• Guardant Health, Inc. v. University Of WashingtonNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2022-00817 · APJ Zhenyu Yang · IPR · Remand

  On remand, the Board found Travers ’075 did not enable RCR amplification followed by SMRT sequencing and held claims 1–30 not shown unpatentable under the asserted obviousness grounds.

  RulingsRemand decision

  • RemandOther

    “B. Scope on Remand On remand, we are bound by the terms of the Federal Circuit’s mandate. Intell. Pixels Ltd. v. Sony Interactive Ent. LLC, 181 F.4th 1216, 1220 (Fed. Cir. 2026) (“An administrative agency is bound by the mandate of a reviewing court much as a lower court is bound by the mandate of a higher court.”). According to the Federal Circuit, on appeal, Patent Owner “UW argues that ‘Travers ’075 does not enable the sequencing of an RCR concatemer using PacBio’s SMRT sequencing,’ and therefore because paragraph 122 is not enabled, it cannot be relied on for disclosing amplification followed by sequencing.” Paper 50, 14. Because “[t]he Board did not reach this issue,” the Federal Circuit “remand[ed] the case for consideration of this issue by the Board in the first instance.” Id. Thus, consistent with the court’s mandate, we must decide “whether Travers ’075 enabled RCR amplification followed by SMRT sequencing.” Id. at 8.” slip op. at 4

  • BurdenNot shown unpatentable

    “A prior art reference is presumed to be enabled. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003) (holding that “a presumption arises that both the claimed and unclaimed disclosures in a prior art patent are enabled”); In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (extending the presumption to prior art printed publications). A patent owner, however, may present persuasive evidence that the relevant disclosures of a prior art are not enabled and therefore are not pertinent prior art. Amgen, 314 F.3d at 1355; In re Antor Media, 689 F.3d at 1289 (discussing the applicant’s burden to submit rebuttal evidence of nonenablement during prosecution); Apple Inc. v. Corephotonics, Ltd., 861 Fed. App’x. 443, 450 (Fed. Cir. 2021) (“[R]egardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art.”). “[T]here is no absolute requirement for a relied-upon reference to be self-enabling in the § 103 context, so long as the overall evidence of what was known at the time of invention establishes that a skilled artisan could have made and used the claimed invention.” Raytheon Techs. Corp. v. Gen. Elec. Co., 993 F.3d 1374, 1376–77 (Fed. Cir. 2021). But, “if an obviousness case is based on a non-self-enabled reference, and no other prior art reference or evidence would have enabled a skilled artisan to make the claimed invention, then the invention cannot be said to have been obvious.” Id. at 1377.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “The Federal Circuit stated that “the elements of the challenged claim are expressly taught by Travers ’075. Travers ’075 discloses performing RCR amplification followed by SMRT sequencing in a single embodiment.” Paper 50, 14. As a result, “no finding regarding a motivation to combine to arrive at those claimed elements is required.” Id. at 9. In addition, it was error to require Petitioner to show that a skilled artisan “would have had a reasonable expectation of success in performing RCR replication of SMRTbell templates followed by SMRT sequencing.” Id. at 13. “Unless remanded by [an appellate] court, all issues within the scope of the appealed judgment are deemed incorporated within the mandate and thus are precluded from further adjudication.” Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999). Therefore, the only issue for us to decide is “whether Travers ’075 enabled RCR amplification followed by SMRT sequencing.” Paper 50, 8.” slip op. at 14

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “polymerase-template complexes in the same ZMW.” Id. (citing Ex. 1035, 39). Citing the Larrea Declaration, Petitioner contends that loading of multiple templates “is easily mitigated.” Id. at 18 (citing Ex. 1033 ¶ 19; Ex. 1035, 39). We are not persuaded by this argument either. Dr. Larrea testifies that one of the two methods to “easily mitigate[]” loading multiple templates into a single ZMW is “bioinformatically trimming the read to only the high-quality region (HQR).” Ex. 1033 ¶ 19. Dr. Larrea, however, provides no support for this testimony. In fact, he does not even explain what a “high-quality region (HQR)” is. We, thus, accord little weight to this testimony. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (August 24, 2022) (precedential) (holding “conclusory and unsupported” declaration testimony is entitled to little weight).” slip op. at 26

  Patent outcomesUS 10,760,127 not shown unpatentable
  § 103 obviousness
  Patents in suitUS 10,760,127
• Genius Sports Ltd. v. Sportscastr Inc. D/B/A Panda InteractiveAll claims unpatentable
  PTAB · Aug 27, 2026 · IPR2024-01310 · APJ Stephen E Belisle · IPR · Remand

  On Director remand, the Board determined claims 1–15 unpatentable under § 103, including claims 1–11 over Ellis, Spivey, and Herzog.

  RulingsRemand decision

  • RemandOther

    “all Challenged Claims unpatentable and denying Petitioner’s Motion to Exclude. Paper 47 (“Original Final Decision”). Subsequently, Patent Owner filed a Request for Director Review and Petitioner filed an authorized Response thereto. Papers 48, 49. On July 29, 2026, the Director granted review, vacated-in-part the Original Final Decision, and remanded the case to the Board. Paper 50. In particular, the Director directed the Board “to consider Patent Owner’s arguments as to the webserver limitation in deciding whether Petitioner has established by a preponderance of the evidence that claims 1–11 are unpatentable under Petitioner’s Ground 1B.” Id. at 4. We do so in this Final Written Decision on Remand (“Remand Decision”). See infra § III.E (Ground 1B). For completeness, we repeat herein our analysis in the Original Final Decision for all other grounds.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction We construe claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In this context, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips, 415 F.3d at 1312–13; see CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (There is “a ‘heavy presumption’ that a claim term carries its ordinary and customary meaning.”). “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips, 415 F.3d at 1317. Petitioner contends that “[t]he claim terms of the ’218 [patent] should be given their plain and ordinary meaning” as understood by the relevant artisan. Pet. 6. Petitioner argues that the relevant artisan “would have understood a ‘socket’ to be a uniquely addressable communication endpoint on a server where first event information is provided to a [viewer client device] VCD.” Pet. 26 (citing Ex. 1001 ¶ 170). Petitioner argues that the relevant artisan also would have understood an “event socket,” in turn, to be “a socket where information about one sporting event is provided to VCDs.” Id. Beyond such proposed plain meanings for “socket” and “event” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “(6) Conclusion as to Objective Indicia of Non- Obviousness For the foregoing reasons, although we have considered Patent Owner’s evidence of objective indicia of nonobviousness, we accord it little weight, and find that it does not outweigh Petitioner’s strong countervailing evidence supporting a conclusion of obviousness.” slip op. at 53

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “engineer with substantial experience in Internet video streaming, Internet communication, and related protocols, including an understanding of relaytype and orchestrator-type webservers, would have considered the subject matter of claim 1 as a whole, including the webserver, to be obvious in light of the combined teachings of Ellis, Spivey, and Herzog. Based on the context discussed above, and for the reasons provided above, we determine that the answer is yes. See Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1222 (Fed. Cir. 2022) (“That the proposed combination of [two references]—rather than one of the individual references—discloses the disputed claim limitations does not defeat the Board’s conclusion of obviousness. In this case, it is sufficient that [the relevant artisan] would have been motivated to combine the prior art in a way such that the combination discloses the claim limitations.”).” slip op. at 78

  Patent outcomesUS 11,039,218 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,039,218
• Palo Alto Networks, Inc. / Cisco Systems, Inc. et al. v. Centripetal Networks, Inc.All claims unpatentable
  PTAB · Jun 11, 2026 · IPR2022-01199 · APJ Kevin F Turner · IPR · Remand

  On remand, the Board held claims 1, 24, and 25 unpatentable as obvious over Buruganahalli; the copying evidence did not outweigh the strong obviousness showing.

  RulingsRemand decision

  • RemandOther

    “Scope on Remand On remand, the panel here will not address issues outside the scope of the Federal Circuit’s mandate. See Hayward Indus., Inc. v. Pentair Water Pool & Spa, Inc., 814 F. App’x 592, 597 (Fed. Cir. 2020) (“The Board is bound by the terms of a mandate issued by an appellate court. Aydin Corp. v. Widnall, 121 F.3d 726, 1997 WL 413329, at *3 (Fed. Cir. 1997). ‘Unless remanded by [an appellate] court, all issues within the scope of the appealed judgment are deemed incorporated within the mandate and thus are precluded from further adjudication.’ Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999).”). The sole issue on remand is whether “the evidence of copying” is sufficient to overcome the obviousness ground of unpatentability over Buruganahalli. Centripetal Networks, 19–20. We restate portions of the former Final Written Decision, as an aid to the reader, but substantially incorporate the analysis of the prior Decision below. C.” slip op. at 4

  • Director reviewDirector review, deniedDenied

    “not object to a new panel of APJs hearing this case if remanded.” Id. at 20. As such, Patent Owner requested Director Review (Paper 74), asking that the Director “de-institute,” based on an abuse of discretion. The Director (Paper 75) denied the request and directed the Board to assign a new panel on remand (see Papers 76, 77). B.” slip op. at 3

  • Skill levelOther

    “Level of Ordinary Skill in The Art We adopt the level of ordinary skill in the art adopted in the prior Decision. See Decision 25. F.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “This argument is unpersuasive because Buruganahalli uses rules/policies to filter encrypted packets by correlating them with handshaking packets that have unencrypted data, in the same way that is done in the ‘856 Patent. The only “filtering step” in the patent that “use[s] rules to filter encrypted packets without decryption” (PO Resp. 20) is the hello message approach used, for example, at steps 19 and 23 (see id.), which is clearly disclosed in Buruganahalli.7 As explained above, the ‘856 Patent does not describe applying rules to encrypted packets. Instead, it describes (a) filtering encrypted packets by correlating them with unencrypted data in other packets and (b) by decrypting the packets and applying the rules that are recited in the claims to unencrypted data. As also explained above, the amendment added the rules of step 22, which are applied to decrypted data, to a claim that was drafted to cover filtering of encrypted packets. However, among the criteria used in the filtering performed at step 22 is a “uniform resource identifier (URI),” which, we conclude, covers Buruganahalli’s “domain name.” Thus, despite the error made during prosecution, the claims that issued cover Buruganahalli’s method of determining that a session should be filtered based on a domain name in unencrypted handshake data.” slip op. at 28

  Patent outcomesUS 9,917,856 unpatentable
  § 103 obviousness
  Patents in suitUS 9,917,856
• Palo Alto Networks, Inc. / Cisco Systems, Inc. et al. v. Centripetal Networks, Inc.All claims unpatentable
  PTAB · Jun 11, 2026 · IPR2022-00182 · APJ Kevin F Turner · IPR · Remand

  On remand, claims 1, 24, and 25 are unpatentable under § 103 over Buruganahalli; the evidence of copying does not outweigh the strong obviousness showing.

  RulingsRemand decision

  • RemandOther

    “Scope on Remand On remand, the panel here will not address issues outside the scope of the Federal Circuit’s mandate. See Hayward Indus., Inc. v. Pentair Water Pool & Spa, Inc., 814 F. App’x 592, 597 (Fed. Cir. 2020) (“The Board is bound by the terms of a mandate issued by an appellate court. Aydin Corp. v. Widnall, 121 F.3d 726, 1997 WL 413329, at *3 (Fed. Cir. 1997). ‘Unless remanded by [an appellate] court, all issues within the scope of the appealed judgment are deemed incorporated within the mandate and thus are precluded from further adjudication.’ Engel Indus., Inc. v. Lockformer Co., 166 F.3d 1379, 1383 (Fed. Cir. 1999).”). The sole issue on remand is whether “the evidence of copying” is sufficient to overcome the obviousness ground of unpatentability over Buruganahalli. Centripetal Networks, 19–20. We restate portions of the former Final Written Decision, as an aid to the reader, but substantially incorporate the analysis of the prior Decision below. C.” slip op. at 4

  • Obviousness (§103) › Objective indicia / secondary considerations › CopyingObjective indicia outweighedNot shown unpatentable

    “given to the Eastern District of Virginia court’s opinion because it was later vacated. The district court considered all of the Read factors (applying Read Corp. v. Portec, Inc., 970 F.2d 816, 826-827 (Fed. Cir. 1992)), of which only the first factor is directed to deliberate copying, although factors 2 and 9 bear indirectly on the issue of copying. The district court determined that “[t]he fact that Cisco released products with Centripetal’s functionality within a year of these meetings goes beyond mere coincidence. Therefore, the fact that Cisco’s system mirrors the functionality of the Centripetal patents is compelling evidence that damages should be enhanced for copying.” Ex. 1027, 157. Without more, it is difficult to evaluate the processes that the district court employed to reach its determination. As the Federal Circuit instructed, we need “not [] go searching throughout the entire litigation record to find the evidence of copying, but [we have] an obligation to consider the specific evidence that was put before” us. Centripetal Networks, 19. We continue to determine that the vacated finding of the district court should be provided little weight, especially in view of the strong case of obviousness discussed above. Examination of Aaron Striegel We also do not find the Aaron Striegel’s testimony to be particularly persuasive. The testimony provides statements such as “I found evidence that it could be plausible,” “[s]o we can see the timeline is very plausible,” and “I found it very plausible that indeed that this technology could have made its way into these respective accused products.” Ex. 1029, 31:12–32:3. This testimony suggests the possibility of copying but does not demonstrate actual evidence of copying. At most, this testimony indicates that further consideration of the underlying evidence is warranted, but does little to support an ultimate finding of copying. Again, even taking this testimony as evidence of copying, it still must stand up against the strong case of obviousness discussed above.” slip op. at 40

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “The District Court did not provide an element-by-element analysis of how the claims of the ‘856 Patent cover this description. See Ex. 1027, 41. However, from the description, we understand the Court to have concluded that the system receives rules, identifies a set of packets as part of a flow using the NetFlow logs, “determines” that encrypted packets in the flow match known malicious signatures based on unencrypted data in other packets (e.g., data in the SNI), and then filters the flow based in a URI (e.g., that from the SNI), routing it to the null interface. The Court does not describe how the system “determines” that encrypted packets match known malicious signatures based on information in unencrypted packets, but we assume that is done as in the ‘856 Patent, by correlation, i.e., an encrypted packet is “determined” to match a threat indicator if it is in the same flow as a packet with unencrypted information that matches the threat indicator.10 With that understanding, we conclude that the allegedly infringing system operates, as least at the level described in the court’s decision, in the same way Buruganahalli’s system operates, filtering encrypted packets due to their presence in a flow that includes packets with unencrypted data, such as in a handshaking packet. It follows that Patent Owner is unable to establish a nexus, because “[w]here the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” Novartis AG v. Torrent Pharms. Ltd., 853 F.3d 1316, 1330” slip op. at 38

  • Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersDecided for petitioner

    “need and industry recognition for the technology claimed in the ‘856 Patent because it describes the problem of detecting threats in encrypted traffic as ‘unsolvable.’” PO Resp. 68 (citing Ex. 1027, 64). Given that this is a press release by a company announcing that company’s new commercial product, however, we 8 The concurrence reevaluates Patent Owner’s evidence of industry praise and nexus, but we deem such considerations outside the remit of the Federal Circuit’s remand. are reluctant to give the “unsolvable” characterization much weight, as it may amount to puffery. But beyond that, it appears that the problem identified as “unsolvable” in the press release––“detect[ing] known attack signatures even in encrypted traffic”––had, in fact, already been solved in Buruganahalli, using the very same hello message, flow correlation, and man-in-the-middle techniques described in the ‘856 Patent. We thus cannot say that the press release identifies a long-felt need that was actually unsolved. See ZUP, 896 F.3d at 1374 (explaining that “[w]here the differences between the prior art and the claimed invention are . . . minimal . . . it cannot be said that any long-felt need was unsolved”) (quoting Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC, 618 F.3d 1294, 1304–05 (Fed. Cir. 2010) (first alteration in original)).” slip op. at 35

  Patent outcomesUS 9,917,856 unpatentable
  § 103 obviousness
  Patents in suitUS 9,917,856
• Snap Inc. v. You Map Inc.All claims unpatentable
  PTAB · May 4, 2026 · IPR2022-00568 · APJ Jason M Repko · IPR · Remand

  Claims 1–20 remain unpatentable; the contingent motion to amend is denied because the proposed substitute claims would have been obvious over Feldman and Jackson in view of ordinary skill.

  RulingsRemand decision

  • RemandDecided for patent owner

    “challenge fails even if Petitioner’s summary of the references were correct because Petitioner did not present a sufficient reason to modify Feldman to include a current zoom level in its search request. FWD 56. The Federal Circuit vacated this finding specifically and contemplated that there would be a “consideration of obviousness” on remand. CAFC Dec. 10–11. That consideration requires more than determining whether any one reference teaches a current zoom level and a search, generally. See FWD 56 (quoting MTA Reply 10). Here, Petitioner’s challenge is based on modifying the Feldman-Jackson combination. So the Board must determine on remand whether the Feldman-Jackson combination in view of knowledge of a POSA meets the claim limitations at issue. We also disagree to the extent that Petitioner argues that the Board is precluded from considering additional arguments on the relevant issues on remand. The Board’s preliminary guidance on the Motion to Amend stated that Petitioner’s obviousness rationale was based on convenience and this reason was not sufficiently supported: reference lacks a sufficient explanation of why one of ordinary skill in the art would have added the zoom levels in the prior art to Feldman. See id. At most, Petitioner argues that it would be convenient to “specify the area the user desires to search for content” in this way. Id. at 14. But, on this record, Petitioner has not sufficiently explained why it would be convenient to do so in Feldman. See id. Nor has Petitioner sufficiently explained how or why the prior-art features confer this convenience. See id. MTA PG, 13. Because the Board’s conclusion turned on the lack of sufficient explanation, the briefing that followed was limited to Petitioner’s obviousness rationale. See, e.g., MTA Reply 9–12, MTA Sur-reply 1–12. Under these specific circumstances, we determine that it would be procedurally fair to fully consider the arguments on remand about whether the cited prior art teaches or suggests the limitations recited in the substitute claims. And, as discussed above, the Federal Circuit has directed the Board to consider obviousness. CAFC Dec. 10–11.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp.; Sur-reply. Patent Owner’s expert, Dr. Shamos, and provides substantially the same expression of the level of ordinary skill in the art. Ex, 2003 ¶¶ 30–31; see FWD 6–7. In this Decision, we apply Petitioner’s proposed definition.” slip op. at 6

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “In sum, Petitioner has shown that replacing Feldman’s radius with Badger’s zoom level meets all the limitations of the claim considered in the context of the Feldman-Jackson combination. Also, the evidence shows a motivation to modify the radius in Feldman’s search request to instead be based on the zoom-level parameter disclosed in Badger. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380–81 (Fed. Cir. 2023) (“There is a motivation to combine when a known technique ‘has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way,’ . . . using the ‘prior art elements according to their established functions.’”) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). substitute claim 21 is unpatentable over Feldman, Jackson, and knowledge of one of ordinary skill in the art. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1337 (Fed. Cir. 2020) (“[U]nder 35 U.S.C. § 103, the obviousness inquiry turns not only on the prior art, but whether ‘the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art to which the claimed invention pertains.’”).” slip op. at 19

  • Strike new argumentNew argument consideredDecided for patent owner

    “precluded from considering additional arguments on the relevant issues on remand. The Board’s preliminary guidance on the Motion to Amend stated that Petitioner’s obviousness rationale was based on convenience and this reason was not sufficiently supported: reference lacks a sufficient explanation of why one of ordinary skill in the art would have added the zoom levels in the prior art to Feldman. See id. At most, Petitioner argues that it would be convenient to “specify the area the user desires to search for content” in this way. Id. at 14. But, on this record, Petitioner has not sufficiently explained why it would be convenient to do so in Feldman. See id. Nor has Petitioner sufficiently explained how or why the prior-art features confer this convenience. See id. MTA PG, 13. Because the Board’s conclusion turned on the lack of sufficient explanation, the briefing that followed was limited to Petitioner’s obviousness rationale. See, e.g., MTA Reply 9–12, MTA Sur-reply 1–12. Under these specific circumstances, we determine that it would be procedurally fair to fully consider the arguments on remand about whether the cited prior art teaches or suggests the limitations recited in the substitute claims. And, as discussed above, the Federal Circuit has directed the Board to consider obviousness. CAFC Dec. 10–11.” slip op. at 11

  Patent outcomesUS 10,616,727 unpatentable
  § 103 obviousnesscites KSR
  Patents in suitUS 10,616,727
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01266 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 29, 36–38, 44–46, 48, 49, and 56–58 unpatentable as obvious over Reime, with additional grounds also supporting the challenged claims.

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 32) and Petitioner filed an Opposition (Paper 33). We denied this motion. See Final Dec. 58–61.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “transmission paths. See Pet. Reply 14–15; PO Sur-reply 15. And we agree with both parties that the light that is transmitted directly through the plate to the sensor element does not have intervening reflections—such is consistent with the plain and ordinary meaning of “directly to.” See PO Resp. 31–32; Pet. Reply 14–15; PO Sur-reply 15. Nothing in claim 48’s language, however, requires that all of the reflected light be transmitted directly to the sensor element, which Patent Owner argues. Ex. 1001, 70:32–35; PO Resp. 31–32; PO Sur-reply 14–16. Rather, we agree with Petitioner that the claim language “merely requires that some light reflected by the object goes ‘directly to’ at least one sensor element once it is transmitted through the viewing plane defining plate.” Pet. Reply 14. We also agree that “none of these dependent claims purport to be exclusive of one another.” Id. at 15. Rather, claims 46–48 simply require some light be transmitted (or propagated) for their particular transmission path, without reciting all light. See Ex. 1001, 70:24–35.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “We find Petitioner’s arguments based on Reime alone insufficient. Thus, we find that Petitioner does not show by a preponderance of the evidence that claim 49 is rendered obvious by Reime alone.” slip op. at 52

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “And in view of the above, we find persuasive Dr. Bederson’s testimony that “[c]hoosing a multi-element detector or a single-element detector would have been a simple design choice using commercially available detectors.” Ex. 1002 ¶ 117. Accordingly, we find that one of ordinary skill in the art would have found it obvious for Reime’s receivers to be implemented using discrete single-element detectors. See KSR, 550 U.S. at 417 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”). We find unavailing Patent Owner’s argument that “Petitioner relies on expert testimony to gap-fill missing elements regarding Reime’s failure to disclose or suggest the different claim arrangements of detector elements in a ‘detector assembly.’” PO Resp. 78 (citing Ex. 1002 ¶¶ 111–119; Ex. 2056 ¶ 171). Rather, in light of Reime’s teachings, coupled with the general knowledge of one of ordinary skill in the art, it would have been obvious to employ discrete single-element detectors for Reime’s receivers. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020) (finding obviousness can rely on supported expert testimony to supply an element of a claim). We appropriately consider such evidence of the knowledge that one of ordinary skill in the art would have had as part of our obviousness analysis. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013). Moreover, “AAPA can be important evidence of general background knowledge, and general knowledge can be used to supply a missing claim 1371, 1378–79 (Fed. Cir. 2025). Here, Petitioner relies on the cited AAPA as evidence of one of ordinary skill in the art’s general knowledge at the time of the ’093 patent, and the AAPA is not the basis for this ground. See Pet. 4, 42–43; Pet. Remand 4–5. As Shockwave Med. explains, Federal Circuit “case law has long recognized numerous permissible uses for general background knowledge in an IPR such as, ‘for example, furnishing a motivation to combine, or supplying a missing claim limitation.” 142 F.4th at 1378–79 (quoting Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1376 (Fed. Cir. 2022) (citing Randall Mfg., 733 F.3d at 1362; Koninklijke, 948 F.3d at 1337–38)).” slip op. at 31

  Patent outcomesUS 9,569,093 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,569,093
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01239 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 17, 18, 21, 22, 26, and 30 unpatentable as obvious over Reime, with claims 17, 18, 21, 22, and 30 also obvious over Reime and Hinckley.

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 28) and Petitioner filed an Opposition (Paper 34). We denied this motion. See Paper 41, 47–50.” slip op. at 3

  • Skill levelSkill level board ownOther

    “one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’850 patent issued from an application filed before March 16, 2013, we apply the pre-AIA version of the statutory basis for unpatentability. 4 US 2003/0034439 A1, published Feb. 20, 2003 (Ex. 1010, “Reime”). 5 US 2002/0021278 A1, published Feb. 21, 2002 (Ex. 1011, “Hinckley”). Petitioner lists the combination of Reime and Hinckley as a separate asserted ground for claim 26. We combine these two asserted grounds into one as they rely on the same combination. additional education substituting for experience and vice versa.” Final Dec. 8–9. This definition for one having ordinary skill was not the subject of appeal, and we maintain it for purposes of this Final Written Decision on Remand. Moreover, it is consistent with the ’850 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “PO Resp. 17–29; Pet. Reply 8–15; PO Sur-reply 6–11. We construed this term in the Final Written Decision. Final Dec. 10–24. In particular, we concluded that (i) “detector assembly” means “two or more detector elements that detect electromagnetic radiation,” and (ii) a detector assembly is not required to be physically separate from (i.e., not interspersed with) a pixel array. Id. at 20, 22. The Federal Circuit found the first part of our construction erroneous. Appeal Dec. 7–10. In particular, the Federal Circuit concluded that “[t]he element.” Id. at 8. In addition, to guide the Board’s analysis on remand, the Federal Circuit construed “the terms ‘at an edge’ and ‘at least one edge’ [to] require a detector assembly to be arranged along one or more edges of a viewing plane defining plate.” Id. at 10–11. In other words, the Federal Circuit “clarif[ied] that arranging a detector assembly ‘at,’ ‘along,’ or ‘about’ ‘at least one edge’ or ‘an edge’ does not limit the detector assembly to being arranged entirely on ‘one edge.’” Id. at 12.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “the Federal Circuit already has concluded that claim 15 is obvious in view of Reime. Appeal Dec. 9–10. Claim 17 further recites “wherein the detector assembly comprises: a support substrate, and an arrangement of detector elements.” Ex. 1001, 67:15–18. We agree with Petitioner and find that Reime teaches these further limitations. Pet. 34–35; Pet. Remand 2–4; Pet. Resp. Remand 1–3. First, as we found in the Final Written Decision, Reime’s receivers 30 and 32 are two detector elements that detect electromagnetic radiation (i.e., light), and Reime’s receivers 30 and 32, collectively, comprise a detector assembly. Final Dec. 27–28 (citations omitted). Moreover, Reime’s two receivers 30 and 32 comprise a detector assembly having multiple detector elements (e.g., two receivers) to teach “an arrangement of detector elements.” Ex. 1010 ¶¶ 73, 86, Figs. 9A–9C; Ex. 2060,7 127:17–18; Pet. 32–33; Pet. Reply 20; Pet. Remand 3. In addition, as we found in the Final Written Decision, Reime teaches that each of receivers 30 and 32 are centered on opposite edges of the plate. 7 Deposition Transcript of Dr. Benjamin Bederson (Apr. 7, 2022). Ex. 1010, Fig. 6A, ¶ 82) (affirming that Reime teaches having one light receiver (e.g., 30 or 32) on each side of a four-sided touch pad). In further support, we agree with Petitioner and find that Reime teaches that receivers 30 and 32 “are mounted in the peripheral area surrounding the LCD 92.” Pet. 32–33; Ex. 1010 ¶ 86; see also id. at Figs. 9A–9C (showing that the receivers are positioned at the edge of the LCD screen); infra annotated Fig. 9E (showing receivers 30 and 32 along edges of the LCD). Accordingly, we find Reime’s detector assembly that comprises receivers 30 and 32 is arranged along two edges (one edge for each receiver) of the LCD, which meets the Federal Circuit’s construction for being arranged at at least one edge. See supra Section III (concluding “at least one edge” means “arranged along one or more edges”) (emphasis added).” slip op. at 12

  Patent outcomesUS 8,624,850 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,624,850
• Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc.All claims unpatentable
  PTAB · Dec 12, 2025 · IPR2022-00218 · APJ Grace Karaffa Obermann · IPR · Remand

  On remand, claims 2, 5, and 6 were held unpatentable as obvious; the motion to amend was denied for proposed claims 16–21 and dismissed for claims 22–23.

  RulingsRemand decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The level of ordinary skill in the art, as articulated by Patent Owner, more accurately reflects the subject matter of the ’704 Patent and the asserted prior art than does Petitioner’s articulation. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Petitioner does not explain how “control theory” and “applied mathematics” (Pet. 16) relate to the subject matter of the ’704 Patent or the asserted prior art, and Petitioner’s reference to “laboratory experience” (id.) is too general to be useful in defining the level of skill. Furthermore, whereas Petitioner requires a POSITA to have “x-ray and computing imaging experience” (id.), Patent Owner more particularly specifies “x-ray microtomography experience” (PO Resp. 5), which is the field of art for the ’704 Patent, as well as many of the asserted prior art references. Ex. 1001, code (54) (“High resolution direct-projection type x-ray microtomography system using synchrotron or laboratory-based x-ray source”); Ex. 1007 (discussing X-ray microcomputed tomography); Ex. 1008 (discussing X-ray nanotomography and microtomography); Ex. 1010, code (54) (“Method and apparatus for utilizing an electro-optic detector in a microtomography system”); Ex. 1011 (title: “Three- Dimensional X-ray Microtomography”). For those reasons, we apply Patent Owner’s definition of a POSITA.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Neither party proposes any express claim constructions. See Pet. 17 (“all claim terms should receive their plain and ordinary meaning”); PO Resp. 5 (applying the same constructions as Petitioner). In accordance with the Federal Circuit’s mandate, however, we adopt and apply herein “[t]he plain meaning of the term ‘between 1 and 10,’” which “includes tiny, and even undetectable, magnification” and, moreover, we take account that Jorgensen anticipates claim 1, including that limitation. Paper 38, 11–12. We determine that no other claim term requires express construction for purposes of resolving any controversy between the parties. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “i. Spot Size as a Result-Effective Variable First, Patent Owner argues that Petitioner fails to “identify any prior art that discloses an x-ray source having the claimed spot size.” PO Resp. 45. We agree with Petitioner, however, that Patent Owner “fails to consider the advantages of a smaller spot size” –– advantages that would have been known to a POSITA, given that they are discussed “in each of these references.” Reply 19. Petitioner further directs us to evidence that Patent Owner’s own witness, Dr. Bentley, “agreed that a POSITA would have been aware of tradeoffs between smaller and larger spot sizes.” Id. (citing Ex. 1024, 45:14–47:20). In other words, the evidence supports that spot size would have been a result effective variable and, on this record, that optimizing that variable in view of various “tradeoffs,” recognized by Patent Owner’s own witness, would have been within the level of ordinary skill in the art. Id.; see In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art”). Patent Owner does not counter Petitioner’s evidence on that point, but instead, refers us back to a related argument in the Response, pertaining to whether one would have undertaken that modification with a reasonable expectation of success, which we address below in connection with Patent Owner’s third argument. Sur-reply 18 (citing PO Resp. 47–49).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “smaller spot sizes.” PO Resp. 45. We recognize that an obviousness challenge may be overcome “by showing that the prior art teaches away from the claimed invention in any material respect.” In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)). For a reference to teach away, however, it must state more than a general preference for an alternative invention. Specifically, it must “criticize, discredit, or otherwise discourage” investigation into the invention claimed. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In Patent Owner’s view, “Jorgensen teaches away from smaller spot sizes” because smaller spot sizes “require significantly more power to generate the desired flux.” PO Resp. 45. Patent Owner directs us to evidence that, at best, illustrates that this disadvantage would have been among the “tradeoffs between smaller and larger spot sizes” that inform the selection. Ex. 1024, 45:14–47:20 (Dr. Bentley’s cross-examination testimony); see PO Resp. 45–46 (evidence of proposed disadvantage). This evidence does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. Fulton, 391 F.3d at 1201. At best, we find that it may indicate a preference for a different spot size depending on the desired application.” slip op. at 13

  Patent outcomesUS 7,400,704 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,400,704
• Qualcomm Incorporated v. Unm Rainforest InnovationsAll claims unpatentable
  PTAB · Sep 30, 2025 · IPR2021-00375 · APJ Kristen L Droesch · IPR · Remand

  Proposed substitute claims 44–47, 49, and 50 are unpatentable as obvious under collateral estoppel; the Board denied Patent Owner’s motion to amend.

  RulingsRemand decision

  • RemandOther

    “the Acting Director of the USPTO (Paper 81, “Acting Director’s Order”) and after a decision by the U.S. Court of Appeals for the Federal Circuit (“the Federal Circuit”) in ZyXEL Communications Corp. v. UNM Rainforest Innovations, 107 F.4th 1368 (Fed. Cir. 2024) (“Federal Circuit Decision”) regarding the Board’s original Final Written Decision (Paper 68, “Final Written Decision” or “Final Dec.”) in this proceeding. In particular, the court remanded to the Board to determine if proposed substitute claims 44–47, 49, and 50 are unpatentable as obvious under collateral estoppel based on the court’s holding that claims 1–4 and 6–8 are unpatentable as obvious. ZyXEL, 107 F.4th at 1371, 1384.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “proposed substitute claim 44 presents the same issues as those litigated before the Federal Circuit: whether it would have been obvious to a person of ordinary skill in the art to include the first key element and whether it would have been obvious to a person of ordinary skill in the art to include the second key element.” slip op. at 9

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied

    “Final Written Decision, and the Federal Circuit Decision, as well as the postremand briefing, we determine that the application of collateral estoppel to proposed substitute claim 44 is appropriate. It is also appropriate to apply collateral estoppel to substitute claims 45–47, 49, and 50. This is because proposed substitute claims 45–47, 49, and 50 depend from proposed substitute claim 44 and recite identical limitations to dependent claims 2–4, 6, and 7. Therefore, the resolution of the question of obviousness of the subject matter of proposed substitute claims 45–47, 49, and 50 necessarily presents the same issues of whether it would have been obvious to a person of ordinary skill in the art to include the first key element and whether it would have been obvious to a person of ordinary skill in the art to include the second key element.” slip op. at 11

  Patent outcomesUS 8,265,096 unpatentable
  § 103 obviousness
  Patents in suitUS 8,265,096
• Shenzhen Kangvape Technology Co., Ltd. v. Rai Strategic Holdings, Inc.Other
  PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand

  On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.

  RulingsRemand decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9

  Discretionary denial
  Patents in suitUS 11,925,202

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.