These decisions are de-designated and no longer binding on the PTAB because they conflict with the decision in Corning Optical Communications RF, LLC v. PPC Broadband Inc., IPR2014-00440, Paper 68 (PTAB Aug. 18, 2015) (precedential) (“Corning Optical“), which holds that a petitioner’s amended identification of RPIs requires according the petition a new filing date. Corning Optical, IPR2014-00440, Paper 68 at 23.

The Corning Optical Rule: No Second Chances on RPI Disclosure

The reinstated Corning Optical decision establishes a bright-line rule with severe consequences for petitioners who fail to properly identify all real parties in interest at the outset of inter partes review proceedings.

In Corning Optical, the PTAB granted Patent Owner PPC Broadband’s motion to dismiss three IPR proceedings and vacated its earlier institution decisions after determining that Petitioner Corning Optical Communications RF, LLC failed to identify two related Corning entities as RPIs: its parent company Corning Incorporated and its sister company Corning Optical Communications LLC (Corning NC). The Board’s analysis focused on two critical inquiries: funding and control.

The evidence revealed:

Corning Inc.’s involvement:

• Hired outside counsel through an engagement letter signed by a Corning Inc. executive
• Paid all invoices for the IPR proceedings through its payment system
• Its IP Department attorneys directed counsel and participated in settlement discussions
• Acted as the “in-house Case Manager” per the engagement letter

Corning NC’s entanglement:

• Shared the same President, Secretary, and other officers with Petitioner
• Officers held identical titles at both entities and managed the same product lines
• Corporate boundaries were “so intertwined that it is difficult for both insiders and outsiders to determine precisely where one ends and another begins”
• Marketing and selling the accused products while Petitioner manufactured them

The Unforgiving Consequence

The Board held that under 35 U.S.C. § 312(a)(2), an IPR petition may be considered “only if” it identifies “all” real parties in interest. Because this statutory requirement was not met, the petitions were deemed incomplete and could not be considered. Critically, the Board ruled that any corrected petition identifying the additional RPIs would receive a new filing date under 37 C.F.R. § 42.106(b). Since Patent Owner had sued Petitioner more than a year before any possible new filing date, the corrected petitions would be time-barred under 35 U.S.C. § 315(b)’s one-year limitation.

Result: Complete dismissal without any merits determination on patent validity. The Corning Optical panel explicitly rejected arguments that petitioners should be allowed to correct RPI disclosures without losing their filing date—the exact approach later adopted in Proppant Express and Adello Biologics.

Implications for Practitioners

With the de-designation of Proppant Express and Adello Biologics, the USPTO has restored Corning Optical‘s uncompromising standard. Practitioners must understand:

1. No room for error. RPI disclosure is not subject to the PTAB’s typical flexibility on procedural matters. Get it wrong at filing, and there’s no do-over.

2.Investigate thoroughly before filing. Corporate structures involving parents, subsidiaries, and sister companies require careful analysis. Consider:

• Who is funding the proceeding?
• Who hired and directs counsel?
• Who controls litigation strategy and settlement discussions?
• Are corporate boundaries sufficiently distinct, or do shared officers and intertwined operations blur the lines?

3. The one-year bar becomes a trap. Combined with § 315(b)’s time limitation, an RPI disclosure error can be fatal if discovered after the one-year window closes.

4. Patent owners have leverage. Strategic patent owners can use RPI challenges as a procedural kill shot, obtaining dismissal without ever addressing patent validity.

5. Over-disclosure is safer than under-disclosure. When in doubt, name additional entities as RPIs. The consequences of omission far outweigh any perceived strategic advantage of limiting disclosure.

The USPTO’s decision to de-designate Proppant Express and Adello Biologics signals a return to strict enforcement of statutory requirements. The four-factor balancing test adopted in those decisions—considering circumvention, bad faith, prejudice, and gamesmanship—introduced discretion that the agency apparently concluded was inconsistent with the mandatory language of § 312(a)(2). By restoring Corning Optical as controlling precedent, the USPTO has chosen clarity and predictability over flexibility. Petitioners now have clear notice: identify all RPIs correctly at filing, or risk losing everything on a technicality.

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jeffer.com.

The post USPTO Restores Strict RPI Filing Date Rule appeared first on Patent Lawyer Blog.

The case centers on Samsung’s bid for declaratory relief against CyWee Group Ltd.’s patent claims related to motion-sensing technology. After dismissing CyWee voluntarily and granting CM HK’s motion to dismiss for lack of personal jurisdiction, Judge Tigar allowed amendment and limited jurisdictional discovery focused on Samsung’s alter ego theory—that CM HK operates as CyWee’s extension in California, justifying jurisdiction via CyWee’s California contacts.

Under California law, alter ego requires unity of interest and ownership, plus a risk of injustice from treating entities separately. Relevant factors include commingling of assets, shared employees and offices, and disregard of corporate formalities. Judge Tigar noted colorable claims of asset manipulation between CM HK and CyWee, warranting discovery into their relationship.

Document Production: Shared Access Equals Obligation to Produce

Samsung sought formation documents, financial records, fund transfers, bank statements, and meeting minutes from all “CyWee Entities.”  CM HK objected, limiting production to its own files and arguing no control over non-party documents. The court, applying Fed. R. Civ. P. 34(a), found responsive documents in CM HK’s possession via CEO Dr. Shun-Nan Liou’s deposition testimony. Dr. Liou admitted using a shared iCloud account and accessing servers for CM HK and affiliates like Xian Yue Intelligent and Shenzhen CyWeeMotion Technology. Citing Soto v. City of Concord (162 F.R.D. 603, 619 (N.D. Cal. 1995)) and PlayUp, Inc. v. Mintas (2024 WL 3621449, at *3 (D. Nev. Aug. 1, 2024)), the court emphasized that actual possession—disjunctive from custody or control—triggers production obligations, even for documents “belonging” to affiliates.

30(b)(6) Deposition: New Witness Required for Financial Topics

Samsung challenged Dr. Liou’s preparation on Topics 21 (financial metrics since 2014), 30 (company records), 39 (document locations for prior topics), and 40 (responsive document locations). While Dr. Liou addressed CM HK basics, he deferred repeatedly to “financial people” on details like accounts receivable, a $1 million transfer’s nature, and debts—revealing inadequate preparation.

Invoking Rule 30(b)(6)’s duty to educate designees on “reasonably available” information (Kelly v. Provident Life & Acc. Ins. Co., 2011 WL 2448276, at *2 (S.D. Cal. June 20, 2011)), the court granted a continued deposition in part. A new witness must cover Topic 21 (limited to CM HK), plus related document locations (Topics 39 and 40, narrowed). Topic 30 was deemed overbroad.CM HK’s “unused deposition time” defense was rejected; inefficiency from an unprepared witness does not bar relief (Great Am. Ins. Co. v. Vegas Const. Co., 251 F.R.D. 534, 540 (D. Nev. 2008)).

Individual Depositions: Lin and Wu Deemed Managing Agents

Samsung noticed 30(b)(1) depositions for Tiffany Lin (HR and investments) and Suzanna Wu (finance). CM HK resisted, claiming they were non-managing employees requiring subpoenas. Dr. Liou’s testimony shifted the analysis: Lin is “HR director and sometimes director of investments,” handling recruitment, investor coordination, and fund documentation; Wu manages financial information for CM HK’s Taiwan branch. Applying Ninth Circuit factors (Calderon v. Experian Info. Sols., Inc., 287 F.R.D. 629, 632 (D. Idaho 2012)), the court found both as “managing agents” for deposition purposes—exercising discretion in corporate matters relevant to alter ego (e.g., assets, employees, records), with aligned interests as current employees.  The court compelled production of these witnesses and found that any binding effect on CM HK is for trial (Symantec Corp. v. Acronis, Inc., 2013 WL 503612, at *4 (N.D. Cal. Feb. 8, 2013)). Doubts resolved in favor of discovery (Calderon, 287 F.R.D. at 633).

Path Forward and Implications

This order reinforces that colorable alter ego claims justify probing corporate interconnections and shared servers, but courts will tailor relief to avoid overbreadth.  For defendants, it underscores the risks of shared leadership and resources; for plaintiffs, it validates leveraging deposition gaps and shared resources to establish potential jurisdiction.

Samsung Electronics Co., Ltd. et al. v. CM HK, Ltd., No. 24-cv-06567-JST (LJC) (N.D. Cal. Nov. 25, 2025).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or at SGibson@jeffer.com.

The post Samsung Advances in Alter Ego Discovery for Jurisdiction: Court Orders Production and Depositions in CM HK Dispute Where Affiliates Used Common Servers appeared first on Patent Lawyer Blog.

Background

Following a finding of willful infringement, the court on August 29, 2025, entered a Permanent Injunction Order (“PI Order”) enjoining defendants from making, using, selling, or offering to sell infringing RadCad caddies—battery-powered medical transport devices—and requiring, at defendants’ expense, the destruction of all such products in their possession or control (the “Destruction Order”). The PI Order specified it would “remain in effect until the expiration of the asserted patents” and mandated notification of compliance within 30 days.

Plaintiff notified the court on September 12, 2025, that the patents expired on September 2, 2025—mere days after the PI Order. Defendants moved for confirmation that the expiration of the patent nullified all obligations, including destruction and reporting, arguing the court lacked post-expiration equitable authority. Plaintiff countered that the patents’ lapse didn’t moot remediation for past wrongs. The court, balancing the PI Order’s terms with enduring jurisdiction, sided with plaintiff.

Key Issues in the Decision

The court’s analysis hinged on the interplay between the PI Order’s explicit expiration tie and broader equitable remedies for infringement.

Survival of Destruction Obligation Post-Expiration

Defendants argued the post-expiration notification deadline (September 28) imposed no duty. The court agreed on expiration but held the underlying obligation endured: “Though Defendants are correct that, by its terms, the PI Order expired with the patents on September 2, 2025, the fact that the deadline for Defendants to provide notification of compliance was after the expiration of the patents does not mean that Defendants had no obligation to comply with the Destruction Order.”

Equitable Jurisdiction for Remedial Relief

Defendants urged that patent expiration divested the court of any equitable power, rendering the case moot. The court disagreed, drawing on Federal Circuit authority to affirm jurisdiction for “status quo” remedies like destruction, not forward-looking bans. It cited Roche Prods., Inc. v. Bolar Pharm. Co., 733 F.2d 858, 865 (Fed. Cir. 1984), noting the case was not moot because “although the initially requested order no longer is necessary, other remedies can be fashioned to give [plaintiff] relief against [defendant’s] past infringement,” such as “an order to confiscate and destroy the data which [defendant] has generated during its infringing activity.” Similarly, Kearns v. Chrysler Corp., 32 F.3d 1541, 1550 (Fed. Cir. 1994), distinguished improper relief prohibiting future invention use from Roche-style measures “intended to return the parties to the status quo before infringement (e.g., destruction of data obtained as a result of the infringement).” Echoing AstraZeneca AB v. Impax Lab’ys, Inc., 490 F. Supp. 2d 368, 375 (S.D.N.Y. 2007), the court concluded: “expiration of the patents has not divested the Court of the power to issue other forms of equitable relief.”

Thus, jurisdiction persisted: “For these reasons, the Court finds that the expiration of the patents does not divest the Court of its jurisdiction to order the destruction of all infringing products that Defendants possessed when the patents were in effect.”

Scope and Timeline of Relief

The court mandated destruction of all infringing RadCad caddies “regardless of battery size” held during the patent term, with sworn reporting: “Accordingly, by October 24, 2025, Defendants, at their own expense, shall properly destroy any and all infringing RadCad caddies, regardless of battery size, that were in their possession while the patents were in effect, and shall serve on Plaintiff a report in writing, under oath, setting forth in detail the manner and form in which Defendants have complied with this Order, filing the same on the docket.”

Implications for Patent Practice

This order illustrates the persistence of equitable remedies beyond patent life, particularly for destruction tied to past infringement—a tool to prevent “holdover” stockpiles or data hoarding. It aligns with Federal Circuit trends favoring plaintiff relief in willful cases, even if injunctions are short-lived due to term-end timing. Infringers should inventory and destroy promptly upon injunction, as delayed expiration doesn’t excuse compliance. Plaintiffs gain leverage: Courts retain flexibility to enforce cleanup, deterring gamesmanship around term ends.

Tools Aviation, LLC v. Digital Pavilion Electronics LLC et al, Case No. l 1-20-cv-02651 (E.D.N.Y. 10/10/2025)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or at SGibson@jeffer.com

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Background

AMRH accuses Samsung of infringing four patents (Nos. 9,942,434; 10,244,180; 10,484,503; and 11,238,363) covering ACR systems for fingerprinting and matching media content to enable targeted ads and analytics in smart TVs. Hoarty, a technical expert, opined on apportionment, starting from Samsung’s “Matching and Analytics Servers” costs, counting infringing sub-features (e.g., fingerprint databases), and applying a weighted apportionment rate tied to Samsung’s internal allocations and his expertise.

Samsung sought exclusion under Fed. R. Evid. 702 and Daubert, arguing Hoarty’s analysis failed to isolate the patents’ incremental value over prior art, used an unreliable feature-counting method, applied a one-size-fits-all rate across patents, and ignored total ACR costs. After briefing, the court denied the motion.

Key Issues in the Decision

The court reiterated its limited Daubert role: ensuring reliability and relevance without usurping the jury’s fact-finding via cross-examination (Micro Chem., Inc. v. Lextron, Inc., 317 F.3d 1387 (Fed. Cir. 2003)). It addressed Samsung’s arguments sequentially.

1.Prior Art in Incremental Value

Samsung claimed Hoarty violated Omega Patents LLC v. CalAmp Corp., 13 F.4th 1361 (Fed. Cir. 2021), and CSIRO v. Cisco Sys., Inc., 809 F.3d 1295 (Fed. Cir. 2015), by deeming the patents a “key enabling step” without claim-specific justification and capturing prior art value (e.g., in fingerprinting sub-features) via “incremental contributions.” This, Samsung argued, ignored the need to tie damages to the invention’s market value (VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308 (Fed. Cir. 2014)).

Rejecting this argument, the court found Hoarty’s feature-based apportionment—drilling down to Samsung-advertised levels—reliable under Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d 1332 (Fed. Cir. 2018). It cited recent E.D. Tex. cases like Correct Transmission, LLC v. Nokia of Am. Corp., 2024 WL 1289784 (E.D. Tex. Mar. 26, 2024), and Smart Path Connections, LLC v. Nokia of Am. Corp., 2024 WL 1096093 (E.D. Tex. Mar. 13, 2024), approving similar “counting” tied to defendant documents. Hoarty’s weighting via Samsung’s cost data and rebuttal of non-infringing alternatives sufficed; prior art critiques (e.g., inventors’ admissions) went to weight not admissibility (SB IP Holdings LLC v. Vivint, Inc., 2023 WL 6601415 (E.D. Tex. Oct. 10, 2023)).

2. Methodological Reliability

Samsung assailed Hoarty’s three-step process—server-cost base, sub-feature counting without equal-value disclaimers, and lack of “authoritative” support—as arbitrary (Stragent, LLC v. Intel Corp., 2014 WL 1389304 (E.D. Tex. Mar. 6, 2014); Eidos Display, LLC v. Chi Mei Innolux Corp., 2017 WL 1322550 (E.D. Tex. Apr. 6, 2017)). The court countered that Daubert tests fit, not “general acceptance” (Daubert, 509 U.S. at 597). The server base mirrored Samsung’s records; schematics’ granularity was adequate with infringement mapping from Dr. Malek; and assumptions (e.g., patents’ full sub-feature value) were rebuttable via cross-examination. The court held: “The Court finds his methodology to be sufficiently reliable for the jury to make further determinations as to the weight and credibility of his testimony.”

3.Uniform Apportionment Rate

Hoarty’s rate applying across patents allegedly flouted Omega and Cisco by ignoring value differences. The court saw overlap with prior rejections, deeming it permissible given a “common core” of benefits and Samsung’s own collective treatment of patents.

Accordingly, the court denied the motion to exclude.

Anonymous Media Research Holdings, LLC v. Samsung Electronics America, Inc., Case No. 2:23-CV-00439-JRG-RSP (E.D. Tex. Sept. 17, 2025)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at (310) 201-3548 or at SGibson@jeffer.com.

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Background

This case centers on patents for technology designed to detect cheating in bridge, a trick-taking card game with over 165,000 professional members in North America. Plaintiff, The EDGAR Association (“EDGAR”), owns and developed a competing system called EDGAR (Everyone Deserves a Game Above Reproach), which uses data analysis to generate reports on potential cheating. EDGAR filed suit seeking declaratory judgments that U.S. Patent Nos. 11,014,005 (the “‘005 Patent”) and 11,439,912 (the “‘912 Patent”)—owned by Defendants Nicolas Hammond and Hammond Software, Inc. (collectively, the “Hammond Defendants”)—are invalid and not infringed.

The ‘005 Patent, titled “Detecting Cheating and Changes in Playing Ability in Partial Knowledge and Trick-Taking Games,” issued on May 25, 2021, contains 20 claims, including three independent claims. The ‘912 Patent, a continuation of the ‘005 Patent, issued on September 13, 2022, shares a substantially identical specification. Both patents claim methods, systems, and computer equipment for detecting cheating by: (1) acquiring board data from bridge games (e.g., hand records, table results, contracts, and declarers); (2) determining performance values for players; (3) detecting deviations by comparing values against thresholds based on past cheating or optimal behavior; and (4) alerting administrators via electronic message.

EDGAR alleged that the patents improperly monopolize the use of computers to analyze bridge players’ behavior against historical data using statistical techniques. In response, Hammond Software counterclaimed for infringement of the ‘912 Patent, seeking damages, treble damages for willfulness, fees, and an injunction. The counterclaim highlighted a history of disputes with the American Contract Bridge League (ACBL), including allegations that EDGAR misappropriated Hammond’s ideas after negotiations.

EDGAR moved to dismiss the counterclaim under Fed. R. Civ. P. 12(b)(6) and for judgment on the pleadings under Rule 12(c) as to invalidity, relying solely on § 101. The district court ruled without requiring claim construction, consistent with Federal Circuit precedent allowing § 101 resolutions at the pleadings stage.

Key Issues in the Decision

The district court’s analysis focused on patent eligibility under 35 U.S.C. § 101, which excludes laws of nature, natural phenomena, and abstract ideas from patentability. Applying the Supreme Court’s two-step test from Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), the district court treated Claim 10 of the patents as representative, as all claims were substantially similar and linked to the same abstract idea.

Step One: Directed to an Abstract Idea

The court determined that the patents are directed to the abstract idea of “gathering and analyzing information” and “merely presenting the results,” citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016), and FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016). The claims involve acquiring data, determining values, detecting deviations, and alerting users—essentially “nothing but a series of mathematical calculations based on selected information and the presentation of the results,” akin to the ineligible claims in SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161 (Fed. Cir. 2018).

The court rejected Hammond Software’s argument that the patents provide a “technical solution necessarily rooted in computer technology.” It distinguished cases like CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358 (Fed. Cir. 2020) (involving a physical device for cardiac monitoring), SRI Int’l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295 (Fed. Cir. 2019) (improving computer network functionality), and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (specific rules for 3-D animation). Here, the patents do not improve computer functionality but use generic computers as tools for statistical analysis. The court emphasized that novelty alone does not confer eligibility, even if the method is “groundbreaking” in detecting online cheating.

Step Two: No Inventive Concept

Proceeding to Alice Step Two, the court found no “inventive concept” transforming the abstract idea into a patent-eligible application. The patents rely on generic components like a “processor” and “computer-readable medium,” without requiring unique hardware or improving computer technology itself, as in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). The statistical methods draw from well-known probability theories applied in other fields, using commonly available data (e.g., player hands and results).

The court dismissed arguments that the method’s applicability to online games (where physical observation is impossible) or its complexity (beyond manual performance) adds inventiveness, citing FairWarning IP for the proposition that computer efficiency does not alter eligibility. It also noted that granting the patents would monopolize statistical analysis in bridge cheating detection, preempting innovation.

Implications for Patent Practice

This ruling reinforces the Federal Circuit’s strict application of § 101 to software patents involving data analysis, even in specialized domains like gaming. Patent drafters should emphasize specific technological improvements—such as novel hardware integrations or non-generic algorithms—to survive early challenges. For litigators, it highlights the viability of § 101 motions at the pleadings stage, potentially streamlining invalidity disputes without discovery or claim construction.

In the context of emerging technologies like AI-driven analytics in esports or online gaming, this decision serves as a cautionary tale: abstract mathematical models, no matter how innovative in application, risk invalidation if they lack a transformative inventive step. Clients developing similar detection systems should consult with patent counsel to ensure claims are drafted with concrete, non-abstract elements.

The EDGAR Association v. Hammond Software, Inc., No. 1:23-cv-04985-TRJ (N.D. Ga. Sept. 11, 2025

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or at SGibson@jeffer.com.

The post District Court Invalidates Patents for Bridge Cheating Detection Software Under § 101 appeared first on Patent Lawyer Blog.

Key Policy Change

The USPTO will now strictly enforce 37 C.F.R. § 42.104(b)(4), which requires IPR petitions to “specify where each element of the claim is found in the prior art patents or printed publications relied upon.” This marks a dramatic departure from the agency’s previous practice of waiving this requirement.  As Acting USPTO Director Coke Morgan Stewart explained in the memorandum, “enforcement of Rule 104(b)(4) means that applicant admitted prior art (AAPA), expert testimony, common sense, and other evidence that is not ‘prior art consisting of patents or printed publications’ (collectively, ‘general knowledge’) may not be used to supply a missing claim limitation.”

What This Means in Practice

Under the new enforcement approach, IPR petitioners can no longer rely on general knowledge, expert testimony, or common sense to fill gaps in their prior art references when challenging patent claims. Instead, they must point to specific patents or published documents that disclose each element of the challenged claims.  However, the USPTO clarified that general knowledge can still play a supporting role. “General knowledge may still be used in an IPR to support a motivation to combine or to demonstrate the knowledge of a person having ordinary skill in the art,” the memorandum states.

Federal Circuit Pressure Forces Change

The policy shift comes in direct response to Federal Circuit decisions that questioned the USPTO’s flexible approach. See Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1373-77 (Fed. Cir. 2022) (vacating and remanding to determine whether AAPA improperly formed the “basis” of petitioner’s patentability challenge); Qualcomm Inc. v. Apple Inc., 134 F.4th 1355, 1364-65 (Fed.Cir. 2025) (rejecting USPTO’s “in combination” rule that requires the Board to consider AAPA whenever an IPR petition combines AAPA with prior art patents or printed publications because“it cannot be that AAPA never forms the basis of a ground under § 311 (b) whenever AAPA is combined with prior art patents or printed publications.”).

Stewart acknowledged that “past efforts by the Office to permit limited use of general knowledge to satisfy a missing claim limitation are no longer consistent with Federal Circuit precedent.”  The new memorandum supersedes two earlier policy documents from 2020 and 2022 that had explicitly allowed the Patent Trial and Appeal Board to waive the strict requirements of Rule 104(b)(4). Those earlier memoranda had given petitioners more flexibility in how they could challenge patents.

Impact on Patent Challenges

Starting Sept. 1, 2025, this policy change is likely to make IPR proceedings more challenging for petitioners and potentially more favorable to patent owners. Petitioners will need to ensure their prior art references more completely cover all elements of challenged claims, rather than relying on expert testimony or general knowledge to fill evidentiary gaps. The enforcement potentially represents a significant shift in the balance of post-grant patent proceedings, reducing the number of successful patent challenges and strengthening patent rights across various industries.

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jeffer.com.

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In a decision dated June 27, 2025, Acting USPTO Director Coke Morgan Stewart denied Cambridge Industries USA’s petitions to institute IPR proceedings against Applied Optoelectronics patents 9,523,826 B2 and 10,042,116 B2. The denial came despite the Director’s acknowledgment that many of Applied Optoelectronics’ other arguments for discretionary denial were weak.

Key Factors in the Decision

1. Patent Age and Settled Expectations

The decisive factor was the age of the challenged patents. The Director noted that the patents in IPR2025-00433 and IPR2025-00435 “have been in force for nine and seven years, respectively,” creating stronger settled expectations for the patent owner compared to newer patents in related proceedings. As the Director explained: “Patent Owner’s settled expectations as to the patents challenged in IPR2025-00433 and IPR2025-00435 are stronger and discretionary denial is appropriate as to these proceedings.”

2.Parallel District Court Litigation

The parties are engaged in parallel litigation in the Northern District of California, though the impact was limited since there is no currently scheduled trial date and the Markman hearing has been vacated.

3.Rejected Arguments

The Director dismissed several of Applied Optoelectronics’ other arguments for discretionary denial, including claims that Cambridge Industries was over-reliant on expert testimony and arguments under 35 U.S.C. § 325(d).

4.Contrasting Treatment of Patent Families

The decision reveals a split approach based on patent age. While the Director denied institution for the older patents, the decision notes that newer patents from 2019-2020 in related proceedings (IPR2025-00434, IPR2025-00436, and IPR2025-00437) did not warrant discretionary denial based on settled expectations.

Key Takeaways

This decision suggests that challengers should consider the age of target patents when planning IPR campaigns. Patents approaching or exceeding seven years in force may face heightened scrutiny for discretionary denial, particularly when patent owners can demonstrate settled expectations in the marketplace.

The case was decided before Acting Under Secretary of Commerce for Intellectual Property and Acting Director Coke Morgan Stewart. The decision is Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc., Case Nos. IPR2025-00433 and IPR2025-00435, Paper 11 (Decision Granting Patent Owner’s Request for Discretionary Denial and Denying Institution of Inter Partes Review) (USPTO June 27, 2025).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jeffer.com.

The post USPTO Director Once Again Blocks Patent Challenges Based on “Settled Expectations” for “Older” Patents appeared first on Patent Lawyer Blog.

Background of the Dispute

The case involves two IPR proceedings (IPR2025-00068 and IPR2025-00070) filed by CrowdStrike challenging Patent 9,954,872 B2 owned by GoSecure. CrowdStrike filed separate petitions primarily to present two different interpretations of the claim term “association,” a broader construction and a narrower construction.

The Director’s Ruling

Acting Under Secretary Coke Morgan Stewart determined that the Board abused its discretion by instituting both proceedings. The Director emphasized that “one petition should be sufficient to challenge the claims of a patent in most situations” and “multiple petitions by a petitioner are not necessary in the vast majority of cases,” citing the Board’s Consolidated Trial Practice Guide. The Director found that allowing multiple petitions for different claim constructions “effectively expands the permitted word count and places ‘a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.’”

Key Issues with Multiple Petitions

Petitioner’s strategy involved filing two petitions with significant overlap, advancing five obviousness grounds in one petition under a broader interpretation of “association” and three obviousness grounds in another petition under a narrower interpretation. As the Patent Owner pointed out, “the two petitions assert eight different grounds with significant overlap.” The Board had originally justified instituting both proceedings because Patent Owner had not “weighed in on” the claim construction issue. However, the Director found this reasoning flawed, stating that “the proper course is to allow Patent Owner to submit whatever arguments are necessary for the panel to make a claim construction determination.”

Procedural Orders

The Director established a specific timeline for resolving the claim construction dispute:

• Patent Owner is authorized to file a 10-page brief explaining how the Board should construe “association” within 14 days
• Petitioner may file a five-page response brief within seven days of Patent Owner’s filing
• The Board must issue a decision on remand within 30 days of Petitioner’s brief deadline

Broader Implications

This decision reinforces the USPTO’s policy against allowing petitioners to effectively circumvent word count limitations and procedural constraints by filing multiple petitions targeting the same claims, particularly where there are different claim constructions as between the two petitions. The ruling aligns with the Board’s guidance that multiple petitions should be exceptional rather than routine practice. The case has been remanded to the Board to determine which of the two proceedings, if any, should be instituted after considering the parties’ claim construction arguments and construing the disputed claim term at issue.

The decision represents a significant procedural ruling that may influence how petitioners approach claim construction disputes in future IPR proceedings, emphasizing that the Board should resolve claim construction issues rather than allowing multiple proceedings to proceed in parallel using different claim constructions for the same claim terms.

The case was decided before Acting Under Secretary of Commerce for Intellectual Property and Acting Director Coke Morgan Stewart. The decision is CrowdStrike, Inc. v. GoSecure, Inc., Case Nos. IPR2025-00068 and IPR2025-00070, Paper 25 (Order Granting Director Review, Vacating the Decisions Granting Institution, and Remanding to the Patent Trial and Appeal Board for Further Proceedings) (USPTO June 25, 2025).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jeffer.com.

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In IPR2025-00112, Patent Owner Miracor Medical SA accused Petitioner Abbott Laboratories of circumventing the 14,000-word limit for IPR petitions through improper formatting. Patent Owner argued that Abbott’s petition “regularly omits a space when citing to exhibits (e.g., ‘Ex.1001’ vs. ‘Ex. 1001’), the expert’s declaration (e.g., ‘¶¶16–19’ vs. ‘¶¶ 16–19’), and statutes (e.g., ‘§103’ vs. ‘§ 103’).” Patent Owner claimed these formatting choices occurred so frequently that “at least 966 words have been improperly undercounted,” resulting in “an advantage to Petitioner and undue prejudice to Patent Owner.” The patent owner sought denial of the entire petition based on this alleged violation.

PTAB’s Established Standards

The Board referenced the Patent Trial and Appeal Board Consolidated Trial Practice Guide, which states that “deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count, may lead to a party’s brief not being considered.” The guidance specifically warns against manipulative formatting designed to evade word count limitations, citing the Federal Circuit’s decision in Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015).

Board’s Analysis and Rejection

Despite acknowledging the established standards, the PTAB rejected Patent Owner’s challenge on several procedural grounds:

1. Failure to Raise Timely Objection.  The Board emphasized that “Patent Owner did not raise with the Board, prior to filing its Preliminary Response, any concern with the manner in which Petitioner formatted its Petition.” This failure prevented Patent Owner from seeking alternative relief, such as requesting additional word count for its own response.
2. No Demonstrated Prejudice.  Critically, the Board noted that Patent Owner’s preliminary response contained only “11,395 words, which is less than the 14,000 word limit.” The Board found this significant: “The fact that Patent Owner did not use the maximum number of words available, even without an increase in words, suggests that the alleged improper formatting of the Petition did not prejudice Patent Owner by preventing it from adequately responding.”
3. Waiver Through Inaction.   The PTAB concluded that Patent Owner “did not avail itself of the opportunity to seek relief to address any alleged undue prejudice short of denying the Petition through, for example, an increase in the word count for its own brief.”

Key Procedural Takeaways:

1. Timing Matters: Parties must raise formatting objections promptly, not wait until filing substantive responses.
2. Prejudice Must Be Demonstrated: Merely pointing to technical violations isn’t sufficient without showing actual harm.
3. Alternative Remedies: The PTAB expects parties to seek appropriate relief rather than demanding petition denial.
4. Practical Impact: Courts will consider whether alleged violations actually affected the opposing party’s ability to respond.

The case was decided before Administrative Patent Judges Annette R. Reimers, James A. Tartal, and John D. Hamann, with the decision written by Judge Tartal. The decision is Abbott Laboratories v. Miracor Medical SA, Case No. IPR2025-00112, Paper 13 (Decision Granting Institution of Inter Partes Review) (PTAB June 9, 2025).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jeffer.com.

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Background

In IPR2025-00044, Petitioner challenged claims 1-3, 5, and 6 of U.S. Patent No. 7,557,788 B1, titled “Gamma Reference Voltage Generator.” The patent relates to a programmable buffer integrated circuit for generating gamma correction reference voltages used in liquid crystal displays (LCDs).

Key Issue: Means-Plus-Function Claim Construction

The central issue in the case involved proper construction of “means for executing” limitations found in the challenged claims. Under 37 C.F.R. § 42.104(b)(3), petitions must identify the specific portions of the specification that describe the structure corresponding to means-plus-function claim elements. The PTAB found that Petitioner failed to satisfy the mandatory claim construction requirements in multiple ways:

First, the Petitioner took contradictory positions on whether certain claim limitations were means-plus-function terms. As the Board noted: “Petitioner’s argument that claim 3’s ‘means for executing . . . ‘ is means-plus-function language (Pet. 12–14) conflicts and is at odds with Petitioner’s argument that claims 1 and 5’s ‘means for executing’ (discussed above) is not means-plus-function language (Pet. Reply 5).”

Second, the Board emphasized that when claims contain means-plus-function limitations, petitioners must “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” Petitioner failed to do this for any of the challenged claims.  The use of the term “means” creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 6 applies. The Board found that “the Petition does not address the presumption and, more specifically, the Petition does not provide any argument or evidence as to why the presumption is rebutted.”

The Rule 42.104(b)(3) Violation

The Board’s decision heavily relied on the USPTO’s Consolidated Trial Practice Guide, which states: “Where claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. 37 C.F.R. § 42.104(b)(3).”  The Guide further warns: “A petitioner who chooses not to address construction under § 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).”

Petitioner’s Failed Arguments

Petitioner attempted several arguments to avoid the rule requirements:

1. District Court Reliance: Petitioner argued that neither party had identified these terms as means-plus-function in parallel district court litigation. The Board rejected this, noting it was Petitioner’s burden to comply with IPR rules regardless of district court proceedings.
2. Alternative Construction: Petitioner proposed an alternative construction referring to a “programming interface which executes an optimization algorithm,” but failed to identify where this structure was described in the specification.
3. Indefiniteness Arguments: Petitioner argued the claims were indefinite, but the Board noted that “indefiniteness is not one of [the grounds that can be raised in IPR under §§ 102 and 103].”

Impact on Obviousness Analysis

The claim construction failures had cascading effects on the obviousness analysis. The Board explained: “Because Petitioner has not identified structure corresponding to the functions recited in claims 1, 3, and 5, or explained how that structure is taught by the prior art, Petitioner has not presented us with evidence sufficient to ascertain the differences between the claimed invention and the asserted prior art.”

The Board concluded: “Because the Petition fails to rebut the presumption that claim 1 and 5’s ‘means for executing a predetermined algorithm according to a predetermined criteria and data sensed by said at least one sensor’ is a means-plus-function term and fails to identify corresponding structure in the Specification… the Petition does not comply with our rules.”

Key Takeaways

1. Mandatory Compliance: Rule 42.104(b)(3) requirements are not optional—petitioners must address means-plus-function limitations properly or risk denial.
2. Consistency Required: Petitioners should avoid taking contradictory positions on whether claim terms are means-plus-function limitations.
3. District Court Irrelevant: Positions taken or not taken in parallel district court litigation do not excuse compliance with IPR procedural rules.
4. Structure Identification Essential: For computer-implemented means-plus-function terms, petitioners must identify specific algorithms, not just general hardware like “programming interfaces.”

This decision serves as a stark reminder that procedural compliance in IPR petitions is not merely technical,  it’s essential for institution.

The case was decided before Administrative Patent Judges Kevin F. Turner, Michael J. Strauss, and David C. McKone, with Judge Strauss writing for the Board. The decision is Innolux Corporation v. Phenix Longhorn LLC, Case No. IPR2025-00044, Paper 11 (Decision Denying Institution of Inter Partes Review) (PTAB June 9, 2025).

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Greg Cordrey at 949.623.7236 or GCordrey@jeffer.com.

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