples A, H, and I. See Ex. 1004 ¶¶ 13 (citing Ex. 1047), 18 (citing Exs. 1024, 1025). However, Mr. Choi withheld similar evidence for the Xirallic® lots from which Samples B, C, and D were taken. See Ex. 2011, 50:8–16, 51:10–23, 62:20– 63:9; Final Dec. 28. As Patent Owner argues, there is “no information to determine when a contract was established, that there was consideration for the exchange, that the product was available to be delivered when the alleged transaction took place, or even when the product was delivered. Choi has no memory of what was paid for the product.” Sur-Reply 24–25; see also PO Resp. 13–14; PO Br. Rem. 2–4.” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the evidence discussed above, we are not persuaded that Petitioner has shown by a preponderance of the evidence that Sample C was available to the public. Regardless of whether a company avoids wasting shelf life of its products (Ex. 1004 ¶¶ 15–16), there is no persuasive evidence in the record showing that the lot of Xirallic® from which Sample C was taken was released from quality control and then made available to the public by Patent Owner. Mr. Choi’s testimony shows that Petitioner obtained the lot of Xirallic® from which Sample C was taken in an atypical manner (i.e., not from Patent Owner or one of Patent Owner’s current distributors) (Ex. 2011, 49:5–50:7, 50:8–16, 51:10–23, 51:25–52:6, 52:12– 19), and there is no evidence in the record to show that the lot of Xirallic® was intended for sale, rather than for experimental use only or for some other restricted use. Accordingly, we determine Petitioner has not demonstrated by a preponderance of the evidence that Sample C qualifies as prior art against the ’861 patent, and we determine that Petitioner has not shown by a preponderance of the evidence that the ’861 patent is unpatentable over the grounds relying on Sample C.” slip op. at 38
Patent outcomesUS 10,647,861 not shown unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,647,861 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66–3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66– 3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 4
§ 103 obviousnessPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,811,689 - Tesla, Inc. v. Iqar Inc.Some claims unpatentablePTAB · Jul 25, 2025 · IPR2024-00545 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–6, 8–15, 17, and 18 are unpatentable as obvious over Neiss or Neiss and Hirasago; claims 7 and 16 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering (including automotive engineering), civil engineering (transportation systems), physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of transportation systems.” Pet. 2–3. Petitioner contends that “[a]dditional education could substitute for professional experience, and vice versa.” Id. at 3 (citing Ex. 1003 ¶¶ 1–19, 24–26; Ex. 1004). Patent Owner “does not dispute” Petitioner’s definition of the level of ordinary skill. See generally PO Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner’s interpretation of column 13, lines 40–44 of the ’161 patent to mean that a route may not have both an ending position or an intermediate position, but will have at least one of these positions. See PO Resp. 21. Patent Owner interprets “typically” in “[t]he route used by the power management device typically includes a starting position . . . , an ending position, . . . , and any intermediate positions between the initial and the final positions” to apply to either “an ending position” or “any intermediate positions” (that is, an intermediate destination) but not to both. We see no grammatical reason to limit “typically” in this manner. Rather, the plain meaning of the quoted sentence suggests that, although not typical, a route may not contain an ending position, be that a final position or an intermediate position.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not explained adequately how a driver’s previously driven speed or the speed limit is an efficient speed. Rather than explaining how the Schramm-Clapper system would sum efficient speeds, Petitioner merely asserts that “the set speeds for the energy-optimum route’s segments correspond to a plurality of efficient speeds.” Pet. 78 (emphasis omitted). Petitioner’s witness, Dr. Papanikolopoulos, makes substantially the same assertion. See Ex. 1003 ¶ 263. But neither Petitioner nor its witness explains adequately how a previously driven speed or the speed limit is an efficient speed. Patent Owner presents persuasive arguments as to why these speeds are not efficient. See PO Resp. 32–33 (citing Ex. 2003 ¶¶ 198–204, 208–214). Patent Owner’s contentions are supported by Dr. Hoff’s testimony. See, e.g., Ex. 2003 ¶¶ 211–218. Stated differently, although Petitioner explains how the Schramm-Clapper system would select the best summation of calculated energy values required to travel at selected speeds from among Schramm’s routes, Petitioner has not explained sufficiently how the selected speeds are efficient speeds. For the foregoing reasons, on this record, Petitioner has not shown, by a preponderance of the evidence, that claim 1 or its dependent claims 3 and 6–9 would have been obvious in view of the combination of Schramm and Clapper. Petitioner relies on the same contentions regarding the identical language recited in independent claim 10 (see Pet. 93), and so, for the same reasons, has failed to show, by a preponderance of the evidence, that claim 10 or its dependent claims 12, 13, and 15–18 would have been obvious in view of the combination of Schramm and Clapper.” slip op. at 36
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner that Petitioner has not explained adequately how a driver’s previously driven speed or the speed limit is an efficient speed. Rather than explaining how the Schramm-Clapper system would sum efficient speeds, Petitioner merely asserts that “the set speeds for the energy-optimum route’s segments correspond to a plurality of efficient speeds.” Pet. 78 (emphasis omitted). Petitioner’s witness, Dr. Papanikolopoulos, makes substantially the same assertion. See Ex. 1003 ¶ 263. But neither Petitioner nor its witness explains adequately how a previously driven speed or the speed limit is an efficient speed. Patent Owner presents persuasive arguments as to why these speeds are not efficient. See PO Resp. 32–33 (citing Ex. 2003 ¶¶ 198–204, 208–214). Patent Owner’s contentions are supported by Dr. Hoff’s testimony. See, e.g., Ex. 2003 ¶¶ 211–218. Stated differently, although Petitioner explains how the Schramm-Clapper system would select the best summation of calculated energy values required to travel at selected speeds from among Schramm’s routes, Petitioner has not explained sufficiently how the selected speeds are efficient speeds.” slip op. at 36
Patent outcomesUS 8,972,161 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,972,161 - PTAB · Jul 24, 2025 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–3, 10–12, 22–25, 28, 30, 32, and 33 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is obvious.
RulingsInstitution decision- Director reviewOther
“Memorandum (“Memorandum”) issued on March 26, 2025, Patent Owner filed its Discretionary Denial Brief on March 28, 2025. Paper 7. Petitioner filed its Opposition Brief on May 20, 2025. Paper 9. On June 13, 2025, Acting Director Stewart issued a decision determining that discretionary denial of institution is not appropriate in this case and referring the Petition to us for merits and other non-discretionary statutory considerations. Paper 10.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons provided below, we determine, based on the record before us, there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We do not agree with Patent Owner’s proposed claim construction because, as pointed out by Petitioner, claim 1 does not recite limitations directed to the resolution of the source data of a frame that is to be combined “to provide an image having a relatively high resolution.” We also do not agree with Patent Owner’s arguments that claims should not be read to encompass prior art distinguished in the specification based on Patent Owner’s citations to the Background passages of the ’180 Patent. The cited passages disclose foveal image sensors for acquiring both a wide and narrow field of view and having smaller pixel sizes arranged in the central foveal region and larger pixel sizes arranged in peripheral rings about the central region, resulting in sensors that have a high resolution only in the narrow field of view. Consistent with Petitioner’s observation (see Prelim. Reply 2–3), this cited passage at best distinguishes prior art foveal sensors with smaller pixel sizes arranged in the central foveal region and larger pixel sizes arranged in peripheral rings about the central region. See Ex. 1001, 2:10–24. Finally, we do not agree with Patent Owner’s arguments regarding the prosecution history. Patent Owner does not direct us to persuasive absent any statements by the Applicant regarding that applied prior art, amounts to prosecution history disclaimer. Aside from declining to adopt Patent Owner’s proposed construction, for the purpose of institution we need not explicitly construe “combine data of a frame from at least one of the plurality of channels to provide an image having relatively high resolution,” as recited in claim 1. See Realtime, 912 F.3d at 1375. 3. Other claim terms and phrases Petitioner also proposes a construction for “data of a frame,” recited in claim 1. See Pet. 8. Patent Owner does not specifically address this claim construction. See Prelim. Resp. 23–30. For the purpose of institution, we need not explicitly construe “data of a frame” or any other claim term or phrase. See Realtime, 912 F.3d at 1375.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner proposes a similar level of skill in the art as Petitioner, namely, that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in digital imaging.” Prelim. Resp. 31 (citing Ex. 2013 ¶ 80). person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the asserted prior art.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,916,180 - Tesla, Inc. v. The United States Of America As Represented By The Secretary Of The Navy (Intellectual Ventures II LLC)Institution deniedPTAB · Jul 24, 2025 · IPR2025-00341 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Tesla had not shown a reasonable likelihood that claims 10, 11, 14, 16, and 18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Having considered the Petition, the Preliminary Response, the Reply, and the Sur-reply, as well as the evidence of record, we conclude that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of claims 10, 11, 14, 16, and 18 of the ’743 patent. We accordingly do not institute inter partes review. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have “been someone knowledgeable and familiar with the areas of networking and distributed computing that are pertinent to the ’743 patent,” would “have a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately 2-3 years of professional experience relating to distributed computing,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 17 (citing Ex.1003, ¶¶ 32-34). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, we adopt it for purposes of this analysis. B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of “event,” in which Petitioner argued that the term should be broad enough to include “processing radar sensor data, performing radar tracking initialization and refinement, and distributing radar tracking information to other modules,” and Patent Owner argued that the specification uses the term as “as an umbrella term to cover various types of ‘internal event and performance data’ such as ‘application statuses, states, performance, and internally detected errors.’” Reply 1; Sur-reply 2. We agree with Patent Owner that that claimed “events” must concern “application statuses, states, performance, and internally detected errors.” See Ex. 1001, 7:44–45. The patent explains that function group 2 collects that type of information from applications using an API and then “correlate[es], combin[es], and reformat[s] [the] application data into higherlevel metrics (composite events) for use by displays or other Resource Management components.” Id. at 7:52–54. The middleware described and claimed in the ’743 is concerned with how applications are performing, not what they doing.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“This claim limitation, however, also requires “event correlation capabilities.” For that, Petitioner asserts that “Welch’s metrics calculation component (part of the ‘second function group’) provides ‘event correlation capabilities’ because the QoS management software “implementation includes the following capabilities: . . . (2) track correlation and filtering algorithms.” Pet. 44–45 (citing Ex. 1003, 4). This, we find, mischaracterizes Welch’s disclosure, because Welch’s metrics calculation component does not perform the identified “correlation.” The language quoted by Petitioner comes from the experimental results section of Welch, which describes how the implementation of the NSWC HiPer-D testbed, the system that was used test Welch’s QoS middleware, included “track correlation and filtering algorithms.” Ex. 1005, 4. Welch is not explaining that the middleware correlates the QoS system level events that Petitioner has identified as the claimed “events,” but, instead, that the NSWC HiPer-D system that was used to test the middleware included the ability to correlate radar data in a shipboard anti-air-warfare system.6 The correlating mentioned in Welch occurs at the application level, not in the middleware.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,181,743 - PTAB · Jul 22, 2025 · IPR2025-00342 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1, 2, and 6–11 based on the asserted obviousness grounds over Broggi, Huttenlocher, and Brady, with or without Bertozzi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we institute review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We agree with Petitioner. The specification broadly states that the invention is “for assisting a motor vehicle guidance on the basis of image data” and raises “maneuvering trucks toward docking stations” as a “particular” application. E.g., Ex. 1001, 1:6–8. Similarly, it refers to a docking station for trucks as a “typical destination” used only “for example.” Id. at 3:43–44. Patent Owner does not point to anything in the prosecution history that would inform the construction of “potential destination.” The intrinsic record does not support Patent Owner’s narrow construction. Thus, for purposes of this decision, we do not construe “potential destination” as limited to a fixed location. No other aspect of the construction affects our determination whether to institute.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner reasons that skilled artisans would have been motivated to use Huttenlocher’s pattern-matching technique as part of Broggi’s vehicle-detection method because Broggi suggests using a “traditional pattern matching technique.” Pet. 16–17. Further, Petitioner reasons, the combination would result in “improved vehicle detection and efficient use of processing resources.” Id. at 18 (citing Ex. 1006, 23; Ex. 1003 ¶ 62). For the claimed storing step, Petitioner relies additionally on Brady. Id. at 54–56. Brady discloses a visual vehicle-tracking system that keeps “a vehicle log 102 of all vehicles currently within the scene, including vehicles’ associated track histories, inertial history 104 of the scene . . . and potential future track positions.” Ex. 1007, 11:21–26. Petitioner reasons that skilled artisans would have had reason to use Brady’s teachings as asserted because “Broggi omits implementation details how the associated data is processed and stored” and because the combination “would improve Broggi’s platooning through accurate and consistent tracking of the preceding vehicle positions used in the associated vehicle path determinations, thereby improving the user experience during platooning.” Pet. 20–21 (citing Ex. 1007, 11:21–25; Ex. 1003 ¶ 67).” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“Patent Owner challenges Petitioner’s reliance on Broggi as relating to platooning rather than guidance to a fixed endpoint. Prelim. Resp. 21–38. All of Patent Owner’s arguments in that regard depend on us adopting Patent Owner proposed construction for “potential destination.” Id. As discussed above, we do not agree that the claimed potential destinations should be limited to fixed locations. See supra at 7–8 (§ II.B.1). Accordingly, we do not agree with Patent Owner’s arguments regarding platooning rather than guidance to a fixed endpoint. Although Patent Owner asserts that Broggi also does not calculate an “optimized path” as claimed (Prelim. Resp. 29–33), that argument similarly depends on a construction for “potential destination” that is limited to fixed locations. See id. at 31 (arguing that the “car taught in Broggi cannot calculate an ‘optimized path’” because it “has absolutely no knowledge of the destination for the platoon”), 32 (“[I]n Broggi, the ARGO does not calculate a path to a destination because it doesn’t have any knowledge regarding the destination of the preceding car.”). We do not agree with Patent Owner’s argument because, as discussed, the challenged claims do not require an optimized path to a fixed location, but instead read on an optimized path to a transitory location, such as the location of Broggi’s preceding vehicle at a given time. We agree with Petitioner that Broggi teaches an optimized path because it generates steering commands that lead toward the preceding vehicle and because those commands consider the steered vehicle’s capabilities. See Pet. 34–35. Additionally, Patent Owner challenges Petitioner’s reliance on Huttenlocher as failing to disclose the claimed “mathematical tree structure.” Prelim. Resp. 38–62. All of Patent Owner’s arguments in that regard depend on us adopting Patent Owner’s proposed construction for “mathematical tree structure.” Id. As discussed above, we do not agree that the claimed mathematical tree structure is limited to a single tree. See supra at 8–10 (§ II.B.2). Accordingly, we do not agree with Patent Owner’s arguments regarding Huttenlocher’s tree structure. Patent Owner does not otherwise challenger Petitioner’s contentions based on Broggi, Huttenlocher, and Brady. We have reviewed Petitioner’s contentions and evidence, and conclude on the present record that Petitioner is likely to prevail with the unpatentability of claims 6–8 and 11. D. OBVIOUSNESS OVER BROGGI, HUTTENLOCHER, BRADY, AND BERTOZZI” slip op. at 14
Claim construction§ 103 obviousnessPatents in suitUS 7,336,805 - Tesla, Inc. v. Iqar Inc.Some claims unpatentablePTAB · Jul 21, 2025 · IPR2024-00543 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–7, 9–17, 19, and 20 are unpatentable as obvious; claims 8 and 18 were not shown unpatentable because Newstrom’s database was not shown to be remote.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Patent Owner does not contest Dr. Morellas’s proposed definition or proffer a definition of its own. See generally PO Resp.; see also Ex. 2007 ¶ 43 (setting forth a substantially similar definition as Dr. Morellas). We find Dr. Morellas’s unopposed definition to be consistent with the problems and solutions disclosed in the patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for patent owner
“We disagree with Patent Owner’s assertion that claim 1 requires that a route from the vehicle’s current position to a final destination must be known. See PO Resp. 7. Initially, claim 1 does not recite “destination.” Instead, claim 1 recites only “determining a segment of a vehicle route.” Ex. 1001, 27:44 (emphasis added). Nor does the ’399 patent specification require the interpretation proffered by Patent Owner. Notably, the ’399 patent discloses that the power management device may rely on historical route information to optimize the energy used to travel each segment of a route. Ex. 1001, 17:39–43, 17:64–67. Such reliance on historical data beneficially reduces the amount of required computing power. Id. at 18:5–9. Under this approach, “the location of the vehicle is periodically determined” and “used to determine[] a historical segment corresponding to the current location.” Id. at 18:30–33 (emphasis added). If the vehicle has moved into a new route segment, the historical data is queried to determine the most efficient speed to travel for the current segment. Id. at 18:39–56. Thus, the ’399 patent explicitly discloses calculating and applying power to a vehicle based on the route segment in which the vehicle is currently traveling. See id. at 18:64–67 (“The flowchart shown in FIG. 5 illustrates a continuous process, in which the power management device can determine a probable optimal speed as the current segment changes (e.g., as the vehicle moves).”), Fig. 5. Furthermore, the ’399 patent explains that “[t]he route used by the power management device typically includes a starting position . . . , an ending position, . . . , and any intermediate positions between the initial and the final positions.” Id. at 14:6–10 (emphasis added). Notably, the ’399 patent sometimes refers to the “entire route,” indicating that use of “route” in the claims does not necessarily mean the entire route. Indeed, the ’399 patent explains that, “[i]n some variations, the entire route (or the entire predicted route) may be divided up into N segments” and “[i]n some variations, probable optimal speeds may be identified for the entire route.” Ex. 1001, 14:38–39, 19:1–2 (emphases added). This strongly suggests that, in some other variations, the entire route is not divided into segments and optimal speeds are not identified for the entire route, further indicating that the recited “route” is not the entire path the vehicle will take. Therefore, we find that the ’399 patent contemplates routes that, although not typical, do not include an ending position. Moreover, to the extent a destination is required, the ’399 patent discloses that the destination can be derived based on the vehicle’s location or driving history, and there can be multiple “likely destinations” and the system can “continuously infer the vehicle’s destination” and the probable destination “may constantly change to revise the destination” while the vehicle is traveling along the route. Ex. 1001, 12:16–59. Contrary to Patent Owner’s arguments, neither the claim language nor the specification of the ’399 patent requires the route be predetermined or extend from the vehicle’s current position to a final destination.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“have been obvious in view of Hongo, Obradovich, and Niki. Pet. 4–62. In support of its showing, Petitioner relies upon the Morellas Declaration. Id. (citing Ex. 1003). We have reviewed the parties’ briefs and the evidence of record and determine that, for the reasons explained below, Petitioner has shown, by a preponderance of the evidence, that claims 1, 2, 5, 6, 9–12, 15, 16, 19, and 20 would have been obvious in view of Hongo, Obradovich, and Niki and that Petitioner has set forth reasoning with rational underpinning why it would have been obvious to combine the teachings of these references.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“limiting, Hongo and Niki support Petitioner’s contentions. We determine that Petitioner sets forth reasoning with rational underpinning as to why a person having ordinary skill in the art would have combined the teachings of Hongo and Niki. See, e.g., Pet. 21–23 (arguing that the modification “would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success” and “Niki’s teachings and/or suggestions improve vehicle control in the Hongo vehicle”).” slip op. at 14
Patent outcomesUS 10,882,399 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,882,399 - Tesla, Inc. v. Iqar Inc.All claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00499 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–17 are unpatentable: claims 1–16 as obvious over Kudo-325 and Kudo-066, and claim 17 as obvious over those references and Tryon.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Thus, for all of the above reasons, we decline to construe “data, regarding multiple route segments” to require the data include information regarding the route the vehicle traveled between the starting and end points of the route segment. Rather, this is but one example of the type of data included within the scope of the claim. We further make final our preliminary finding that the claim explicitly allows for data, regarding a route segment to be stored in the memory at “different points in time along a route segment.” We determine that no other terms need to be construed. See Realtime” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“regarding route segments because it does not identify “what occurred—or what path the vehicle traveled—between the different nodes in Kudo 325’s transition state data.” PO Resp. 9. However, we have rejected herein Patent Owner’s implicit claim construction argument that such additional information is required. Though the exact the path traveled between a starting and end point is data regarding a route segment, the starting and end points are also data regarding a route segment. As acknowledged by Patent Owner, Kudo 325’s transition state data includes the starting and end points of route segments, as well as “a list of (or pointers to) all other nodes to which the vehicle previously traveled from that node.” PO Resp. 9 (citing Ex. 1004 ¶ 93). After our review of the evidence and arguments, summarized above, we determine that Petitioner has shown by a preponderance of the evidence that the combination teaches or suggests “data, regarding multiple route segments,” and “data, regarding multiple sequences of route segments” as required by claim 1. d) Conclusion For the reasons discussed above, we determine that Petitioner has shown by a preponderance of the evidence that the combination of Kudo- 325 and Kudo-066 teaches or suggests claims 1, 15 and 16.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“be motivated to implement Kudo-325’s historical accumulation database at the server. Pet. 73, 68, 70. Petitioner argues that Kudo-325 teaches that “a part of the functions that a car navigation system has may be provided in a server on a network.” Id. at 68 (quoting Ex. 1004 ¶ 75). Petitioner further argues that doing so would beneficially allow remotely stored historical data to be accessible to multiple vehicles. Id. at 70 (citing Ex. 1003 ¶ 203). Petitioner argues that housing this information at the server is a known technique and would yield predictable results. Id. (citing Ex. 1003 ¶ 204). Petitioner argues that Kudo-325 teaches storing sensor data samples including historical data at the historical accumulation database. Pet. 73–74 (citing Ex. 1004 ¶¶ 14, 75, 78, 87–88, 90–92, 94, 96, Fig. 3; Ex. 1003 ¶¶ 218–220). Petitioner further argues that “a POSITA would have understood data in the history accumulation database (historical data) to be provided to the car navigation system (present said historical data to said device) to enable generation of transition state information.” Id. at 74 (citing Ex. 1003 ¶ 221).” slip op. at 21
Patent outcomesUS 10,829,002 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,829,002 - PTAB · Jul 7, 2025 · IPR2025-00220 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–18 because Tesla showed a reasonable likelihood that claims 1–18 would have been obvious over Wallen and Berggren.
RulingsInstitution decision- Director reviewOther
“Memorandum (“Memorandum”) issued on March 26, 2025, Patent Owner filed its Discretionary Denial Brief on April 7, 2025. Paper 6. Petitioner filed its Opposition Brief on May 27, 2025. Paper 8. On June 13, 2025, Acting Director Stewart issued a decision determining that discretionary denial of institution is not appropriate in this case and referring the Petition to us for merits and other non-discretionary statutory considerations. Paper 9.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree from an accredited program in electrical engineering, computer engineering, computer science, or equivalent training, and at least two years of professional experience relating to wireless communication technology” and “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s definition. See generally Prelim. Resp. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’670 Patent Specification and the asserted prior art. slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“establishes sufficiently for the purpose of institution that the combined teachings of Wallen and Berggren teach or suggest all of the limitations recited in claim 1.” slip op. at 14
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,206,670
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.