- Syngenta Crop Protection AG v. Inflexion Point Technologies, LLCInstitution deniedPTAB · Dec 1, 2025 · PGR2025-00045 · APJ Debra L Dennett · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any challenged claim was unpatentable under the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324. Institution of a post-grant review is authorized by statute only when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). The burden is on Petitioner to show that the challenged patent is eligible for postgrant review. Mylan Pharms. Inc. v. Yeda Research & Dev. Co., PGR2016- 00010, Paper 9 at 10 (PTAB Aug. 15, 2016) (holding that the ultimate burden of persuasion remains with a petitioner to demonstrate that the challenged patent is eligible for post-grant review). Upon consideration of the Petition, Preliminary Response, and the cited evidence, we determine that Petitioner has not shown that it is more likely than not that any of the challenged claims are unpatentable. We thus determine to not institute a post-grant review of the ’027 patent based on the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“a Bachelor of Science degree in Agricultural or Mechanical Engineering with 2–4 years of practical, applied experience in the field of agricultural machinery, including systems integration and fluid handling and sprayer control systems, or equivalent experience. Prelim. Resp. 12 (citing Ex. 2001, ¶ 59). Patent Owner states that the differences in the asserted levels of ordinary skill should not change the outcome of the Petition. Id. For the purposes of this decision, we adopt Petitioner’s definition, which appears consistent with the level of skill shown in the prior art references of record and the ’027 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). Our analysis, however, would not change were we to adopt Patent Owner’s definition.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“Patent Owner contends that claim construction is necessary for the “seed-applied substance” term because Petitioner allegedly ignores the teaching of the specification in evaluating the term. Prelim. Resp. 12. Patent Owner points to the specification, which defines a “seed-applied substance” as “includ[ing] any composition applied to seeds prior to the seeds being planted (e.g., when the seed comes in contact with the soil in a field).” Id. at 13 (quoting Ex. 1001, 7:45-48). Patent Owner contends that the term means “a substance that is applied directly to the seed before the seed comes into contact with the soil in a field.” Id. (citing Ex. 2001, ¶ 55). According to Patent Owner, Petitioner erroneously uses a definition that “allows the ‘seedapplied substance’ to be applied to the seed (and soil) as the seed lay planted in the soil.’” Id. For the purpose of addressing Petitioner’s grounds, we use the definition of “seed-applied substance” provided in the ’027 patent, i.e., “any composition applied to seeds prior to the seeds being planted (e.g., when the seed comes in contact with the soil in a field).” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[A] patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.”).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“3. Analysis Our analysis of whether Wagers discloses the limitation “individually applying the desired application amount of the selected type of the seed-applied substance to each seed as it is being delivered to the soil” is dispositive of Petitioner’s challenge to claim 1 as anticipated.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 12,102,027 - PTAB · Oct 14, 2025 · IPR2025-00747 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Buttiker was not prior art, so Petitioner did not show a reasonable likelihood that claims 5, 6, 9, or 10 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“establish a reasonable likelihood of proving that any of the challenged claims would have been obvious because all of the challenges rely on Buttiker for specific limitations, and Buttiker is not prior art to the challenged claims of the ’271 patent. Accordingly, Petitioner has not shown” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“When claiming the benefit of priority to a provisional application, the provisional application must provide written description support for the claims in question. See 35 U.S.C. § 119(e) (referring to “an invention 10 Petitioner does not dispute Patent Owner’s arguments on this point in its Preliminary Reply. See Prelim. Reply 2–4. disclosed in the manner provided by section 112(a)”); see also New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (“[T]o be afforded the priority date of the provisional application, . . . the written description of the provisional must adequately support the claims of the non-provisional application.”). Patent Owner argues that the ’688 provisional application supports claims 5, 6, 9, and 10 of the ’271 patent because they describe the method of controlling the pumps and thermal modulators to achieve selected temperatures upstream of the brewing chamber and creating a resulting solvent used to infuse a solute, creating an infused beverage. See Prelim. Sur-reply 3–4 (citing Prelim. Resp. 16–18, 35–37; Ex. 1012, 12–15). Patent Owner also refers to Figure 2 of the ’688 provisional application, which discloses the device that performs the method described in the application. See id. at 4–5. With one exception that we address immediately below, Petitioner does not contest these assertions or argue that the ’688 provisional application fails to disclose the subject matter claimed in claims 5, 6, 9, and 10 of the ’271 patent. See Pet. 18–20; Prelim. Reply 2–4. Based on our review of the record, the ’688 provisional application provides adequate written description support for the challenged claims of the ’271 patent.11 See Ex. 1012, 11–15 (describing Figure 2 of the ’688 provisional application and related methods), Fig. 2.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference not prior artPrinted publication establishedDecided for patent owner
“only qualify as prior art under section 102(a)(1) because section 102(a)(2) does not apply to purely foreign patent publications like Buttiker. See 35 U.S.C. § 102(a)(2) (describing scope of prior art as including “a patent issued under section 151” (addressing issued U.S. patents) and “an application for patent published or deemed published under section 122(b)” (addressing published U.S. applications)); MPEP § 2152 (“The documents upon which a prior art rejection under 35 U.S.C. 102(a)(2) may be based are U.S. patent documents only.”).10 Under section 102(a)(1), Buttiker may be prior art if it “was patented [or] described in a printed publication . . . before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1). Buttiker published after the ’688 provisional application was filed, but before the other applications to which the ’271 patent claims priority were filed. See Ex. 1010, 1; Ex. 1001, code (60). Accordingly, whether the ’271 patent claims at issue here have adequate support in the ’688 provisional application determines whether Buttiker is prior art to those claims because Buttiker’s publication predates later applications to which the ’271 patent claims priority.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“When claiming the benefit of priority to a provisional application, the provisional application must provide written description support for the claims in question. See 35 U.S.C. § 119(e) (referring to “an invention 10 Petitioner does not dispute Patent Owner’s arguments on this point in its Preliminary Reply. See Prelim. Reply 2–4. disclosed in the manner provided by section 112(a)”); see also New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (“[T]o be afforded the priority date of the provisional application, . . . the written description of the provisional must adequately support the claims of the non-provisional application.”). Patent Owner argues that the ’688 provisional application supports claims 5, 6, 9, and 10 of the ’271 patent because they describe the method of controlling the pumps and thermal modulators to achieve selected temperatures upstream of the brewing chamber and creating a resulting solvent used to infuse a solute, creating an infused beverage. See Prelim. Sur-reply 3–4 (citing Prelim. Resp. 16–18, 35–37; Ex. 1012, 12–15). Patent Owner also refers to Figure 2 of the ’688 provisional application, which discloses the device that performs the method described in the application. See id. at 4–5. With one exception that we address immediately below, Petitioner does not contest these assertions or argue that the ’688 provisional application fails to disclose the subject matter claimed in claims 5, 6, 9, and 10 of the ’271 patent. See Pet. 18–20; Prelim. Reply 2–4. Based on our review of the record, the ’688 provisional application provides adequate written description support for the challenged claims of the ’271 patent.11 See Ex. 1012, 11–15 (describing Figure 2 of the ’688 provisional application and related methods), Fig. 2.” slip op. at 12
§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 11,957,271 - Ascend Elements, Inc. v. Duesenfeld GmbHInstitution deniedPTAB · Oct 10, 2025 · PGR2025-00037 · APJ Kevin W Cherry · PGR · Institution
The Board denied institution of PGR on claims 1–14 because Petitioner did not show that any challenged claim was more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition filed under [35 U.S.C. §] 321 . . . demonstrates that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that Petitioner has failed to demonstrate that it is more likely than not that at least one of claims 1–14 of the ’463 patent is unpatentable. Accordingly, we deny institution of a postgrant review of claims 1–14 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had at least a Bachelor’s degree in electrical engineering, material science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithiumion batteries. Additional formal education focusing on processing of lithium batteries may substitute for practical experience and additional practical experience can substitute for less education.” Pet. 10–11. Patent Owner does not contest this definition of a person of skill in the art. See Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’463 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“distinct from “comminute[ion],” Petitioner offers only the testimony of its expert, Mr. Juzkow, who equates Tomioka’s “cutting” with “comminute[ion].” See Ex. 1003 ¶ 121. However, Mr. Juzkow provides insufficient reasoning to support his conclusion, particularly given the intrinsic and extrinsic evidence discussed above. In contrast, Patent Owner’s expert, Mr. Dantam, provides extensive reasoning, supported by citations to other evidence, to support his conclusion that Tomioka’s “dismantling” is not the claimed “comminution.” Thus, we give more weight to Mr. Dantam’s testimony than Mr. Juzkow’s testimony. Weighing this evidence all together, we find that Petitioner has failed to show that it is more likely than not that Tomioka’s teaches the claimed comminution under Petitioner’s first theory.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundTeaching away not foundNot shown unpatentable
“obvious. Pet. 34–35. However, we agree with Patent Owner that Petitioner has also failed to show that it is more likely than not that Tomioka renders this limitation obvious. See Prelim. Resp. 28–31. To begin with, Petitioner’s contentions lack sufficient reasoning explaining why a person of ordinary skill would have modified Tomioka in the manner proposed. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Petitioner merely asserts that a person of ordinary skill in the art could use the roller system in place of the dismantling disclosed for the embodiments in Figures 19 and 20. On this record, we find this bare contention insufficient. actual disclosure of Tomioka. The rollers in Tomioka are used to separate the “battery body” from the “resin package enclosing the battery body,” and Tomioka specifically discloses that this technique is designed to “avoid damaging the battery body.” Ex. 1005 ¶¶ 25, 26, 29; Ex. 2011 ¶¶ 72–73. Thus, there is a significant difference between what Tomioka teaches and what Petitioner proposes to use the roller system to do. In addition, as Patent Owner points out, Tomioka specifically discloses there are risks associated with mechanically crushing battery packs, such as “risk of sparking due to residual voltage if the battery units are damaged in the process.” Ex. 1005 ¶ 5. Although we do not agree with Patent Owner that this amounts to a “teaching away,” see In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), we do believe that this teaching suggests a trade off that should be weighed in determining whether to make the modification, see Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). However, Petitioner has failed to account adequately, if at all, for this trade off. Thus, we find that Petitioner has failed to show that it is more likely than not that Tomioka accounts for the claimed “comminuting.”” slip op. at 15
§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 12,119,463 - Shenzhen Tuozhu Technology Co. Ltd. v. Stratasys, Inc.Institution deniedPTAB · Oct 6, 2025 · IPR2025-00585 · APJ Lilan Ren · IPR · Institution
The Board denied institution on claims 1–6, 10–19 because claim 1’s scope is ambiguous and the petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Institution of an inter partes review requires that “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.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the scope of claim 1 is ambiguous and that there is not a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim, and we deny inter partes review.1” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“distinguishes and contrasts build material property from operational parameters. The diagnostic test passage therefore only describes a diagnostic test of the build material property but does not describe a subsequent diagnostic test to assess whether an operational parameter is suitable for the printer. Based solely on the diagnostic test passage and the prosecution history, a possible interpretation may be that the operational parameter determination in claim element 1b encompasses the diagnostic testing in claim element 1c. That is, “performing a diagnostic test to determine whether the operational parameter is suitable for the three-dimensional printer” in claim element 1c is subsumed as part of “determining an operational parameter of a fabrication process using the three-dimensional printer based upon the data, the operational parameter including at least one of a build platform temperature, a build volume temperature, an infill requirement, a rafting requirement, a support structure requirement, and a cooling requirement” in claim element 1b.” slip op. at 15
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); see also Research Corps. Techs. v. Microsoft Corp., 627 F.3d 859, 871–72 (Fed. Cir. 2010) (holding that claims of the later-filed application, which were not limited to a “blue noise mask,” were “not entitled to claim the benefit of their parent applications’ filing dates”); ICU Med., Inc. v. Alaris Med. Sys., 558 F.3d 1368, 1377–78 (Fed. Cir. 2009) (holding that “spikeless” claims “added years later during prosecution” were not supported by the specification which “describe[d] only medical valves with spikes”); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158–60 (Fed. Cir. 1998) (holding the generic shaped cup claims of the later-filed child application were not entitled to the filing date of the parent application that “disclosed only a trapezoidal cup and nothing more”). “To satisfy the written description requirement the disclosure of the prior application must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.” PowerOasis, 522 F.3d at 1306 (emphasis omitted; alteration in original). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art in the field in the relevant time frame would have had “(1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶ 20). Petitioner also contends that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. (citing the same). Patent Owner contends that an ordinarily skilled artisan “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Electrical Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 12. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it appears unopposed and consistent with the disclosures of the ’464 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
Claim construction§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,167,464 - Therabody, Inc. v. Datafeel Inc.Institution deniedPTAB · Aug 21, 2025 · PGR2025-00026 · APJ Lisa L Tsang · PGR · Institution
The Board denied institution because Petitioner did not show claim 4 more likely than not unpatentable on either obviousness or § 112 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). Upon considering the arguments and evidence, we conclude that the information presented shows it is not more likely than not that at least one challenged claim of the ’174 patent is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner because, based on the current record, it is consistent with our review and understanding of the technology and descriptions in the ’174 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our analysis below would be the same regardless of whether we adopt Petitioner’s or Patent Owner’s proffered level of skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner and Patent Owner agree that no claim terms need construction. Pet. 14; Prelim. Resp. 6. After reviewing the evidence and arguments presented by the parties, we determine that it is not necessary to expressly construe any claim terms because doing so would not change the outcome of our analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“of Choi to support its argument that an ordinarily skilled artisan would have understood Choi’s infrared lamp housing to define a concave shape as claimed. See Pet. 61–62. With only this explanation and evidence from Petitioner and Dr. Jenson, however, we cannot not discern how these portions of Choi would have so apprised an ordinarily skilled artisan. For example, the side view of the infrared lamp housing, illustrated in Figure 5 reproduced below, shows the housing having a convex, rather than concave, shape. See Ex. 1008, Fig. 5. Furthermore, paragraphs 20 and 48 refer to the housing’s “circular” shape and outer periphery and also “tubular” shape. See id. ¶¶ 20, 48. But these descriptions, either alone or together with Figure 5, also do not support adequately a finding that Choi’s housing is concave. Choi’s teachings in paragraphs 20 and 46 regarding the lamp housing guiding or directing infrared light from the lamp to irradiate the skin of a user, without more, are similarly deficient. See id. ¶¶ 20, 46. And although Dr. Jensen appears to equate “concave” with “inner circular,” he does not provide the basis for his testimony or explain what “inner circular” means, particularly in the context of distinguishing a convex shape from a concave shape. See Ex. 1002 ¶ 197. Accordingly, we determine there is insufficient evidence to support Petitioner’s conclusory statements that an ordinarily skilled artisan would have understood Choi’s infrared lamp housing to define a concave shape as claimed.” slip op. at 23
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 12,036,174 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · Apr 28, 2025 · PGR2024-00048 · APJ Stacey G White · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that claims 1–6 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024). Upon considering the evidence and arguments presented, we determine, as discussed below, that Petitioner has not demonstrated that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Therefore, we deny1 Petitioner’s request to institute post-grant review of claims 1–6.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s declarant, Dr. Khatri, proposes a definition of the person of ordinary skill in the art. Ex. 2001 ¶ 24. Dr. Khatri, however, notes that his opinions would be the same under either his proposal or Petitioner’s proposal. Id. ¶¶ 25–26. Patent Owner states that, for purposes of the Preliminary Response, it “adopts Petitioner’s definition of a person of ordinary skill in the art.” Prelim. Resp. 13 (citing Pet. 22–23; Ex. 2001 ¶¶ 22–26). We determine that the current record supports Petitioner’s description of an ordinarily skilled artisan. For purposes of this Decision, therefore, we adopt Petitioner’s description of an ordinarily skilled artisan. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the claim terms “MLC memory modules” and “SLC memory module.” Pet. 23–28. Patent Owner disagrees with Petitioner’s constructions, but does not contest them because it argues that construction of these terms is not necessary to resolve the parties’ disputes. Prelim. Resp. 14. Based on the record presented, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post- grant review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” The Federal Circuit has held that “[t]he written description requirement is met when the disclosure relied on for support ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” RAI Strategic Holdings, Inc. v. Philip Morris Prods. S.A., 92 F.4th 1085, 1088 (Fed. Cir. 2024) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted)). The written description inquiry is a question of fact, is context specific, and must be determined on a case-by-case basis. Ariad, 598 F.3d at 1351 (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985); Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citing Capon, 418 F.3d at 1357–58). Factors used to evaluate the sufficiency of a disclosure include: 1) “the existing knowledge in the particular field”; 2) “the extent and content of the prior art”; 3) “the maturity of the science or technology”; and 4) “the predictability of the aspect at issue.” Id. (citing Capon, 418 F.3d at 1359). As support for the term “memory space,” the ’612 patent explains that because “the SLC NAND flash is used to boost the lifetime (endurance) of the storage system, it can be considerably lesser in amount than the MLC NAND flash.” Ex. 1001, 5:20–23; see Ex. 2001 ¶ 51. As an example, the ’612 specification states that “a system may set SLC NAND flash equal to 12.5% or 25% of MLC NAND flash (total non-volatile memory storage space=MLC+SLC).” Ex. 1001, 5:23–25; see Ex. 2001 ¶¶ 51, 62. In addition, we find persuasive Dr. Khatri’s testimony that one of ordinary skill in the art would have understood that “there are two spaces—MLC and SLC—where data is stored, and the total memory space is the combination of the two.” Ex. 2001 ¶ 51. Further, the ’612 patent’s Figure 1 depicts “memory space,” e.g., dynamic random-access memory (DRAM) 20, one or more disks 24, MLC NAND flash memory module 26, and SLC NAND flash memory module 28. Ex. 1001, 5:37–45, Fig. 1; see Ex. 2001 ¶ 64. The ’612 patent’s Figure 4 also depicts “memory space,” e.g., NAND flash memory bank 56 comprising “a plurality of MLC NAND flash memory modules 60a and a plurality of SLC NAND flash memory modules 62a” and NAND flash memory bank 58 comprising “a plurality of MLC NAND flash memory modules 60b and a plurality of SLC NAND flash memory modules 62b.” Ex. 1001, 7:8–14, Fig. 4; see Ex. 2001 ¶ 64. On the record before us, we find the above noted disclosures to be sufficient to support the disputed claim language. For these reasons, the ’612 patent’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad, 598 F.3d at 1351.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,854,612 - Catalyst Orthoscience Inc. v. Shoulder Innovations, Inc.Institution deniedPTAB · Apr 24, 2025 · PGR2025-00001 · APJ James A Tartal · PGR · Institution
The Board denied institution of post-grant review of claims 1–22, exercising its discretion under § 324(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv 5−6. We consider these factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“parties, we do not find the merits to be particularly strong on the current record. For example, limitation [1-4] recites, in part, “a locking nut having . . . an external thread on an outside surface of the locking nut.” Ex. 1001, 9:46–47. In alleging obviousness based in part on Orphanos, Petitioner equates the claimed “locking nut” to Orphanos’s collet 230 in a first embodiment of Orphanos, or Orphanos’s collet portion 1052 in a second embodiment of Orphanos. Pet. 37–38. Petitioner acknowledges that the collet and collet portion do not have external threads, but rather are designed to have a snap-fit engagement with the inner sidewall of the baseplate’s central throughbore. Id. at 38. Petitioner argues that modifying the collet and collet portion to have external threads would have been obvious to the skilled artisan in view of Orphanos’s teachings and the knowledge of a person having ordinary skill in the art. Pet. 38–42 (arguing, inter alia, that it would have been “a substitution of a known part for a known problem” and “obvious as a matter of design choice”). Petitioner does not allege that replacing the snap-fit coupling with external threads would either: (1) result in any advantages; or (2) preserve any of Orphanos’s stated benefits of its snap-fit arrangement. See Pet. 34–37. That Petitioner describes no advantages to making its proposed modification potentially undermines Petitioner’s case that the skilled artisan would have done so. Cf. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“Petitioner’s arguments regarding the central post and locking nut include an implicit claim construction argument that these components need not be separate structures. Pet. 74, 76–81. Patent Owner, on the other hand, would have us interpret the claim to require that they be separate structures. Patent Owner raises credible evidence to support its theory. Specifically, Patent Owner directs us to the language of claim 1, which separately recites “a central screw” and “a locking nut.” Prelim. Resp. 51; see Ex. 1001, 9:44–53. Patent Owner further contends, in view of the claim language, that the claimed central post and locking nut are separate and distinct components. According to Patent Owner, however, Lefebvre’s main head and anchor rod portions are parts of a single monolithic anchoring screw. Prelim. Resp. 53–58. Where a claim lists elements separately, there is a rebuttable presumption that these elements have separate and distinct physical structures. See Google LLC v. EcoFactor, Inc., 92 F.4th 1049, 1058 (Fed. Cir. 2024) (citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–1232 (Fed. Cir. 2011)). The presumption may be rebutted by the intrinsic record. Id. At this stage, however, Petitioner does not address that claim 1 appears to separately recite a central post and a locking nut, and does not direct us to any portion of the intrinsic record that might rebut the presumption that these elements are, therefore, separate and distinct structures. See Pet. 73–77. Petitioner also argues that the claim terms “baseplate central channel” and “central channel . . . configured to interface with the baseplate” are indefinite. Pet. 95–102. Patent Owner argues that the plain and ordinary meaning of the terms is clear and that Petitioner “had no problem” arguing how the asserted art purportedly rendered the claims obvious. Prelim. Resp. 69–77.” slip op. at 17
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached
“Petitioner also argues that the claim terms “baseplate central channel” and “central channel . . . configured to interface with the baseplate” are indefinite. Pet. 95–102. Patent Owner argues that the plain and ordinary meaning of the terms is clear and that Petitioner “had no problem” arguing how the asserted art purportedly rendered the claims obvious. Prelim. Resp. 69–77. In sum, even if Petitioner’s contentions show it is more likely than not that at least one of the claims challenged in the Petition is unpatentable, we find Patent Owner’s arguments identify credible weaknesses in Petitioner’s contentions. Accordingly, we find that that the sixth Fintiv factor is neutral and does not weigh against discretionary denial.” slip op. at 18
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 12,023,254 - Samsung Electronics Co., Ltd. v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Mar 24, 2025 · IPR2024-01349 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because claims 1–13 are entitled to the May 26, 2005 priority date, making the asserted references not prior art and the obviousness grounds unlikely to prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); see also 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Thus, if Petitioner has not satisfied the threshold reasonable likelihood standard for institution, then institution will be denied. See id. at 1378–1379.” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States . . . shall have the same effect, as to such invention, as though filed on the date of the prior application.” (emphasis added). “In essence, this means that in a chain of continuing applications, a claim in a later application receives the benefit of the filing date of an earlier application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶ 1, including the written description requirement, with respect to that claim.” Technology Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326 (Fed. Cir. 2008). And to determine whether a parent application meets the written description requirement, “the disclosure must be considered as a whole, as the person of ordinary skill in the art would read it, to determine if it reasonably conveys possession” of the claimed invention. Allergan USA, Inc. v. MSN Labs. Private Ltd., 111 F.4th 1358, 1375 (Fed. Cir. 2024) (citation and emphasis omitted); see also Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345–46 (Fed. Cir. 2000) (the purpose of the written description requirement “is to ensure that the scope of the right to exclude . . . does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification”).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) if presented, objective evidence of non-obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). As previously noted, the first factor regarding the scope of available prior art is the dispositive issue of this Petition, which is largely defined by the effective filing date of the challenged claims.” slip op. at 8
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Because we determine that no inter partes review will be instituted on IPR2024-01350, we find it unnecessary to exercise exclusive jurisdiction over the ’849 patent. See Paper 9, 9. Therefore, Petitioner’s motion for the Board to exercise exclusive jurisdiction over the ’849 patent is denied. Petitioner further requests that all briefing in this proceeding be provided to the Certificates of Correction and Petitions branches for their consideration, citing Patent Owner’s “duties of candor and good faith.” Id. at 2, 10. However, in view of our determination not to institute review in this proceeding, we defer to the Certificates of Correction and Petitions branches to carry out their duly authorized duties. Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349 (Fed. Cir. 2019).” slip op. at 23
§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,719,849 - Samsung Electronics Co., Ltd v. Anonymous Media Research Holdings, LLCInstitution deniedPTAB · Mar 21, 2025 · IPR2024-01350 · APJ Michael T Cygan · IPR · Institution
Institution was denied for claims 1–15 because Petitioner did not show the asserted references were prior art; the claims were supported by the ’330 application’s 2005 filing date.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To prevail on its obviousness challenges, Petitioner must show that the ’848 patent is not entitled to the benefit of the ’330 application. This issue is dispositive because none of the references relied on by Petitioner qualify as prior art if the ’848 patent is entitled to the benefit of the May 26, 2005, filing date of the ’330 application. Pet. 6, 13. We start by explaining why Petitioner bears the burden of persuasion.” slip op. at 9
- BurdenDecided for patent owner
“1. The Burden of Persuasion “In an inter partes review . . ., the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” 35 U.S.C. § 316(e). That burden, termed the burden of persuasion, “is the ultimate burden assigned to a party who must prove something to a specified degree of certainty.” Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (quoting Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)). That burden never shifts to the patentee. Id. at 1379. In order for an inter partes review to be instituted, “the information presented in the petition filed under section 311 and any response filed under section 313 [must] show[] that there is a reasonable likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“d) Analysis Petitioner has not shown a reasonable likelihood that it would prevail in showing that its asserted references, including Steuer 750 which is a publication of the ’330 application, are prior art to the ’848 patent. Petitioner has not shown that the ’330 application fails to provide written description support for claim 1 of the ’848 patent, which recites “video data” samples and representations.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“a chain of priority from the ’330 application to the ’848 patent contain at least the same disclosure as the ’330 application, Petitioner has not shown that the ’848 patent should not be given the benefit of the effective filing date of the ’330 application. The May 26, 2005 filing date of the ’330 application predates the December 1, 2005 publication date of Steuer 750, the August 13, 2013 issue date of Steuer 768, and the December 2, 2010 and May 27, 2010 publication and filing dates of Neumeier.10 Pet. 7; Ex. 1005, code (43); Ex. 1006, code (45); Ex. 1007, codes (43), (60).11 Therefore, Petitioner has not shown by a preponderance of the evidence that any of the asserted claims in the ’848 patent would have been obvious over the asserted combinations of Steuer 750, Steuer 768, and Neumeier.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,719,848 - Phison Electronics Corporation v. Vervain, LLCInstitution deniedPTAB · Mar 17, 2025 · PGR2024-00047 · APJ Steven M Amundson · PGR · Institution
The Board denied institution because Petitioner did not show it was more likely than not that any of claims 1–7 was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024).” slip op. at 2
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as encompassing a” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 26
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not shown unpatentable
“2. PETITIONER’S CONTENTIONS Petitioner challenges the ’546 patent’s claims as failing to satisfy” slip op. at 36
§ 101 eligibility§ 103 obviousness§ 112 disclosureDiscretionary denialcites Alice · Mayo · Phillips · KSR · Graham · NautilusPatents in suitUS 11,830,546
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.