The decision
On August 20, 2026, a Patent Trial and Appeal Board panel of Administrative Patent Judges Scott A. Daniels, Frederick C. Laney and Matthew S. Meyers issued a final written decision in Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025-00343 (Paper 26), written by Judge Daniels. The Board held that Tesla had not shown by a preponderance of the evidence that challenged claims 1-6 and 8-13 of U.S. Patent 10,292,138 are unpatentable, and ordered that those claims are not unpatentable.
The patent
The '138 patent, titled Determining Buffer Occupancy and Selecting Data for Transmission on a Radio Bearer, relates to allocating bandwidth resources for Internet Protocol data flows in a wireless network. Claims 1 and 8 are independent; claim 1 is directed to user equipment and claim 8 to a method performed by user equipment. As the decision reproduces it, claim 1 recites a processor configured to cause circuitry to receive parameters associated with a plurality of radio bearers, determine buffer occupancies associated with the radio bearers, cause a transmitter to transmit a message including those buffer occupancies to a network, cause the circuitry to receive a single allocation of uplink resources, select data from the radio bearers for transmission using that allocation in two iterations (a first iteration that selects data from a subset of the radio bearers based on the received parameters, and a second iteration based on buffered data for respective radio bearers), and cause the transmitter to transmit a signal including the selected data.
The petition and the grounds
Tesla's petition, filed December 31, 2024, asserted three obviousness grounds under pre-AIA 35 U.S.C. 103(a): claims 1-4 and 8-11 over U.S. Patent Publication No. 2006/0088058 (Eckert), U.S. Patent Publication No. 2007/0297435 (Bucknell) and PCT Publication No. WO2005/125252 (Lohr-1); claims 5 and 12 over those references plus U.S. Patent No. 7,245,636 (Hans); and claims 6 and 13 over those references plus U.S. Patent Publication No. 2008/0254804 (Lohr-2). Intellectual Ventures II filed a request for discretionary denial, which the Acting Director of the USPTO denied on July 2, 2025 (Paper 10). The Board then instituted review of all challenged claims on all grounds (Paper 11) and heard oral argument on May 14, 2026.
The petition says two earlier inter partes reviews of the '138 patent were filed by other petitioners: IPR2022-01127, in which institution was denied, and IPR2023-00020, which it says terminated before the patent owner made any filing or the Board issued any decision. It also says the patent owner had requested supplemental examination of the patent, and that the request was denied for lacking a substantial new question of patentability.
Why the Board ruled for the patent owner
The Board construed "a subset of the plurality of radio bearers" to mean "less than all of the plurality of radio bearers," consistent with a construction the Board had adopted preliminarily in IPR2022-01127, and treated the parties' dispute over "a single allocation of uplink resources" as a question of how to read the prior art rather than one of claim construction.
On the main ground, the Board held that Tesla had failed to show why a person of ordinary skill in the art would have modified Eckert in view of Bucknell in the manner claimed, a finding it called dispositive as to all grounds, focusing on the requirement that data be selected "using a first iteration and a second iteration." It found that "the most persuasive evidence" suggesting that combination was the '138 patent itself, cited the Supreme Court's warning in KSR International Co. v. Teleflex Inc. against hindsight, and concluded that Tesla's technical expert had relied on ex post reasoning. Crediting the patent owner's expert, the Board agreed that Tesla's "reducing control signaling overhead" and "complexity" rationales lacked the "articulated reasoning with rational underpinnings" that an obviousness combination requires. It noted that Tesla did not rely on Lohr-1 for the two-iteration limitation, and held that Hans and Lohr-2 did not cure the deficiency for the dependent claims.
The appeal and the district court cases
Tesla's notice of appeal, dated October 20, 2026, appeals the final written decision and all underlying and related orders, decisions, rulings and opinions in the proceeding. It lists as expected issues the Board's determination that Tesla failed to demonstrate that claims 1-6 and 8-13 are unpatentable, and all other issues decided against Tesla.
The decision, citing the parties, lists the '138 patent as asserted by Intellectual Ventures II against Tesla in the Western District of Texas in No. 6:24-cv-00188 and in Nos. 1:24-cv-00390 (listed as terminated) and 1:24-cv-00884 (listed as transferred), and in suits by Intellectual Ventures entities against other automakers.
What to watch next
Watch for the Federal Circuit appeal number and briefing schedule. The case can end at any time, including by settlement or voluntary dismissal.