PV Law LLPPV Law LLP2026-06-01T16:01:25Zhttps://www.pvuslaw.com/feed/atom/WordPress/wp-content/uploads/sites/1604885/2025/01/cropped-og-image-purple-1-32x32.jpgby Jeremy Peterson<![CDATA[Recent Director Decisions Double Down On The Rule that Petitioners Must Justify Different Claim Construction Positions Across Forums]]>https://www.pvuslaw.com/?p=502312026-05-15T19:41:32Z2026-05-15T19:41:32Zprecedential decision and several informative ones, have established and reinforced a rule with significant practical consequences for any company simultaneously defending a patent case in district court while challenging the same patent at the Board.
Revvo Technologies, Inc. v. Cerebrum Sensor Technologies, Inc., IPR2025-00632 — Paper 20 (Nov. 3, 2025) & Paper 36 (Jan. 26, 2026) (Precedential)
In the first Revvo decision, the Director initiated sua sponte review after the Board granted institution despite Revvo having adopted the patent owner's district court construction in the petition, without explaining why its own preferred district court construction was being abandoned. The Board had reasoned that taking inconsistent positions mattered only when means-plus-function terms under 35 U.S.C. § 112(f) were implicated. The Director squarely rejected that narrow reading: the obligation to explain divergent claim construction positions applies across the board, regardless of whether § 112(f) is at issue. The decision vacated institution and remanded for further briefing. In its decision, the Director noted that an example of where a party could make inconsistent claim constructions before the Board and in district court would be “if a party advances a narrow construction in the district court and the court declines to adopt the narrow construction, the party would have sufficient reason for advancing the broader, court-adopted construction in the proceeding before the Board.”
On remand, the Board again granted institution — this time crediting Revvo's argument that it could not wait for the district court's still-pending claim construction ruling before filing a timely petition and that the court could reject the narrower construction. The Director again disagreed and again vacated institution. The Director's January 2026 follow-up order clarified that the “exemplary logic” for permitting divergent constructions is limited to situations where the district court has already rejected a petitioner's preferred construction — not where a petitioner is merely speculating that the district court might do so in the future. Allowing a petitioner to adopt a “wait and see” posture, the Director wrote, is not permitted.
Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340 — Paper 18 (Nov. 5, 2025) (Informative)
In Tesla, the petitioner argued indefiniteness in the district court — contending that a skilled artisan could not determine the meaning of a claim limitation with reasonable certainty — while simultaneously asking the Board to apply “plain and ordinary meaning” to the same limitation. When Patent Owner raised this inconsistency in a Director Review request, the Director vacated institution. Tesla's defense — that it was statutorily prohibited from raising indefiniteness in an IPR — was rejected as insufficient. The Director explained that the statutory bar on indefiniteness challenges in IPRs does not justify adopting a plain-and-ordinary-meaning position before the Board when the petitioner has argued the term cannot be understood in district court. The decision noted that a sufficient explanation might exist if the petitioner had shown that, notwithstanding alleged indefiniteness, a skilled artisan would understand the prior art satisfies the limitation regardless of where the boundaries lie. Tesla made no such showing. The Director noted that indefiniteness could be argued in district court and not in the petition if “an ordinarily skilled artisan would understand that the asserted art satisfies the claim limitation (such as if the limitation prescribed a range and only the outer bounds of the range were unclear).”
Terumo BCT Inc. v. Haemonetics Corp., IPR2025-01374 — Paper 20 (May 12, 2026) (Informative)
Terumo sharpened the rule by adding a timing dimension. Terumo's petitions asserted that claims “need no construction,” but one week after institution was granted, Terumo filed invalidity contentions in district court arguing that claims reciting “controller” were indefinite under § 112(f). The Director found this pattern, advancing inconsistent positions at the first opportunity after institution, paradigmatic of the conduct the rule was designed to prevent. Importantly, the Director framed the inquiry broadly: the question is whether a petitioner's conduct reveals that the IPR is being used not as a “litigation alternative” as Congress intended, but as a vehicle for maintaining inconsistent positions to gain a strategic upper hand in the overall litigation. Institution was vacated.
TikTok, Inc. v. ShopSee, Inc., IPR2025-01485 — Paper 13 (Jan. 16, 2026) (Informative, designated May 13, 2026)
TikTok addressed whether a petitioner can cure the inconsistency problem through post-hoc stipulation. After patent owner raised the indefiniteness vs. plain-meaning discrepancy, TikTok offered to withdraw its indefiniteness arguments from district court if the IPR was allowed to proceed. The Director rejected this as a cure. The decision drew a sharp distinction between two types of stipulations: a stipulation not to pursue in district court the same invalidity grounds raised or reasonably raisable in the IPR, which promotes efficiency and reduces duplication, versus a stipulation merely to stop arguing inconsistently, which only swaps one forum's argument for another’s. The latter provides no systemic benefit, and the Director declined to use it as a basis for maintaining institution.
Ford Motor Company v. AutoConnect Holdings LLC, IPR2025-01342, -01383, -01524 — Paper 27 (May 12, 2026) (Informative)
Ford applied the Terumo framework to a multi-IPR context involving three related patents. After institution was granted, Ford served district court invalidity contentions asserting that seven claim terms across all challenged patents were indefinite — terms it had not construed (or had construed as having plain and ordinary meaning) in the petitions. Ford argued that its indefiniteness positions for two specific terms (“and/or” and “one or more”) fit within the Tesla safe harbor because the prior art would anticipate or render obvious the claims regardless of how those terms were construed. The Director acknowledged that argument but found it unavailing because Ford's indefiniteness contentions reached far beyond those two terms. Ford's offer to stipulate to withdraw all indefiniteness arguments offered only after the violations were brought to the Office’s attention was also rejected under the same rationale applied in TikTok.
Practical Takeaways
Taken together, these decisions establish a clear pattern. A petitioner is not categorically forbidden from advancing different claim construction positions before the PTAB and in district court, but it must explain, in the petition itself, why those different positions are warranted. The explanation must be substantive. Pointing to the statutory bar on indefiniteness challenges in IPRs, asserting that a claim term is “not in controversy,” or noting that district court claim construction is still pending will not suffice.
The two recognized bases for diverging constructions are: (1) where the district court has already rejected the petitioner’s preferred narrower construction, prompting a broader position before the Board, and (2) in the indefiniteness context, where a limitation prescribed a range and only the outer bounds of the range were unclear.
The decisions also signal that the timing and sequencing of how inconsistent positions come to light matters. Petitioners who adopt a plain-and-ordinary-meaning posture in a petition and then assert indefiniteness in district court contentions served after institution, even one week after, will find that the Director views such conduct as evidence that the IPR is being used strategically rather than as a genuine alternative to litigation. Moreover, a post-hoc offer to withdraw the inconsistent position, offered only once caught, will not restore institution.
For legal departments and outside counsel managing parallel IPR and district court proceedings, the practical implication is straightforward: claim construction strategy must be unified and considered before the petition is filed, not after. If there is a legitimate reason to advance different constructions in the two forums, that reason must be articulated in the petition. Finally, if indefiniteness will be a meaningful argument in district court, counsel should carefully assess whether and how to proceed with an IPR petition on the same claims.]]>by Jing Zhao<![CDATA[Technology Spotlight: Beam Global’s EV Charging System Using Wind Turbine and Solar Panel]]>https://www.pvuslaw.com/?p=502292026-05-15T19:37:05Z2026-05-14T18:54:21Z
The ’851 patent, Fig. 1 (annotated). According to the ’851 patent, the wind turbine 14 rotates around the vertical axis 32 through an angle ψ in response to the reaction of a weathervane 34, id. at 5:58-64, while the solar panel rotates through a predetermined directional angle θ and a predetermined inclination angle Φ via a motor (not shown in Fig. 1) in accordance with a predetermined schedule, id. at 6:9-16. The patent discloses that the predetermined schedule is established based on the time of day and the path of the sun during the day. Id. at 3:27-36.
The ’851 patent contemplates that the system may be permanently installed at a specific location and connected to operate with a public grid, or configured as a mobile unit that can be periodically repositioned. The ’851 patent, 2:34-39.
Claim 1 of the ’851 patent recites:
A system for generating renewable energy, the system comprising:a support base defining a support axis, wherein the support axis is vertical;an extension arm mounted to the support base, wherein the extension arm has an end extending outward from the support base, and the extension arm rotates about the support axis;a solar panel mounted to an attachment point at the end of the extension arm, wherein a first portion of the solar panel extends above the attachment point and the extension arm, a second portion of the solar panel extends below the attachment point and the extension arm, and the solar panel is rotatable through an inclination angle about the attachment point;a first motorized mechanism configured to rotate the extension arm about the support axis;a second motorized mechanism mounted at the end of the extension arm, and connected with the solar panel for rotating the solar panel through the inclination angle;a controller in combination with the first motorized mechanism and the second motorized mechanism, and the controller and the first motorized mechanism collectively configured to rotate the solar panel along a directional arc about the support axis to keep the solar panel facing a direction toward the sun; anda wind turbine mounted with respect to the extension arm and/or the support base, wherein the wind turbine rotates about a turbine axis that is parallel to the support axis, wherein the wind turbine also rotates around the support axis so that the wind turbine is and remains down-sun of the solar panel during a rotation of the solar panel along the directional arc to prevent the wind turbine from shading the solar panel, and the wind turbine is mounted above the support base and/or the solar panel whereby the solar panel does not block wind from contacting the wind turbine during the rotation along the directional arc.
The ’851 patent, 8:29-67.]]>by PV Law LLP<![CDATA[Jing Zhao Named to Nevada Business Magazine’s Top Ranked Patent Litigation Lawyers 2026]]>https://www.pvuslaw.com/?p=502252026-05-11T14:32:47Z2026-05-07T14:28:08Z]]>by Bradford Cangro<![CDATA[Standard-Based Infringement Evidence Can Be Element-by-Element]]>https://www.pvuslaw.com/?p=502052026-04-30T20:20:17Z2026-04-30T20:20:17ZIntroduction
In Constellation Designs, LLC v. LG Electronics Inc., Case No. 2024-1822, the Federal Circuit affirmed the Eastern District of Texas’s denial of LG’s motion for judgment as a matter of law on non-infringement, holding that Constellation could prove infringement by relying on industry-standard evidence for some claim limitations and product-specific evidence for others within the same claim. The court also concluded that substantial evidence supported the jury’s infringement verdict against LG’s ATSC 3.0-compatible televisions.
Background
Constellation Designs, LLC sued LG Electronics Inc. and its affiliates in the Eastern District of Texas for willful infringement of patents related to non-uniform signal constellations used in digital communication systems. At trial, Constellation accused LG televisions that were compatible with the ATSC 3.0 broadcast standard, particularly protocol A/322, of infringing the asserted patents. After the jury found infringement, LG moved for JMOL of non-infringement, arguing that Constellation had improperly mixed two different proof models: standards-based evidence for some claim elements and direct product evidence for others.
LG’s argued that under Fujitsu Ltd. v. Netgear Inc., 620 F.3d 1321 (Fed. Cir. 2010), a patentee may rely on a standard to prove infringement only when the standard satisfies every limitation of the asserted claim, not merely a subset of limitations. Constellation countered that nothing in Fujitsu or its progeny prohibits a patent owner from relying on standard-compliance evidence for some limitations while using direct product evidence for others.
The district court rejected LG’s argument and agreed with Constellation, holding that nothing prevents a plaintiff from using a standard-based read for some limitations and a direct comparison to the accused products for other limitations of the same claim, so long as the evidentiary showing is sufficient. Further, the district court found substantial evidence supported the jury’s verdict and denied LG’s JMOL.
Federal Circuit Analysis
The Federal Circuit agreed with the district court’s reading of Fujitsu and held that its logic can apply on a limitation-by-limitation basis rather than only at the full-claim level. According to the court, when a standard is (1) sufficiently specific and (2) mandatory, or if optional, shown to be implemented in the accused product, a patentee may use the standard to prove satisfaction of that particular limitation, while relying on separate product evidence for the remaining limitations.
The court gave two reasons for agreeing with the district court. First, it emphasized efficiency: if a group of products practices the same standard, it would waste judicial resources to separately re-prove the same limitation product by product when the standard itself establishes that limitation. Second, the same safeguards identified in Fujitsu still apply in this narrower setting, namely that the relevant portion of the standard must be specific enough to show that practicing it necessarily satisfies the limitation, and that the relevant provision must be mandatory or affirmatively implemented if optional. The Federal Circuit found no textual or logical basis in Fujitsu or its progeny that would restrict those principles to whole-claim analysis. LG’s argument that this approach "vitiate[d] Fujitsu" was rejected.
The Federal Circuit also held that substantial evidence supported the jury’s verdict. The court noted that LG’s own technical expert acknowledged the accused televisions were ATSC 3.0-compatible. Constellation’s expert testified based on physical testing, source code, ATSC documents, and LG’s internal records that all accused televisions could receive ATSC 3.0 signals using the same patented constellations embedded in the standard. LG’s own corporate representative confirmed that LG chips implement the A/322 protocol, which the FCC has mandated for ATSC 3.0 television receivers. Given this record, the Federal Circuit concluded substantial evidence supported the infringement verdict.
Conclusion
The Federal Circuit has now made clear that standard-based infringement proof is not an all-or-nothing exercise. In the right case, a patentee may use an industry standard to establish some limitations and product-specific evidence to establish others, provided the Fujitsu requirements are satisfied for each standard-based limitation.]]>by Bradford Cangro<![CDATA[Federal Circuit Dismisses Petitioner’s Appeal of PTAB Decision on Amended Claims for Lack of Standing]]>https://www.pvuslaw.com/?p=502042026-04-11T20:46:34Z2026-04-11T20:46:34ZIntroduction
In ironSource Ltd. v. Digital Turbine, Inc., the Federal Circuit dismissed an appeal from a Patent Trial and Appeal Board (PTAB) decision on the ground that the petitioner lacked Article III standing. The court held that ironSource failed to demonstrate a concrete and particularized injury in fact. Specifically, ironSource did not establish a sufficient risk of infringement tied to the amended patent claims at issue, which precluded appellate review.
Background
Digital Turbine (DT) owns U.S. Patent No. 11,157,256, directed to technology for installing mobile applications in the background. ironSource petitioned for post-grant review (PGR) challenging the original claims (1–22) on various statutory grounds. During the proceeding, DT filed an initial and revised motions to amend, proposing substitute claims (23–37) that added narrowing limitations.
The Patent Trial and Appeal Board (PTAB) ultimately determined that (1) the original claims were unpatentable; and (2) the substitute claims in the revised motion were patentable because ironSource failed to show, by a preponderance of the evidence, that those amended claims were unpatentable.
ironSource appealed the PTAB’s decision upholding the substitute claims. Before the Federal Circuit, the dispute centered on whether ironSource had Article III standing to pursue the appeal.
ironSource argued it had standing based on a risk of future infringement liability. It pointed to alleged “veiled threats” by DT suggesting that ironSource’s prior product (Aura), particularly its “Click-to-Install” features, infringed DT’s patents. ironSource asserted that these threats forced it to modify its product and business practices and that it wished to reintroduce similar functionality but was deterred by the PTAB’s decision upholding the amended claims.
DT countered that ironSource lacked standing because it failed to demonstrate a concrete and particularized injury. Specifically, DT argued that ironSource had not shown any current or imminent activity that would infringe the substitute claims, nor had it established a sufficient connection between its prior product features and the newly amended claims at issue.
Federal Circuit’s Decision
The Federal Circuit agreed with DT that irconSource lacked standing and dismissed the appeal for lack of Article III standing.
The Federal Circuit reiterated that, while a party need not establish standing to initiate a PTAB proceeding, it must demonstrate standing to appeal an adverse decision. To do so, the appellant must show a concrete and particularized injury that is actual or imminent, such as a substantial risk of future infringement liability. The party must have standing at the time the appeal is filed.
The Federal Circuit found that ironSource did not meet this burden for several reasons:
No Concrete Plans for Potentially Infringing Activity
Although ironSource had previously developed and marketed a product (Aura) with “Click-to-Install” features, the Federal Circuit found no evidence of concrete plans to reintroduce those features in a manner that would implicate the substitute claims.
Failure to Link Product Features to the Amended Claims
The Federal Circuit emphasized that the relevant inquiry must focus on the substitute claims, which included additional narrowing limitations. ironSource failed to demonstrate how its prior or contemplated product features would satisfy those specific limitations.
Insufficient Evidence of Imminent Infringement Risk
ironSource relied on a declaration describing DT’s alleged “veiled threats” and past business impacts. However, the Federal Circuit found this evidence insufficient because it did not establish a concrete and particularized risk of infringement tied to the claims at issue.
The Federal Circuit rejected ironSource’s contention that past allegations and business impacts alone were sufficient to establish standing. The Federal Circuit found that such assertions must be supported by evidence connecting the alleged risk of infringement to the specific claim limitations at issue, which is something ironSource failed to do.
Because ironSource failed to establish standing, the Federal Circuit did not reach the merits of the PTAB’s decision and dismissed the appeal for lack of jurisdiction.
Conclusion
This decision reinforces the principle that just because a party is able to file a petition for review at the PTAB does not mean it will be able to appeal an adverse decision by the Board. Moreover, the issue of standing can be particularly problematic with respect to amended or substituted claims. Finally, generalized assertions of past disputes or business concerns may be insufficient. When an appellant who is challenging the validity of a patent relies on potential infringement liability as a basis for injury in fact, it should be prepared to show concrete plans for potentially infringing activity and a clear nexus between that activity and the specific claim limitations.]]>by Jing Zhao<![CDATA[Technology Spotlight: Naderian’s EV Charging on Pavement]]>https://www.pvuslaw.com/?p=502002026-04-07T22:45:45Z2026-04-07T22:45:45ZId. at 2:27-31.
The ’340 patent proposes installing magnetic bars flush with the surface of pavements. Figure 1 illustrates an electric vehicle travelling over magnetic bars:
The ’340 patent, Fig. 1 (annotated).
Figure 2 illustrates the EV with the winding coil retracted in its housing (not in use):
The ’340 patent, Fig. 2 (annotated).
Figure 4 illustrates the EV with the winding coil extended down to hover over the magnetic bars (in charging mode):
The ’340 patent, Fig. 4.
The proposed charging system of the ’340 patent allows an electric vehicle to charge while driving over the lane(s) with embedded magnetic bars. The ’340 patent, 3:57-58. To activate charging, the patent proposes a switch located on the dash that lowers the winding coil, or alternatively, sensors that automatically perform this function. Id. at 3:58-61.
Claim 1 recites:
The invention claimed is an electric vehicle (EV) charging apparatus, comprising:magnetic bars embedded in a surface of a pavements [sic], and [sic]a winding coil mounted beneath the EV by pin and hanger links,an actuator configured to lower the winding coil over the wireless magnetic bars,and wherein said pavement is indented with cavities previously saw cut to house the magnetic bars.
The ’340 patent, 4:37-46.]]>by Jing Zhao<![CDATA[Shoals Technologies v. Ningbo Voltage at the ITC and Sholas Technologies’ Solar Lead Assembly Patents]]>https://www.pvuslaw.com/?p=501832026-03-06T15:09:05Z2026-03-06T15:09:05ZShoals Techs. Grp., LLC v. Ningbo Voltage Smart Prod. Co., Inv. No. 337-TA-1438, Initial Determination (U.S. Int’l Trade Comm’n Feb. 5, 2026). On February 24, 2026, following an evidentiary hearing, the ITC issued its Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond upholding validity and finding direct and indirect infringement of both patents. Id., Initial Determination on Violation of Section 337 and Recommended Determination on Remedy and Bond (U.S. Int’l Trade Comm’n Feb. 24, 2026).
The ’375 patent, titled “Lead Assembly for Connecting Solar Panels and Power Inverters,” discloses a lead assembly that includes drop lines joined to a feeder cable to bypass the need for a combiner box. The ’375 patent, Abstract.
According to the ’375 patent, in solar power installations, energy collected from multiple solar panels must be consolidated before it can be fed into an inverter. The ’375 patent, 1:46-49. Conventionally, the industry has relied heavily on centralized combiner boxes to handle this consolidation. Id. at 1:28-30. The patent identifies several significant shortcomings with this purported conventional approach, including combiner boxes being “clumsy, prone to damage and malfunctioning,” demanding regular maintenance and requiring extensive planning and skilled labor to install properly, and their relocation being a labor-intensive process that adds danger, manpower requirements, and expense. Id. at 1:50-57.
Figure 1 illustrates the prior art system including a conventional wiring configuration where each solar panel must be individually wired to a central combiner box. The ’375, 2:24-27.
The ’375 patent, Fig. 1.
The ’375 patent describes a lead assembly designed to render the combiner box unnecessary. The ’375 patent, Abstract. The assembly utilizes at least one drop line that is securely joined directly to a main feeder cable at a connection point referred to as a “nexus.” Id. at 1:65-2:1. The drop line connects to a solar array’s wire harness, while the main feeder cable routes the combined electrical power straight to the inverter, or to a trunk buss jumper. Id. at 2:2-4.
Figure 3 illustrates the system using a lead assembly. The ’375 patent, 2:31-32. Specifically, Figure 3 illustrates a plurality of wire harnesses coupled to the lead assembly, which then connects directly to the inverter, eliminating the combiner box completely. Id.
The ’375 patent, Fig. 3.
Figure 35 illustrates the drop line and feeder cable being held together by compression lug 20, which is surrounded by an undermold. The undermold, in turn, is surrounded by an overmold. The ’375 patent, 4:55-60. According to the patent, this structure “is profoundly durable, resistant to environmental factors such as temperature fluctuations, debris, and moisture, and is strong enough to be buried.” Id. at 6:7-10.
The ’375 patent, Fig. 35 (annotated).
The ’375 patent, Fig. 33 (annotated, illustrating the undermold).
The ’375 patent, Fig. 29 (annotated, illustrating the overmold).
Figure 37 illustrates the internal construction of a joint, where the exposed wire of the drop line and the feeder cable electrically couple at the nexus. The ’375 patent, 3:16-17; 5:58-62.
The ’375 patent, Fig. 37 (annotated).
Claim 1 of the ’375 patent recites:
A lead assembly for electrically coupling one or more drop lines to a feeder cable, the lead assembly comprising: a joint where a section of the feeder cable and a section of the one or more drop lines can be electrically coupled at a nexus, the joint including the section of the feeder cable and the section of the one or more drop lines; anda monolithic mold that encapsulates the nexus, the monolithic mold further comprising: a feeder pathway extending completely through the monolithic mold and configured to allow the feeder cable to extend completely through the monolithic mold; andone or more drop line pathways that each extend at least partially through the monolithic mold, and each configured to allow one of the one or more drop lines to extend at least partially through the monolithic mold;wherein: each of the one or more drop lines are configured to be capable of receiving electrical power from a plurality of solar panels for combination at the nexus to the feeder cable;one of the one or more drop lines includes a section of exposed wire at the nexus;the feeder cable includes a section of exposed wire at the nexus; andat least a portion of the section of exposed wire of the drop line is parallel to at least a portion of the section of exposed wire of the feeder cable; wherein the one or more drop line pathways and the feeder pathway extend parallel to one another within the nexus, and the monolithic mold has distinct openings at ends of the feeder pathway and one or more drop line pathways through which the one or more drop lines and the feeder cable exit the monolithic mold.
The ’375 patent, 6:49-7:18.]]>by Ghee Lee<![CDATA[Drawing the Line under Rule 702 And Daubert in a Domain of “Approximation and Uncertainty”]]>https://www.pvuslaw.com/?p=501812026-03-05T17:21:36Z2026-03-05T17:14:43ZWillis Electric Co. v. Polygroup Ltd., No. 2024-2118, 2026 WL 438657, at *7 (Fed. Cir. Feb. 17, 2026).
Background
This case involved Willis Electric Co., Ltd.’s (“Willis”) U.S. Patent 8,454,186 (the “’186 patent”), which is directed to pre-lit artificial trees with separable, modular trunk portions that are mechanically and electrically connectable to each other, providing electricity to the tree’s attached lights at any rotational orientation. In contrast to the prior art, the ’186 patent purportedly teaches a single, integrated connection in which assembling the trunk portions establishes the mechanical and electrical connections simultaneously. Willis sells “One Plug” trees and sued Polygroup for selling allegedly infringing “Quick Set” line of pre-lit trees.
The jury found infringement and awarded $42.5 million in damages. Polygroup moved for judgment as a matter of law on obviousness and for a new trial on damages, arguing that the opinions of Willis’s damages expert should have been excluded under Federal Rule of Evidence 702 and Daubert. The district court denied both motions, and the Federal Circuit affirmed.
Federal Circuit Decision
The Federal Circuit addressed the two independent methods employed by Willis’ damages expert, Michele Riley. The first method, an income approach apportioned to the asserted claim, analyzed profit premiums of the One Plug Trees and the Quick Set Trees to arrive at a reasonable royalty range of $4.30-$20. The second method, a market approach, evaluated comparable licenses to arrive at a reasonable royalty range of $2-$5. Combining these two analyses, Riley arrived at a reasonable royalty rate of $2-$20. Applying the Georgia-Pacific factors, Riley ultimately concluded that $5 reasonable royalty was warranted. Polygroup argued that each approach was applied unreliably to the facts of the case.
Income Approach
Under the income approach, with respect to the profit premiums associated with the One Plug trees, Polygroup argued that Riley’s analysis did not adequately separate out the patented feature from other alleged high-end features commanding their own profit premiums. The Federal Circuit held that this challenge went to weight, not admissibility. Riley took into account the fact that certain non-One Plug Trees also had premium features by averaging prices across product lines when comparing profit margins for One Plug Trees with and without the patented feature. Noting that “Rule 702 does not require a damages expert to account for every conceivable variation among products nor does it demand exactness in an area necessarily involving ‘approximation and uncertainty’” (id. at 10), the Federal Circuit held that whether Riley’s averaging was appropriate was a cross-examination issue.
The Federal Circuit also rejected Polygroup’s argument that Riley’s income approach directed to Quick Set Trees was unreliable because she relied on quoted prices rather than realized revenues or profit margins, to calculate an average incremental profit margin for the trees. Because Polygroup did not track transaction-level costs in a manner that would enable Riley to calculate actual profit margins for the Quick Set Trees, the Federal Circuit held that it was reasonable for Riley to rely on available pricing information as a proxy for profitability. Whether doing so was appropriate is a fact question for the jury, not a grounds for exclusion.
Market Approach
Similarly, the Federal Circuit rejected Polygroup’s challenges to Riley’s market-based method. Polygroup argued that the five licenses Riley relied on were not comparable; only one license included rights to the ’186 patent and the remaining agreements were either new-product or concept development agreements or agreements that reflect a continuation of existing commercial relationships.
The Federal Circuit held that the district court did not abuse its discretion in concluding that Riley’s approach was reliable although the district court noted “some doubts about the comparability of the licenses.” In particular, the Federal Circuit noted that while Riley provided some explanation as to why she viewed certain licenses as comparable, Polygroup did not cross-examine Riley or otherwise attempted to show other additional patents affected the royalty rates reflected in the license covering the ’186 patent. The Federal Circuit agreed with the district court that “[t]he degree of comparability between license agreements and the hypothetical negotiation is a factual issue best resolved by the jury.” Id. at 14. The Federal Circuit distinguished EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025) where the court “held expert testimony unreliable because it was predicated on an inaccurate characterization of the licenses (i.e., that the licensees in that case had agreed upon the rate),” meaning that the evidence was “contrary to a critical fact upon which the expert relied.” Willis Electric Co., 2026 WL 438657, at *14. “The dispute here, in contrast, is one of fact over which reasonable minds can differ.” Id.
Georgia-Pacific Analysis
Lastly, the Federal Circuit rejected Polygroup’s argument that Riley’s Georgia-Pacific analysis could not support her $5-per-tree royalty because it was “purely qualitative.” Polygroup, relying on Jiaxing Super Lighting Electric Appliance, Co. v. CH Lighting Technology Co., 146 F.4th 1098 (Fed. Cir. 2025), argued that the effect of each Georgia-Pacific factor on the rate must be quantified. The Federal Circuit disagreed, noting that neither Rule 702 nor its precedent imposes such a rule as the Georgia-Pacific analysis necessarily permits qualitative analysis. Indeed, multiple Georgia-Pacific factors such as the parties’ commercial relationship, the advantages of the patented invention over the prior art, and the character of the patented embodiment, do not led themselves to mathematical precision. Willis Electric Co., 2026 WL 438657, at *16. It is sufficient for an expert to identify the factors considered, explain their directional effect on the royalty and anchor that analysis to an apportioned quantitative range. Id. Any challenge to this analysis would be through cross-examination, not exclusion. Id.]]>by PV Law LLP<![CDATA[PV Law Partners Named in the Legal 500 2026 US Elite Washington, DC Edition]]>https://www.pvuslaw.com/?p=501762026-02-26T23:25:20Z2026-02-26T23:25:20Z]]>by Roger Taylor<![CDATA[PTAB Says Arguments First Made In Reply Brief Cannot Support Invalidity]]>https://www.pvuslaw.com/?p=501752026-02-24T14:55:04Z2026-02-24T14:55:04ZLuminex Int’l Co., Ltd. v. Signify Holdings B.V., IPR2024-00101, Paper 57 (P.T.A.B. Feb. 5, 2026).
PROCEDURAL BACKGROUND
Petitioner filed a petition asking for inter partes review of claims 1-20 of the ’366 patent. The initial panel issued an institution decision finding that, among other things, claims 13 and 15 were obvious from a single reference, Reiff.
Patent Owner subsequently petitioned for Director Review, arguing that the initial panel erred in relying on arguments first presented by Petitioner in its Reply Brief.
DECISION ON REQUEST FOR REVIEW
The review panel analyzed the arguments presented by Petitioner in its IPR Petition. Claim 13 requires a switch comprising a body, an electrical coupling disposed on the body, and an actuator disposed on the body. The Petition argued that claims 13 and 15 were obvious in view of Reiff, which disclosed a tubular light having light sources, an electrical cord, and a control box which includes a switch. Petitioner argued initially that Reiff’s control box was the claimed switch body and that Reiff’s switch was the actuator disposed on the switch body. Petitioner did not specifically identify which element of Reiff disclosed the claimed coupling feature disposed on the body.
The institution decision noted that Reiff did not disclose a coupling feature disposed on the switch body. The Patent Owner in its response additionally argued that Reiff’s control box was not a switch body and need not be coupled electrically to an associated cable.
Responding to these points in its Reply Brief, Petitioner argued that Reiff’s control box houses a slide switch, which has its own body on which a coupling feature is disposed. Petitioner also cited new evidence showing that the construction of slide switches is well known. Finally, Petitioner argued that the “body” required by the claim is represented by the switch body of Reiff, is found within Reiff’s control box, which Petitioner had earlier labeled as the “body”. Petitioner also argued in its Reply Brief that a person of ordinary skill in the art would have understood this body to have a structure that provides the coupling feature. The initial panel agreed with Petitioner’s Reply Brief arguments and found claims 13 and 15 were obvious over Reiff.
The review panel found that the arguments in the Reply Brief constituted a new theory of unpatentability of claim 13 and that the new theory relied on new evidence which was not presented in the initial Petition for IPR. The review panel cited a Federal Circuit decision which explained that a Petitioner can explain in a reply brief how its original position was correct but cannot set out an entirely new theory absent from the petition. Wasica Fin, GmbH v. Cont’l Auto. Sys., Inc. 853 F.3d 1272, 1286-87 (Fed. Cir. 2017). The review panel concluded that because the Petition failed to show that Reiff disclosed a coupling feature disposed on the body, the Petitioner had, absent new argument and evidence presented in the Reply Brief, failed to show by preponderance of the evidence that claims 13 and 15 were unpatentable.
CONCLUSION
A Petition for inter partes review must contain a specific description of the grounds for invalidity and a showing that the prior art discloses each claim element. Generalized statements and arguments that one of ordinary skill would know how to realize a claimed limitation may result in the Petition being found insufficient to support the invalidity argument asserted. In this case, failure to point out where in the prior art each claim element could be found and then later adding that information in the Reply Brief proved fatal to Petitioner’s efforts to invalidate the claims at issue.
Editor's note: See also an earlier post on a Federal Circuit decision regarding the scope of IPR Reply briefs. Petitioner’s IPR Reply: New Argument or Proper in Scope?]]>
The ’340 patent, Fig. 1 (annotated).
Figure 2 illustrates the EV with the winding coil retracted in its housing (not in use):
The ’340 patent, Fig. 2 (annotated).
Figure 4 illustrates the EV with the winding coil extended down to hover over the magnetic bars (in charging mode):
The ’340 patent, Fig. 4.
The proposed charging system of the ’340 patent allows an electric vehicle to charge while driving over the lane(s) with embedded magnetic bars. The ’340 patent, 3:57-58. To activate charging, the patent proposes a switch located on the dash that lowers the winding coil, or alternatively, sensors that automatically perform this function. Id. at 3:58-61.
Claim 1 recites:
The ’375 patent, Fig. 1.
The ’375 patent describes a lead assembly designed to render the combiner box unnecessary. The ’375 patent, Abstract. The assembly utilizes at least one drop line that is securely joined directly to a main feeder cable at a connection point referred to as a “nexus.” Id. at 1:65-2:1. The drop line connects to a solar array’s wire harness, while the main feeder cable routes the combined electrical power straight to the inverter, or to a trunk buss jumper. Id. at 2:2-4.
Figure 3 illustrates the system using a lead assembly. The ’375 patent, 2:31-32. Specifically, Figure 3 illustrates a plurality of wire harnesses coupled to the lead assembly, which then connects directly to the inverter, eliminating the combiner box completely. Id.
The ’375 patent, Fig. 3.
Figure 35 illustrates the drop line and feeder cable being held together by compression lug 20, which is surrounded by an undermold. The undermold, in turn, is surrounded by an overmold. The ’375 patent, 4:55-60. According to the patent, this structure “is profoundly durable, resistant to environmental factors such as temperature fluctuations, debris, and moisture, and is strong enough to be buried.” Id. at 6:7-10.
The ’375 patent, Fig. 35 (annotated).
The ’375 patent, Fig. 33 (annotated, illustrating the undermold).
The ’375 patent, Fig. 29 (annotated, illustrating the overmold).
Figure 37 illustrates the internal construction of a joint, where the exposed wire of the drop line and the feeder cable electrically couple at the nexus. The ’375 patent, 3:16-17; 5:58-62.
The ’375 patent, Fig. 37 (annotated).
Claim 1 of the ’375 patent recites: