USPTO Director Denies Inter Partes Review Institution

DirectorPTABDecisionReview@uspto.gov Paper 27 571-272-7822 Date: February 19, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE OFFICE OF THE UNDER SECRETARY OF COMMERCE FOR INTELLECTUAL PROPERTY AND DIRECTOR OF THE UNITED STATES PATENT AND TRADEMARK OFFICE INFINEON TECHNOLOGIES AMERICAS CORP., Petitioner, v. MOSAID TECHNOLOGIES INC., Patent Owner. Before JOHN A. SQUIRES, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. ORDER Granting Director Review, Vacating the Decision Granting Institution, and Denying Institution of Inter Partes Review

MOSAID Technologies Inc. (“Patent Owner”) filed a request for Director Review of the Decision granting institution (“Decision,” Paper 15) in the above-captioned case, and Infineon Technologies Americas Corp. (“Petitioner”) filed an authorized response. See Paper 19 (“DR Request”); Paper 24 (“DR Response”). Patent Owner argues that the Decision should be reversed because Petitioner has taken claim construction positions in the district court that are different than those presented in the Petition, but has failed to sufficiently explain why those different positions are warranted. DR Request 1–5 (citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 (Director Nov. 3, 2025) (precedential) (“Revvo I”); Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00340, Paper 18 (Director Nov. 5, 2025) (informative) (“Tesla”)). Patent Owner points out that, in the parties’ district court litigation, Petitioner argued with respect to the challenged claims that the claim term “power island” should be construed as “a discrete section of an integrated circuit where power is independently controlled,” and further argued that certain claim limitations are indefinite because neither the claim language nor the specification provides any defined metes or bounds as to the meaning of these terms. Id. at 3 (citing Petitioner’s district court claim construction brief, 2, 4, 5). In contrast, Petitioner MOSAID Techs. Inc. v. Infineon Techs. AG, No. 1:25-cv-00358-ADA, Dkt. 44 (W.D. Tex. Oct. 27, 2025) (“Claim Construction Brief”). I denied Patent Owner’s request for authorization to file the Claim Construction Brief as an exhibit in this proceeding (see Ex. 3103) because legal rulings and other documents filed publicly with another tribunal are not evidentiary in nature and the Office may take administrative notice of such filings. See Semiconductor Components Indus., LLC v. Greenthread, LLC, IPR2023-01242, Paper 94, 5 (Director Apr. 24, 2025).

argued in its Petition that the challenged claims should be given their plain and ordinary meaning. Id. (citing Paper 2 (“Pet.”) at 4). Patent Owner argues that this case falls squarely under Tes la, where similar circumstances were found to warrant the denial of institution. Id. at 4–5 (citing Tesla, Paper 18 at 3). Petitioner responds that its district court positions are irrelevant here because they do not affect the Petition and Petitioner’s asserted prior art references teach each of the disputed claim terms. See DR Response 3–5 (citing Exs. 1004, 1008). After considering the parties’ filings, I conclude that Petitioner fails to adequately explain why it is proposing different claim constructions before the Board and the district court. The Petition offers no explanation, stating only that “no claim terms require a formal construction for purposes of addressing the grounds in this Petition.” See Pet. 4. The Petition cites to three different district court decisions construing the challenged claims but fails to address constructions from any of those decisions or provide an explanation for claim construction positions that Petitioner has taken in district court litigation that differ from those prior decisions and from the position that Petitioner takes before the Board. Id. (citing Exs. 1011, 1012, 1013). In its response to Patent Owner’s Director Review request, Petitioner argues that its different positions should be excused because it prepared its Petition without the benefit of Patent Owner’s preliminary infringement contentions. DR Response 3. I have rejected similar arguments as detracting from the Office’s goal of “providing greater predictability and certainty in the patent system,” Revvo I, Paper 20 at 4–5 (quoting Changes to the Claim Construction Standard for Interpreting Claims in Trial

Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51340, 51,342–43 (Oct. 11, 2018)), and do so here as well. Petitioner further offers certain stipulations, including that if the district court later determines that any of the challenged claims are indefinite, Petitioner will move to withdraw those claims from this proceeding. DR Response 5. I have recently rejected such a “wait and see” approach. See Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025- 00632, Paper 36 at 4 (Director Jan. 26, 2026). As such, the appropriate course of action is to vacate the Decision and deny institution. Accordingly, it is: ORDERED that Director Review is granted; FURTHER ORDERED that the Decision granting institution of inter partes review (Paper 13) is vacated; and FURTHER ORDERED that the Petition is denied, and no trial is instituted. Petitioner argues that Patent Owner forfeited its argument under Revvo and Tesla because it failed to raise the argument in the Patent Owner Preliminary Response. See DR Response 1–2. Although I agree with Petitioner that, typically, a party should not raise an issue for the first time in a request for Director Review, here, Patent Owner requested to brief the issue pre- institution, but my decision to institute trial mooted that request. See DR Request 1 n.2.

FOR PETITIONER: Kenneth Darby David Hoffman FISH & RICHARDSON PC kdarby@fr.com hoffman@fr.com FOR PATENT OWNER: Kenneth Weatherwax Parham Hendifar Jamie McDole LOWENSTEIN & WEATHERWAX LLP weatherwax@lowensteinweatherwax.com hendifar@lowensteinweatherwax.com jamie.mcdole@haynesboone.com