- Apple, Inc. v. Wecrevention, Inc.Institution deniedPTAB · Jun 24, 2026 · IPR2026-00242 · APJ John A Squires · IPR · Director review
The Director denied the petitions and instituted no trial, exercising discretion based on Petitioner’s unexplained inconsistent claim-construction positions before the Board and district court.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 11,894,098 - Apple, Inc. v. Wecrevention, Inc.Institution deniedPTAB · Jun 24, 2026 · IPR2026-00241 · APJ John A Squires · IPR · Director review
The Director denied institution of the IPR, finding Apple's unexplained inconsistent claim-construction positions before the Board and district court problematic.
RulingsDirector review decision- Other 314aInstitution denied discretionary otherDenied
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“that “[a]ll claim terms should be construed according to their ordinary and customary meaning,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Paper 2, 4 (emphasis added). Petitioner also states, as part of its analysis of the challenged claims, that “Petitioner does not concede that the preambles of the Challenged Claims are limiting.” Id. at 9 n.5 (emphasis added). In district court, however, Petitioner tells a different story, arguing there that the preamble is limiting. Ex. 2016, 6, 7, 9, 12. Indeed, Petitioner specifically denotes that “[r]eview of ‘the entirety of the patent’ makes clear that the preamble phrase ‘high speed memory chip module’ contains the core of what the inventors ‘actually invented and intended to encompass by the claims,’ . . . and so the preamble should be limiting.” Id. at 7 (internal citations omitted, emphasis added).” slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 10,998,017 - Apple, Inc. v. Wecrevention, Inc.Institution deniedPTAB · Jun 24, 2026 · IPR2026-00240 · APJ John A Squires · IPR · Director review
The Director denied Apple’s petitions and instituted no trial, exercising discretion based on Apple’s unexplained inconsistent claim-construction positions before the Board and district court.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notOther
“that “[a]ll claim terms should be construed according to their ordinary and customary meaning,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Paper 2, 4 (emphasis added). Petitioner also states, as part of its analysis of the challenged claims, that “Petitioner does not concede that the preambles of the Challenged Claims are limiting.” Id. at 9 n.5 (emphasis added). In district court, however, Petitioner tells a different story, arguing there that the preamble is limiting. Ex. 2016, 6, 7, 9, 12. Indeed, Petitioner specifically denotes that “[r]eview of ‘the entirety of the patent’ makes clear that the preamble phrase ‘high speed memory chip module’ contains the core of what the inventors ‘actually invented and intended to encompass by the claims,’ . . . and so the preamble should be limiting.” Id. at 7 (internal citations omitted, emphasis added).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“IPR2026-00243 are similarly problematic. In its Petitions, Petitioner identifies “input/output unit” as a means-plus-function limitation and identifies the corresponding structure as input/output unit 106 in the challenged patent. See, e.g., IPR2026-00241, Paper 2, 4. Petitioner also asserts “the applied prior art anticipates or renders obvious the Challenged Claims, regardless of whether ‘input/output unit’ is construed as a §112(f) means-plus-function limitation,” and that “Petitioner is not conceding . . . that the ’017 Patent provides adequate structure for the ‘input/output unit.’” Id. at 5 (emphasis added). In District Court, however, Petitioner once again takes a different position, arguing that the claim term “input/output unit” should be construed as a means-plus-function limitation, identifying the function as “performing input and/or output functions with respect to memory,” and asserting that the challenged patent “[l]acks sufficient structure (indefinite).” IPR2026-00241, Ex. 2016, 12. According to Petitioner, “[t]he specification fails to disclose sufficient corresponding structure for performing input and output operations with respect to memory, much less for performing those operations within any particular voltage range.” Id. at 19. Petitioner fails to adequately explain its different positions here before the Board and those it propounds in district court. See, e.g., IPR2026-00241, Paper 9. Patent Owner well states the issue; that “[t]o the extent § 112(f) governs, then either input/output unit 106 is sufficient corresponding structure (in which case [Petitioner’s] district-court indefiniteness argument fails), or it is not (in which case [Petitioner’s] IPR mapping relies on a structure [Petitioner] itself maintains is inadequate).” IPR2026-00241, Paper 8, 8–9. I agree. Petitioner’s statement that it does not concede the challenged patent provides adequate structure for the “input/output unit” thus only compounds the problem.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 9,201,834 - Westinghouse Air Brake Technologies Corp. v. Railware, Inc.Institution deniedPTAB · May 15, 2026 · IPR2026-00133 · APJ John A Squires · IPR · Director review
The Director denied the petitions and instituted no trial, exercising discretion based on the complete record and the petitioner’s failure to present a consistent claim construction position.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“As I have indicated previously, a petitioner should present a single construction and apply that construction consistently. See Infineon Techs. 1 Citations are to papers in IPR2026-00133. The parties filed similar papers in IPR2026-00134 and IPR2026-00135. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic. Id.; Revvo, Paper 20 at 3–4. A petitioner may not avoid presenting its own claim construction position in a proceeding before the Office by presenting an analysis based on claim construction positions taken by other parties in a different proceeding. See 37 C.F.R. § 42.104(b)(3) (requiring that the petition must “set forth . . . [h]ow the challenged claim is to be construed”); Trial Practice Guide2 §§ II.B.(3) and (6). Permitting such conduct would allow a petitioner to avoid taking a consistent claim construction position. Such conduct would undermine the purpose of inter partes review proceedings and detract from the Office’s goal of “providing greater predictability and certainty in the patent system.” Revvo, Paper 20 at 4–5. While certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on the complete record and a holistic assessment of all of the evidence in light of the arguments presented.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“As I have indicated previously, a petitioner should present a single construction and apply that construction consistently. See Infineon Techs. 1 Citations are to papers in IPR2026-00133. The parties filed similar papers in IPR2026-00134 and IPR2026-00135. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic. Id.; Revvo, Paper 20 at 3–4. A petitioner may not avoid presenting its own claim construction position in a proceeding before the Office by presenting an analysis based on claim construction positions taken by other parties in a different proceeding. See 37 C.F.R. § 42.104(b)(3) (requiring that the petition must “set forth . . . [h]ow the challenged claim is to be construed”); Trial Practice Guide2 §§ II.B.(3) and (6). Permitting such conduct would allow a petitioner to avoid taking a consistent claim construction position. Such conduct would undermine the purpose of inter partes review proceedings and detract from the Office’s goal of “providing greater predictability and certainty in the patent system.” Revvo, Paper 20 at 4–5.” slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 9,517,782 - Tiktok, Inc. v. Shopsee, Inc.Institution deniedPTAB · Jan 16, 2026 · IPR2025-01485 · APJ John A Squires · IPR · Director review
The Director granted Patent Owner’s request for discretionary denial and denied the Petition under § 314(a), declining to institute an IPR.
RulingsDirector review decision- Other 314aInstitution denied discretionary otherInstitution denied
“[W]hen a petitioner advances different positions before the Board and a district court, that petitioner is required to explain why those different positions are warranted.” Tesla Inc., v. Intellectual Ventures II, LLC, IPR2025-00340, Paper 18 at 3 (Director Nov. 5, 2025) (informative) (citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 at 3–5 (Director Nov. 3, 2025) (precedential)). Petitioner has not done so. Rather, Petitioner has stipulated that it will continue to pursue different constructions and abandon the inconsistent construction in district court if the IPR is instituted. This is not in keeping with our precedent, and I decline to modify it to permit this approach. Additionally, Petitioner’s claim construction stipulation is distinguishable from its stipulation that “it will not pursue in the parallel litigation the grounds it raised or could have reasonably raised in the petition, and that it will not pursue any ground that relies on Ohliger or the Veepio system.” DD Opp. 1–2. The latter stipulation increases efficiency by reducing duplication between the district court and the Board. It also minimizes the potential for inconsistent outcomes in the two proceedings. Petitioner’s stipulation not to continue to advance different claim construction positions lacks similar benefits. At best, it replaces one argument in district court for another argument at the Board. Accordingly, the Petition is denied under 35 U.S.C. § 314(a). slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“[W]hen a petitioner advances different positions before the Board and a district court, that petitioner is required to explain why those different positions are warranted.” Tesla Inc., v. Intellectual Ventures II, LLC, IPR2025-00340, Paper 18 at 3 (Director Nov. 5, 2025) (informative) (citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 at 3–5 (Director Nov. 3, 2025) (precedential)). Petitioner has not done so. Rather, Petitioner has stipulated that it will continue to pursue different constructions and abandon the inconsistent construction in district court if the IPR is instituted. This is not in keeping with our precedent, and I decline to modify it to permit this approach. slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 11,134,316 - Ascentcare Dental Product, Inc. v. Solmetex, LLCInstitution deniedPTAB · Dec 23, 2025 · IPR2025-01104 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2025). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon institution of inter partes review, the review proceeds “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Based on our consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“the ’329 patent was filed would have had “at least a B.S. degree in mechanical engineering or a related field with at least two years’ experience designing dental devices” and that “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 32. Patent Owner contends that Petitioner’s definition is overly narrow and argues that “[n]othing in the claims of the ’329 Patent requires experience designing ‘dental devices.’” Prelim. Resp. 19. According to Patent Owner, “the claims are directed to the structural components of a dental isolation mouthpiece, and an individual with a mechanical engineering degree and experience designing medical devices would be a [person of ordinary skill in the art] for purposes of the ’329 Patent.” Id. (citing Ex. 2030 ¶ 83). We adopt Patent Owner’s proposed level of skill for purposes of this Decision. We determine that this level of ordinary skill in the art—i.e., an individual with a mechanical engineering degree and experience designing medical devices—is consistent with the level of technical understanding and competence reflected in the ’329 patent Specification and the asserted prior art references, based on our review of the current record. Moreover, our determination in this Decision would be the same were we to adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner asserted “[p]lain and ordinary meaning” for “a plurality of protrusions” in claims 9 and 30, whereas Petitioner proposed “an internal structure attached to the second wall that prevents the collapse of the first and second wall during suction.” Prelim. Resp. 20 (citing Ex. 2039). Here, Patent Owner argues that “protrusion” should be construed to mean “a structure attached to the second wall but not the first wall,” with respect to claims 1, 9, and 30, and to mean “a structure attached to the first wall but not the second wall,” with respect to claim 21. Id. at 24. Patent Owner also argues that structure attached to both the first wall and the second wall is inconsistent with “the plain and ordinary meaning of ‘protrusions’ in light of the specification.” Id. at 21 (citing Ex. 2030 ¶¶ 111–112). We address Patent Owner’s arguments in the context of our analysis of Petitioner’s contentions below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“combination deficient. Petitioner argues that Park’s walls are “likely to collapse under the suction force,” based not on Park, but on Baughan, which states that “discs” in Baughan are used to prevent the “flexible sleeve” of Baughan from collapsing. Pet. 89. (citing Ex. 1007, 3:46–48). Petitioner reasons that because Park uses silicone, a flexible material, Park’s walls must also collapse like Baughan. Id. (citing Ex. 1006 ¶¶ 32, 34). Petitioner, however, directs us to no disclosure in Park to suggest that the material used in Park or the arrangement of Park would collapse in the same manner as Baughan. Indeed, if Park’s mouthpiece collapses as Petitioner speculates, it would appear likely to render Park inoperable. See Ex. 2030 ¶ 205. Additionally, Petitioner recognizes that in Park “the sidewalls and the insertion part 111 would help resist this collapsing force,” and states that in Park it “is unclear whether the mouth prop 100 includes a spine or other rigid structure running through the middle of the mouth prop 100.” Pet. 89– 90. Thus, whether Park is susceptible to collapse is, at best, unknown. See Prelim. Resp. 48 (asserting that a person of ordinary skill would have known “that silicone can have varying degrees of hardness, tensile strength, and elasticity such that Park’s mouthpiece would not necessarily collapse under suction”) (citing Ex. 2030 ¶¶ 189–90; Ex. 2036; Ex. 2037). Even assuming, as Petitioner asserts, that “additional anti-collapsing structure would assist at the weakest areas of the tongue retractor” in Park, Petitioner offers insufficient reasoning for why a person of ordinary skill would have turned to Baughan and modified the structure taught by Baughan to instead conform to what is recited in claim 1. Petitioner’s suggestion that “common sense” would have led a person of ordinary skill in the art to modify the structures of Baughan to solve a problem with collapse in Park that Park does not suggest was a problem is likewise unpersuasive and insufficient. Pet. 93 (further asserting that “it was well known in the art how to make projections on a flat surface”). Petitioner’s reliance on Johnson as generically teaching that protrusions can be on flat surfaces does not supply a reason why a person of ordinary skill in the art would have made the proposed modifications outside of improper hindsight. See also Prelim. Resp. 58, 59 (arguing that the projections in Johnson are on a semicircular surface, not on a flat surface as Petitioner asserts) (citing Ex. 1008 Figs. 4, 5). Based on the evidence and arguments presented, we determine that Petitioner fails to show sufficiently for purposes of instituting inter partes review that the asserted combination of Park, Baughan, and Johnson, or in further combination with Zheng, teaches “protrusions protruding from an interior surface” of one wall of the mouthpiece “towards” an opposing wall of the mouthpiece, as required by claim 1, or that a person of ordinary skill in the art would have had reason to combine the asserted references in the manner alleged by Petitioner.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,011,329 - Caption Health, Inc v. University Of British ColumbiaInstitution deniedPTAB · Dec 19, 2025 · IPR2025-01066 · APJ Mary C Hoffman · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including failure to show the claimed image-receiving quality-assessment neural network.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Based on the current record and for the reasons explained below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’591 patent. Thus, we do not institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Because Petitioner’s formulation is supported by declaratory testimony and appears consistent with the level of skill reflected in the asserted prior art and the ’591 patent, and because Patent Owner does not provide any supporting evidence, we adopt Petitioner’s formulation of the level of ordinary skill in the art. See Ex. 1002 ¶¶ 31–33. Our decision would be the same regardless of the differences between Petitioner’s and Patent Owner’s formulations.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose any express claim construction. Pet. 11– 12; Prelim Resp. 17. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner also fails to provide sufficient rationale and a reasonable expectation of success in combining Krishnan and Lee to arrive at a quality assessment neural network configured to receive an image. See Pet. 34–37. For example, the Petition lacks an explanation of why a POSITA would have been motivated to modify Krishnan’s quality assessment neural network to be configured to receive an image, instead of extracted features, in view of Lee’s image-receiving category classifying neural network. Id. Without such further explanation, Petitioner’s challenge falls short. Petitioner’s argument that neural networks for image quality assessment were “well-known” is not persuasive—it does not address the particular scope of limitation 1i, which also requires that the neural network is configured to receive images. Pet. 35 (citing Ex. 1002 ¶¶ 47–51, 118; Exs. 1017, 1023, 1024, 1026). Petitioner’s argument that combining Krishnan and Lee “would merely amount to applying known work from the field . . . to yield predictable results” is not persuasive because the Petition ties this reasoning to modifying Krishnan with Lee’s view-category-specific assessment parameters, not modifying Krishnan’s quality assessment neural network to receive images instead of extracted features. Id. at 37 (citing Ex. 1002 ¶ 126). Lastly, we note Petitioner’s expert’s discussion regarding neural networks for image quality assessments. Ex. 1002 ¶¶ 43–53 (citing Exs. 1010, 1015, 1016, 1017, 1018, 1023, 1024, 1026). However, the Petition does not explain how this evidence demonstrates that the proposed combination teaches or suggests a quality assessment neural network configured to receive images, or that such would have been obvious in the context of the claimed invention. See Pet. 32–37.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,129,591 - Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Rehearing deniedPTAB · Dec 19, 2025 · IPR2025-00434 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving institution denied because Shen and Soldano did not establish a reasonable likelihood of anticipating claims 1–7.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing the decision should be modified, and the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS In our Decision, we concluded that Petitioner had failed to carry its burden of demonstrating a reasonable likelihood of prevailing that either Shen or Soldano anticipated claims 1–7. Dec. 18, 26. Petitioner argues that we should institute review for three reasons. First, Petitioner argues that we abused our discretion by (a) “refusing” to interpret the scope of the claimed” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Owner’s interpretation of “carrier” as meaning “one or more components for supporting ROSA components such as an AWG.” Dec. 9 (quoting Pet. 11). For our analysis of Petitioner’s challenges, we referred to this interpretation of “carrier” as Petitioner’s second alternative construction. Id. We also noted that Petitioner appeared to dispute Patent Owner’s interpretation when it argued that “carrier” should mean “a ceramic or silicon substrate.” Id. (quoting Pet. 10). We referred to this interpretation of “carrier” as the first alternative construction. Id. Rather than resolve this apparent dispute about the meaning of “carrier,” we found that both of Petitioner’s anticipation challenges failed under both interpretations of “carrier.” Id. at 10–26. Because we found that Petitioner had failed to carry its burden regardless of which interpretation of “carrier” applied, we found it unnecessary to resolve the dispute over that interpretation. Id. at 9–10. For the reasons expressed in Parts II.B–C below, we maintain our conclusion that Petitioner has failed to demonstrate a reasonable likelihood of proving that either Shen or Soldano anticipates any claim under either interpretation of “carrier.” Accordingly, Petitioner fails to demonstrate an abuse of discretion in our alleged “refusal” to interpret “carrier.”” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Reh’g Req. 14. We cannot weigh Petitioner’s arguments based on its assertions about “caselaw” because Petitioner cited no cases to support its arguments. See id. Nevertheless, we infer that Petitioner intends its statements of “caselaw” to refer to the requirements to make out a case for anticipation. If so, Petitioner demonstrably miscasts what appear to be the legal principles for proving anticipation. As stated in our Decision: “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).” Dec. 7. Making a showing that a prior art reference anticipates a patent claim thus necessarily requires proof that a single reference “expressly or inherently” describes every element of that claim and with all elements being arranged in the reference as they are in the” slip op. at 7
Claim construction§ 102 anticipationPatents in suitUS 10,379,301 - Orca Security Ltd. v. Wiz, Inc.Institution deniedPTAB · Dec 15, 2025 · IPR2025-01083 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Shivamoggi disclosed the required natural-language list of abnormal connections, including for the dependent-claim grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’554 patent. We do not institute inter partes review as to the challenged claims of the ’554 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art (POSITA) “would have had a bachelor’s degree in an academic area emphasizing computer science (i.e. computer science, computer information systems, computer engineering, etc.) or cybersecurity, with at least two years of experience in the field of cybersecurity.” Pet. 6 (citing Ex. 1003 ¶ 49). Petitioner further argues that “additional education or experience might substitute for these requirements.” Id. Patent Owner does not contest Petitioner’s proposed definition of a POSITA at this stage of the proceeding. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’554 patent and the cited prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim terms need to be construed to resolve any issues in controversy in the Petition.” Pet. 7 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner asserts that “[n]o constructions are necessary to deny institution because denial is warranted for numerous reasons that do not depend on claim construction, as further detailed below.” Prelim. Resp. 2. We determine that, at this stage of the proceeding, no explicit constructions are required to resolve the dispute between the parties.” slip op. at 8
- BurdenNot shown unpatentable
“Having reviewed the record presently before us, we agree with Patent Owner. Limitation 1[d] requires generating “insights, wherein the generated insights include at least a list of abnormal connections between the identified network objects.” The ʼ554 patent states that “[n]etwork insights are natural-language representations of aspects of the network graph.” 1 Ex. 1001, 10:15–17. Petitioner acknowledges that the recited “insights” are “natural-language representations.” Pet. 26 (citing Ex. 1001, 10:16–18). Dr. Easttom also agrees that insights are natural-language representations. Ex. 1003 ¶ 100 (testifying that “Shivamoggi’s insights are provided to the user as textual descriptions (i.e. natural-language representations).”). As an 1 The parties do not address whether the “wherein” clause of limitation 1[d] runs afoul of the printed matter doctrine. “[T]he petition must set forth . . . . [h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104. Even though “insights” are described in the ʼ554 patent as “natural-language representations of aspects of the network graph” (Ex. 1001, 10:15–17), Petitioner does not construe “insights, wherein the generated insights include at least a list of abnormal connections between the identified network objects,” as “printed matter” that may be disregarded because it is “not functionally related to the substrate.” See Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018) (“‘Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.’. . . For example, in In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) there was no functional relationship between claimed instructions and a diagnostic kit, as the instructions ‘in no way depend[ed] on the kit, and the kit [did] not depend on the’ instructions.” (quoting Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004)). Because the parties have not addressed it, we decline to consider if the printed matter doctrine applies here. “virtual machine one to load balancer five, where port eighty is routed to port 1337 on virtual machine one, then from load balancer five to firewall two, where port eighty of firewall two is open, then from firewall two to subnet sixteen, where subnet sixteen has a network address of 10.0.1.0/24, then from subnet sixteen virtual network ten, where virtual network ten has a network address of 10.0.0.0/16, then from virtual network ten to virtual network eleven, via peering connection twelve, where peering connection twelve includes a routing rule to virtual network twelve, specifying virtual network twelve's network address, where virtual network twelve's network address is 172.31.0.0/16.” Ex. 1001, 10:31–45 (quotation marks in original). This example illustrates that an insight is provided in natural-language, or textual, format, consistent with the description of an insight in the ʼ554 patent and the testimony of Dr. Easttom. The limitation, which recites “the generated insights include at least a list of abnormal connections,” therefore requires generating a naturallanguage representation of a list of abnormal connections.” slip op. at 18
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 11,722,554 - Orca Security Ltd. v. Wiz, Inc.Institution deniedPTAB · Dec 15, 2025 · IPR2025-01086 · APJ Lisa A Murray · IPR · Institution
The Board denied institution on all challenged claims because Orca did not show a reasonable likelihood of prevailing, based on its unexplained inconsistent positions on a claim term.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute an inter partes review of the challenged claims. B. Real Parties in Interest” slip op. at 2
- Prior constructionPrior construction not adoptedDecided for patent owner
“The Board has recently clarified that “[s]imply noting that the petitioner is adopting a patent owner’s claim construction proposals from district court . . . is not a sufficient reason for advancing different positions in the two forums.” Revvo Techs., Inc. v. Cerebrum Sensor Techs, Inc., IPR2025-00632, Paper 20, 5 (PTAB Nov. 3, 2025) (precedential). In Revvo, as in this case, the petitioner did not propose its own constructions for claim terms in the Petition, but instead accepted the patent owner’s proposed constructions from the related district court litigation. Id. at 2. Although the petitioner had proposed different constructions for the claim terms in district court, it did not explain why it was taking a different position before the Board. Id. The Board’s trial rules “do not necessarily prohibit petitioners from taking inconsistent claim construction positions before the Board and a explain why alternative positions are warranted.” Revvo, Paper 20, 3–4 (quoting Cambridge Mobile Telematics, Inc. v. Sfara, Inc., IPR2024-00952, Paper 12 at 8–9 (PTAB Dec. 13, 2024) (informative)). Petitioner has not sufficiently done so here. Moreover, the fact that Petitioner cannot raise its indefiniteness challenge in an inter partes review is not a sufficient reason to allow Petitioner to take inconsistent claim construction positions before the Board and the district court. Tesla, Inc. v. Intellectual Ventures II LLC, IPR2025- 00340, Paper 18, 3 (Nov. 5, 2025) (informative). As explained in the Board’s Tesla decision: Petitioner’s statement that it cannot raise indefiniteness challenges in an inter partes review is not a sufficient explanation. Indeed, the statement amounts to an assertion that a petitioner should be permitted to raise inconsistent invalidity challenges in the two forums. Petitioner’s explanation may have risen to a sufficient level, for example, if Petitioner had shown that, notwithstanding the alleged indefiniteness of the claim term, an ordinarily skilled artisan would understand that the asserted art satisfies the claim limitation (such as if the limitation prescribed a range and only the outer bounds of the range were unclear). Instead, Petitioner argued indefiniteness in the district court and then adopted Patent Owner’s plain and ordinary meaning construction from the district court litigation in its Petition. Allowing a petitioner to advance a claim construction before the Board when that petitioner has made inconsistent indefiniteness arguments in” slip op. at 7
Claim constructioncites PhillipsPatents in suitUS 12,001,549
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.