IP Law Daily, PATENT—Fed. Cir.: Licensing entity’s stylus-input patents survive Samsung’s invalidity challenges, (Nov 17, 2025)

By Saurabh Kashyap, B.A., M.A., LL.B., LL.M.

The PTAB correctly excluded Samsung's new obviousness theory, which was first raised in its reply to the licensing entity's IPR response.

In a non-precedential disposition, a divided panel of the U.S. Court of Appeals for the Federal Circuit affirmed two Final Written Decisions of the Patent Trial and Appeal Board (PTAB) that sustained all challenged claims of Power2B, Inc.’s stylus input patents, holding that Samsung advanced a new obviousness theory for the first time in reply and thus forfeited it under the Board’s rules. The appellate court concluded the PTAB acted within its discretion in treating Samsung’s “planar element” configuration as a new theory beyond the petitions and, in any event, the Board had no obligation to parse the reply for alternative, permissible rationales once it identified the new matter. Circuit Judge Dyk filed a dissenting opinion (Samsung Elecs. Co., Ltd. v. Power2B, Inc., Nos. 2023-2121, 2023-2122 (Fed. Cir. Nov. 14, 2025)).

Background. The appellants, Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., are global manufacturers and distributors of consumer electronics and mobile devices. The appellee, Power2B, Inc., is a licensing entity and owns the patents-in-suit.

The U.S. Patent Nos. 10,664,070 (the '070 patent) and 9,946,369 (the '369 patent), each titled "Input System for Controlling Electronic Device"—share a specification. They describe handheld electronics that use a display with a sensitive layer and a stylus emitting light; a processor determines the stylus's three-dimensional position to control on-screen selection. The '070 patent is a continuation of the '369 patent.

Samsung petitioned for inter partes review of both patents (the ’070 patent petition; the ’369 patent petition), proposing obviousness grounds that combined Keely (a pen-based notebook interface using an LCD with a coil-based electromagnetic digitizer) with Geva (a light-sensing position-determination system featuring sensor arrays and a “planar element 14”). After institution, the Board concluded in its Final Written Decisions that the petitions did not advance a combination that replaced Keely’s digitizer by placing Geva’s planar element atop Keely's LCD; instead, Samsung unveiled that configuration for the first time in reply, violating 37 C.F.R. § 42.23(b). The PTAB excluded the new theory, treating the petitioned combinations as inoperable or inadequately supported, and held that Samsung failed to prove the challenged claims unpatentable. Samsung appealed, arguing that the petitions already disclosed the "planar-element" configuration and that the Board misapplied the reply-brief limits and the APA. Notably, the PTAB panel itself was divided: a dissenting Administrative Patent Judge would have read the petitions to include the planar-element-on-LCD configuration and would have reached the merits to find the claims unpatentable.

Standard and petition precision. The court framed the dispositive issue as whether the “operative” combination—Geva’s sensor arrays and planar element simply placed on top of Keely’s LCD and a disavowal of reliance on Keely II’s digitizer—appeared in the petitions or emerged only in reply. Accepting the Board’s view, the appellate court held Samsung’s petitions did not present that configuration with the requisite particularity and that the Board acted within its discretion in deeming the reply arguments new and forfeited. Referencing Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1002 (Fed. Cir. 2023), the appellate court reaffirmed that IPR petitioners must “make their case in their petition,” given the expedited nature of IPRs, and that marked departures in reply risk unfair surprise.

Reply constraints and “new theory” doctrine. Applying 37 C.F.R. § 42.23(b) and the Consolidated Trial Practice Guide, the appellate court endorsed the Board’s exclusion of Samsung’s reply theory. The court cited Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1384 (Fed. Cir. 2023), to emphasize that replies may rebut but may not unveil materially different combinations or rationales absent from the petitions. Once the Board identified new issues presented for the first time in reply, neither the Board nor the court needed to parse the reply further.

APA and fairness considerations. The appellate court rejected Samsung’s Administrative Procedure Act challenge, concluding that the Board adequately considered the petition text and reasonably interpreted it not to disclose the “planar-element-on-Keely" combination as the operative ground. The court emphasized that departures from grounds identified with particularity in the petition impose "unfair surprise" on the patent owner and violate both the APA and the IPR statute. It also noted that IPR practice does not permit petitioners to revise and develop theories over time, as is permitted in ordinary civil litigation.

Alternative merits rationale. While not necessary to the affirmance, the appellate court noted that the Board also found the petitioned combinations inoperable or inadequately supported and thus insufficient to carry Samsung’s burden. Having determined that the petitions proposed “what was undisputedly an inoperable combination,” the Board needed to go no further—and neither would the court. This reinforced the outcome without requiring the appellate court to reach additional claim-by-claim arguments on limitation satisfaction or motivation to combine.

Conclusion. Thus, the court affirmed the PTAB’s decisions, concluding Samsung “did not carry its burden to show” the asserted claims unpatentable.

Judge Dyk’s dissent. Circuit Judge Timothy B. Dyk dissented and issued a separate opinion. He read the petitions to “plainly” disclose the Keely–Geva combination that includes Geva’s planar element 14 placed atop Keely’s LCD, and he emphasized petition passages (and institution decisions referencing Geva’s planar element) that, in his view, left no material ambiguity. He criticized the majority’s reliance on isolated phrasing in one expert declaration and argued the Board misread the petitions by treating references to Geva’s “improved alternative arrangement” as redundant of Keely’s digitizer; to the contrary, Dyk read Geva to teach a replacement for the coil-based digitizer—an approach that necessarily includes the planar element. Citing Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374 (Fed. Cir. 2023), and Ericsson Inc. v. Intellectual Ventures I LLC, 901 F.3d 1374 (Fed. Cir. 2018), he would have treated Samsung’s reply as a permissible clarification rather than a new theory.

On the merits, Judge Dyk would have reversed. He concluded the record did not substantially support the PTAB’s findings that the Keely–Geva combination failed to satisfy the claim limitations or lacked a motivation to combine. He pointed to petition and response materials that, in his view, confirmed that a person of ordinary skill would have placed Geva’s planar element over an LCD like Keely’s, and he aligned his analysis with the dissent below in the ’369 IPR. Because he deemed the petitions sufficiently clear and the reply arguments responsive, he would have reached the obviousness analysis and found the Board’s contrary determinations unsupported by substantial evidence.

The Case is Nos. 23-2121, 23-2122.

Judge: Stoll, K.

Attorneys: Benjamin Haber (O'Melveny & Myers LLP) for Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. Mark Thomas Deming (Polsinelli PC) for Power2B, Inc.

Companies: Samsung Electronics Co., Ltd.; Samsung Electronics America, Inc.; Power2B, Inc.

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