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ARTICLE · 22 SEPTEMBER 2025

"Fundamentally Different Technology" Argument Almost Leads To IPR Referral

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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In BOE Technology Group Co., LTD., v. Optronic Sciences LLC, IPR2025-00238, IPR2025-00239, Paper 11 (PTAB July 29, 2025), USPTO Acting Director Coke Morgan Stewart denied institution of both IPRs...

United StatesIntellectual Property
Michael Nielsen
Michael Nielsen
Umber Aggarwal
Umber Aggarwal
Forrest Jones
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In BOE Technology Group Co., LTD., v. Optronic Sciences LLC, IPR2025-00238, IPR2025-00239, Paper 11 (PTAB July 29, 2025), USPTO Acting Director Coke Morgan Stewart denied institution of both IPRs, but acknowledged that certain facts relating to settled expectations weighed against denial of institution.

The Director arrived at a decision after evaluating three separate considerations: one weighing against discretionary denial, and the remaining two supporting denial. For the former, Director Stewart agreed that Petitioner had settled expectations "that the challenged patents would not be asserted against it because the [] patents are directed to technology that is fundamentally different from what Petitioner uses in its products." Specifically, the Petitioner argued that its transistor technology used a "'top gate' structure [that] is precisely the opposite of the [claimed] 'bottom gate' structure." IPR2025-00238, Paper 9 at 12. However, this failed to overcome

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