“Fundamentally Different Technology” Argument Almost Leads to IPR Referral

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 the remaining considerations—the 12-year duration of the patent creating “strong settled expectations” for the Patent Owner and unlikelihood that a final written decision would be issued before the district court trial.

In another decision, Transcend Info. Inc. v. Truesight Comms. LLC, IPR2025-00723, Paper 10 (PTAB Aug. 4, 2025), Director Stewart credited the same line of argument and cited Boe Technology as support. In Transcend, the Director agreed that Petitioner had settled expectations that weighed against denial because Petitioner “had no reason to believe that it was infringing a patent that requires a kiosk, which [Petitioner] is not even alleged to make or use.”

These decisions demonstrate that Petitioners should thoroughly evaluate any fundamental distinctions between their accused products and the patented technology, and clearly emphasize those differences in arguments addressing settled expectations weighing against discretionary denial.