- Alliance Laundry Systems, LLC v. Payrange LLCInstitution deniedPTAB · Oct 1, 2025 · IPR2025-00573 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 7 or 11 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’772 patent. Accordingly, we do not institute an inter partes review of claims 7 and 11 of the ’772 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person having ordinary skill in the art (“POSA”) pertaining to the ’772 patent “would have had an educational background of, engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems.” Pet. 19–20; Ex. 1003 ¶¶ 20–26. “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 20; Ex. 1003 ¶ 22. Patent Owner does not oppose Petitioner’s formulation of ordinary skill. See Prelim. Resp. generally. On this record, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’772 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In this inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms expressly to determine whether or not to institute a trial. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,481,772 - PTAB · Apr 29, 2025 · IPR2025-00066 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’258 patent. Accordingly, we do not institute an inter partes review of claims 1–20 of the ’258 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art would have either (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field, as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production, or (2) at least four years of industry experience in the oil and gas industry including well drilling, completion, or production. Pet. 11–12 (citing Ex. 1003 ¶ 48). Patent owner applies the same level proposed by Petitioner.” Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’258 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner does not propose any explicit constructions. Pet. 12. Likewise, Patent Owner does not propose any explicit constructions. Prelim. Resp. 11. We do not need to construe any terms explicitly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Planetary gear systems are designed differently for different purposes. See, e.g., Ex. 2002, iv (“All characteristics of the drive system from the driver to the driven equipment . . . can influence gearbox operation and must be considered . . . .”); Ex. 2024 ¶ 63 (testimony of Michael Nikolaou that “[f]ailing to meticulously design, test, and manufacture a gear system for a specific application can be catastrophic.”). Petitioner does not sufficiently show that a POSITA would have known that Bergan’s planetary gear system, which is designed to drive, and provide heave compensation to, a hoisting drum on a floating platform, would be suitable for use in Buckley to drive an electric drive pump used to drive a fluid end for the pumping of a fracturing fluid into a well. Petitioner appears to acknowledge that at least some changes would be needed to Bergan’s planetary gear system to make it suitable to drive Buckley’s fracturing pump. Pet. 18 (“A POSITA would have been motivated to combine Bergan’s planetary gear system, with appropriate changes to gear sizes that would have been obvious to a POSITA, with Buckley’s pump system . . . .”). Neither Petitioner nor Dr. Durham sufficiently explains what changes would be needed or why a POSITA would have been motivated to make such changes. See id. at 18–19 (citing Ex. 1003 ¶¶ 143, 149 ). We, thus, are not persuaded that a POSITA would have been motivated to used Bergan’s planetary gear system to drive Buckley’s fracturing pump. Petitioner has not sufficiently shown that Buckley is merely applying a known technique to improve a similar device in the same way, that design incentives would have prompted the propose combination, or that the proposed combination is a simple substitution of one known element for another to obtain predictable results.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,598,258 - PTAB · Apr 25, 2025 · IPR2024-01492 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–9 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the foregoing, we conclude that Petitioner fails to establish that Coccia discloses “a resulting solvent valve” as required by claim 1 and as alleged in the Petition. See Pet. 35–42. 4. Conclusion Based on our review of the current record, Petitioner does not establish a reasonable likelihood of proving that claim 1 would have been obvious based on Coccia and Anson. The remaining challenged claims, claims 2–9, all ultimately depend from claim 1. See Ex. 1001, 18:42–19:48. Petitioner’s obviousness challenges to claims 2–9 build on its analysis for claim 1. See Pet. 10, 43–70, 79–86. Accordingly, for the same reasons we discuss above in the context of claim 1, Petitioner has not shown a reasonable likelihood in prevailing on its challenge to any of the dependent claims.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“cites the specification for support, but that argument largely misses the point and elides the claim requirements tied to the resulting solvent valve. See Pet. 35; Prelim. Reply 4. Patent Owner agrees with the general proposition that “a resulting solvent valve” means one or more resulting solvent valves. See Prelim. Resp. 10 (acknowledging that “two duplicative resulting solvent valves having the three positions” could each qualify as “a resulting valve”); Prelim. Sur-reply 4–5 (“Had Petitioner cited to multiple ‘resulting solvent’ valves that each” meet the claim requirements, “Patent Owner would not have raised an issue.”). The general statement that “a” or “an” means “one or more than one,” however, does not support Petitioner’s argument that the limitation broadly covers systems where no single resulting valve meets the three claimed valve positions. The dispute does not turn on whether “a” means “one or more than one”; the dispute, rather, concerns whether the claim allows for multiple valves to meet the three claimed states or whether a single valve must meet those claim requirements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent Owner that Petitioner fails to establish that Coccia discloses the claimed “resulting solvent valve.” Importantly, Petitioner premises its argument for this limitation on a claim construction that we rejected in our analysis above. Because we determine that the claim requires at least one resulting valve to meet the three claimed states identified in the claim, Petitioner may not rely on a combination of Coccia’s valves 26 and 36 to provide the three claimed states, as Petitioner does throughout its analysis. See Pet. 35–42; Prelim. Reply 4. As to Petitioner’s alternative argument that Anson discloses the claimed resulting solvent valve, we decline to consider the argument because it was not included in the Petition and was made for the first time in Petitioner’s Preliminary Reply. See Pet. 35–42; Prelim. Reply 5. Petitioner relied on Anson in the Petition as an alternative reason to find that it would have been obvious to place Coccia’s valve 36 in the claimed location (downstream of the conduit joint and upstream of the brewing chamber), not to meet all of the limitations associated with the resulting solvent valve. See Pet. 38–39. Moreover, Petitioner’s limited argument and evidence in the Preliminary Reply lacks adequate development and fails to persuade us that Anson’s valve 28 performs all of the “claimed functions” associated with the resulting solvent valve, including the two “active” states that the Petition addresses with reliance on Coccia alone. See Pet. 40–42; Prelim. Reply 5. Based on the foregoing, we conclude that Petitioner fails to establish that Coccia discloses “a resulting solvent valve” as required by claim 1 and as alleged in the Petition. See Pet. 35–42. 4. Conclusion Based on our review of the current record, Petitioner does not establish a reasonable likelihood of proving that claim 1 would have been obvious based on Coccia and Anson. The remaining challenged claims, claims 2–9, all ultimately depend from claim 1. See Ex. 1001, 18:42–19:48. Petitioner’s obviousness challenges to claims 2–9 build on its analysis for claim 1. See Pet. 10, 43–70, 79–86. Accordingly, for the same reasons we discuss above in the context of claim 1, Petitioner has not shown a reasonable likelihood in prevailing on its challenge to any of the dependent claims.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,772,456 - PTAB · Apr 25, 2025 · IPR2024-01483 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 would be unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the challenged claims in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenges in the Petition. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “would have had at least the following (or equivalents): a B.S. degree in mechanical engineering with at least five years of experience in product design; or an M.S. degree in mechanical engineering with at least two years of experience in product design.” Pet. 17 (citing Ex. 1002, 13). Patent Owner “submits a person of ordinary skill in the art (‘POSITA’) would be a mechanical or materials engineer, or other similar degree, having at least two to three years of personal experience in designing or development of espresso machines.” Prelim. Resp. 8. In the alternative, Patent Owner states that “because Petitioner’s definition is so close to that of Patent Owner’s definition, that no express finding is necessary to find Petitioner has not met its burden to show with particularity that claim 1 is unpatentable.” Id. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’524 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). The outcome of this case would remain the same if we applied Patent Owner’s similar proposal.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under that standard, we give the words of a claim their plain and ordinary meaning as would have been understood by one skilled in the art at the time of the invention and in the context of the entire patent disclosure. Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties propose constructions for several claim terms. For example, Petitioner contends that we should construe “conduit,” “coupled,” “another solvent,” and “dynamically modulate.” See Pet. 13–17. Patent Owner reserves its right to challenge Petitioner’s constructions and proposes its own constructions for “another solvent” and “communicatively coupled.” Prelim. Resp. 9–11. We determine that we need not construe any of these additional terms to determine whether Petitioner met its burden as to any of its challenges in the Petition.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“that any of them disclose an electronic controller coupled to two pumps and a thermal modulator, such as a heater. Petitioner suggests that Lai’s controller controls two “pump(s),” but Lai appears to describe a single pump 138, and Petitioner fails to point to any disclosure or suggestion in Lai that its system employs more than one pump. See Pet. 38–39 (citing Ex. 1002, 41–42); Ex. 1007 ¶ 98, Fig. 60. Petitioner does not directly assert that Santi discloses a controller connected to two pumps, and it too, like Lai, appears to only disclose a single pump. See Pet. 39; Ex. 1005 ¶ 64, Fig. 1. Petitioner correctly notes that Majer discloses controller 9 connected to two pumps, but we agree with Patent Owner that only one of those pumps meets the requirements of the claimed pumps, which are both connected to conduits that eventually lead to the brewing chamber. See Pet. 40; Prelim. Resp. 28; Ex. 1008, 9:11–12 (describing circuit C2 containing pump 4bis as not including any “brewing means”). In addition, Petitioner does not allege, and Majer does not appear to disclose, a controller coupled to Majer’s heating elements. See Pet. 40. Based on the foregoing, none of the prior art Petitioner relies on discloses an electronic controller that controls both claimed pumps and a thermal modulator. Despite these deficiencies, Petitioner summarily concludes that one of ordinary skill in the art “would have recognized that it would be obvious to combine Startz’s machine with the electronic controller of any of Lai, Santi, and/or Majer, and that such electronic controller would be communicatively coupled to both the thermal modulator and the pumps.” Pet. 40 (citing Ex. 1002, 43). The Petition provides no additional rationale or argument in support of this conclusion, and the cited declarant testimony provides no further analysis. See id.; Ex. 1002, 43. Given the lack of any teaching of a controller coupled to two pumps and a thermal modulator, it was incumbent upon Petitioner to provide some reason why one of ordinary skill in the art would have been motivated to combine the references in a manner that meets the limitation.14 Because the Petition lacks any such statement or rationale, we find Petitioner’s obviousness argument and evidence lacking in this critical respect.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,576,524 - Babybjörn AB v. The Ergo Baby Carrier, Inc.Institution deniedPTAB · Apr 22, 2025 · IPR2025-00110 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person having ordinary skill in the art “would have had at least a four-year degree in a design-based field, which may include fashion design, industrial design, mechanical engineering, or another technical field, or equivalent experience, and familiarity working with child products and/or adjustable products.” Pet. 6–7 (citing Smith Decl. ¶¶ 32–38). Patent Owner does not address Petitioner’s proposed definition, which appears consistent with the record in this proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Furthermore, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the current record, we need not construe explicitly the term “at least one thigh support adjuster” because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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)). More particularly, and as discussed below, Petitioner does not show sufficiently how the prior art teaches the structure identified as corresponding to the alleged claimed function. Further, because we deny on the merits (as discussed below), we do not address Patent Owner’s alternative argument that we should deny institution because “Petitioner fails to construe th[is] limitation and otherwise argues for an advisory opinion from the Board on indefiniteness.” Prelim. Resp. 1; see id. at 1–6 (entire argument). 2. “defined by” Limitations 1j and 11l each recite “a first setting, a second setting, and a third setting defined by the adjustable child carrier.” Ex. 1001, 17:38–39 (emphasis added), 19:43–44 (emphasis added). Limitation 6k recites “a first position, a second position, and a third position defined by the adjustable child carrier.” Id. at 18:36–37 (emphasis added). Patent Owner proposes a construction for “defined by” in these limitations. See Prelim. Resp. 12–15. At this stage of the proceeding and based on the current record, we need not construe explicitly “defined by”” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Public accessibility “has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ . . . .” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). In Hulu, the Precedential Opinion Panel (“POP”) rejected a petitioner’s argument that a reference necessarily meets “the reasonable likelihood standard for institution where the reference bears conventional markers of publication, such as a copyright date, edition identifiers, publication by a commercial publisher, and the assignment of an ISBN number.” Hulu, Paper 29 at 17. The POP stated: “We do not hold that any particular indicia per se is sufficient at the institution stage. Rather, the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Here, Petitioner provides no citation, no discussion, and no support for its assertion that the Synergy Manual was “published” in “2007.” See Pet. 2. Instead, we are left to assume that Petitioner relies on the text “© BabyBjörn AB, Stockholm, 2007” at the bottom of page 6 of the Synergy Manual. More to the point, Petitioner does not discuss in the Petition any evidence supporting the implicit position that the Synergy Manual was publicly accessible prior to the critical date of the claimed invention.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,786,055 - Stara S.A.-Indústria De Implementos Agrícolas v. Agco CorporationInstitution deniedPTAB · Mar 25, 2025 · IPR2024-01459 · APJ Barry L Grossman · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted “unless . . . 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). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had “a bachelor’s degree in mechanical or agricultural engineering, or a related study, and two years of experience building or using agricultural implements, such as cultivators, planters, or other implements, or an equivalent combination of education and experience.” Pet. 21 (citing Ex. 1002 ¶¶ 64–66).” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“J. Discretionary Denial Under 35 U.S.C. § 325(d) Patent Owner argues that the Board should exercise discretion, and deny institution under 35 U.S.C. § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office during prosecution. See Prelim. Resp. 47–48. We need not reach this argument having denied institution on the merits.” slip op. at 46
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner states “Patent Owner agrees with the Petition that no construction is necessary.” Prelim. Resp. 14. Patent Owner contends “the ordinary and customary meaning of ‘parallel,’ as used in independent Claims 1 and 17, does not include ‘transverse,’ as used in Hubalek.” Id. Patent Owner further contends “the ordinary and customary meaning of ‘a hinged joint,’ as used in independent Claims 1 and 17, does not include a ‘ball joint.’” Id. at 14–15 (citing Ex. 2001 ¶¶ 45–51). Additionally, Patent Owner contends the ordinary and customary meaning of claim 17 is that the preamble is limiting. Id. at 15–17. Patent Owner also believes the preamble of claim 17 is limiting. Id. at 16. We do not perceive the need to construe any claim limitation. We do not believe any claim term requires express claim construction, as both parties agree that no construction is necessary. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted)).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,665,989 - Giesecke+devrient GmbH / Giesecke+devrient Currency Technology GmbH et al. v. Lumenco, LLCRehearing deniedPTAB · Mar 13, 2025 · IPR2024-00837 · APJ Benjamin D M Wood · IPR · Rehearing
The Board denied Petitioner’s rehearing request, leaving in place the denial of institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1, 3–7, and 9–13.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“rehearing without prior authorization from the Board.” 37 C.F.R. § 42.71(d). The request must “specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a surreply.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” 37 C.F.R. § 42.71(c).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner misreads limitation [1d], and in particular fails to accord proper meaning to the word “each” in this limitation. “A claim must be read in accordance with the precepts of English grammar.” In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983). Importantly, “[e]ach is treated as singular . . . when it comes before a singular noun (e.g., each house): Each group is responsible for its own quality control—A. Francis, 1986;” and “when it is followed by of and a plural noun (e.g. each of the houses): each of the three parties has a right to a confidential briefing (not have).” Fowler’s Dictionary of Modern English Usage 242 (J. Butterfield ed., 4th ed. 2015). Thus, each refers to each singular (i.e., individual) set of micro mirrors, even though it is followed by “of the sets.” The plain language of limitation [1d] confirms that “each of the sets” is singular by using the singular verb tense “has” rather than the plural tense “have.” Ex. 1001, 28:31. Accordingly, as we held in the Decision (Dec. 17), limitation [1d] requires that each individual set of micro mirrors has a differing cone angle offset. The rest of the limitation’s subject language—“providing the pixels for each of the differing ones of the images”—does not change this result. “[P]roviding the pixels” identifies the relevant “each of the sets of the micro mirrors,” and “for each of the differing ones of the images” identifies the relevant “pixels.” In combination, “providing the pixels for each of the differing ones of the images” clarifies that “each of the sets of the micro mirrors” has, as an antecedent basis, the set (singular) of micro mirrors recited in limitation [1c]. This limitation reads: “the array of micro mirrors includes, for each of the pixels of each of the images, a set of the micro mirrors each having a reflective surface oriented to reflect the ambient light toward a point on the plane corresponding to one of the pixels.” Ex. 1001, 28:24–28 (emphasis added). Thus, each individual set of micro mirrors must have a different cone angle offset from that of the other sets of micro mirrors, whether or not they provide pixels for the same or different images. Petitioner’s interpretation of this language as not requiring differing cone angle offset for sets of micro mirrors forming pixels within the same image (Reh’g Req. 7) is therefore incorrect.” slip op. at 5
Claim constructioncites PhillipsPatents in suitUS 10,317,691 - Imperative Care, Inc. v. Inari Medical, Inc.Institution deniedPTAB · Feb 7, 2025 · IPR2024-01257 · APJ Timothy G Majors · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Garrison did not disclose the claimed negative-pressure arrangement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. Based on the record here and for the reasons discussed below, we find that Petitioner has not demonstrated a reasonable likelihood that it will prevail in establishing that any of the challenged claims are unpatentable. We, therefore, do not institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need only construe the claims to the extent needed to resolve the controversy before us. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Patent Owner neither disputes Petitioner’s proffered construction nor disputes Petitioner’s contention that Hartley teaches a “filament” as claimed. See, e.g., Pet. 41–43; Prelim. Resp. 17. We need not expressly construe the term “filament” or any other term for this Decision.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the person of ordinary skill in the art (“POSA”) in August 2018 “would have had an undergraduate degree in mechanical engineering or a related engineering discipline and 2–4 years of catheter design experience.” Pet. 20 (citing Ex. 1003 ¶¶ 35–36). Patent Owner contends that Petitioner’s proposal is “insufficient,” yet Patent Owner provides no alternative definition of the POSA’s qualifications and, instead, applies Petitioner’s proposed definition. Prelim. Resp. 17. We apply Petitioner’s proposed POSA level for the purposes of this Decision, which level does not appear to be inconsistent with the prior art of record.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableInstitution denied
“On this record, we agree with Patent Owner that Petitioner has not shown sufficiently that Garrison describes the subject matter of claim 1’s system with the subject matter being arranged as recited in the claim. Prelim. Resp. 44–62. Patent Owner argues, for example, that Petitioner “fails to identify any embodiment of Garrison that discloses . . . an aspiration system including an aspiration pump in which negative pressure is generated in a first chamber and a second chamber when a valve is closed.” Id. at 45. Patent Owner cites, inter alia, Petitioner’s identification of “an aspiration pump that is positioned upstream of a receptacle such that the pump delivers fluid (e.g., blood) to the receptacle via positive pressure and thus cannot generate negative pressure in the receptacle”—the alleged “first chamber” identified by Petitioner. Id. at 45–46 (emphasis added). Patent Owner persuasively supports its counterarguments with the teachings of Garrison and the testimony of Mr. Brown. See, e.g., Ex. 1006, Figs. 32–36; Ex. 2001 ¶¶ 64–76. We discuss in further detail below. whenever Garrison discloses a pump in the embodiments identified by Petitioner—whether a peristaltic pump as shown in Figures 32–34, a centrifugal pump, or the pump device 3250 shown in Figure 36—the pump is positioned to draw fluid through an inlet and expel the fluid out of an outlet via positive pressure to a downstream delivery location such as a receptacle or blood return line. Such a pump would not and could not generate negative pressure in the downstream delivery location (the receptacle the Petition alleges is the first chamber) for multiple reasons—and therefore would not generate negative pressure in any “first chamber” identified by Petitioner. Prelim. Resp. 46. We agree with Patent Owner.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,744,691 - PTAB · Jan 21, 2025 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Remand
On remand, the Board denied institution because the petition failed to show a reasonable likelihood that any challenged claim was unpatentable, including over Hall and Borowski.
RulingsRemand decision- RemandOther
“We entered a first Decision Denying Institution of Inter Partes Review (Paper 8), and Petitioner filed a Request for Director Review (Paper 13). The former Director of the United States Patent and Trademark Office vacated our denial of institution and remanded for further proceedings consistent with the former Director’s decision. Paper 14. After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent. Under 35 U.S.C. § 314(a), 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.” Accordingly, we do not institute an inter partes review of the ’236 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: “A [person of ordinary skill in the art (‘POSITA’)] as of August 24, 2016 would have had an undergraduate degree in mechanical engineering, electrical engineering, or physics, and two to three years of experience in LiDAR design.” Pet. 9 (citing Ex. 1003 ¶¶ 59–64). Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 9. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it is consistent with the ’236 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms explicitly to reach our decision. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))); see also Pet. 10 (“[N]o formal constructions are necessary.”); Prelim. Resp. 10 (“[N]o formal constructions are necessary.”).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,422,236 - Giesecke+devrient GmbH v. Lumenco, LLCInstitution deniedPTAB · Nov 25, 2024 · IPR2024-00837 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3–7, and 9–13 were obvious over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . 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 considering the Petition, we determine that Petitioner has not satisfied this threshold requirement, and therefore we do not institute inter partes review of claims 1, 3–7, and 9–13 of the ’691 patent.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s reading of limitation [1d]. This limitation requires that each set of micro mirrors has a differing cone angle offset. A claim requiring “each” of an item to have a particular structure requires all instances of the item to have that structure. See In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009) (claim reciting that “each wire leg” have an offset is not satisfied by prior-art device in which not all of its wire legs have an offset); cf. Micron Tech., Inc. v. U.S., 243 F.3d 1301, 1308 (Fed. Cir. 2001) (“The use of the words ‘each’ and ‘any’ to modify ‘employee . . . leaves no doubt as to the Congressional intention to include all employees within the scope of the [Fair Labor Standards] Act unless specifically excluded.”) (quoting U.S. v. Rosenwasser, 323 U.S. 360, 362–63 (1945)); ResQNet.com v. Lansa, Inc., 346 F.3d 1374, 1379 (Fed. Cir. 2003) (excerpt in specification using words “each field” and “fields” refers to all, not just some, fields). Thus, for each set of micro mirrors providing the pixels for each image to have a “differing cone angle offset,” the cone angle offsets of all the sets of micro mirrors must differ from each other. Consequently, as Patent Owner states (Prelim. Resp. 12), a set of micromirrors producing a pixel for a first image must have a cone angle offset that is different from the other sets of micromirrors producing pixels for that image, and also different from the sets of micromirrors producing pixels for any other image. Petitioner has not made us aware of anything in the Specification that suggests otherwise. We are not persuaded that Fuhse262 teaches limitation [1d] under this interpretation. Petitioner has not identified, and we are unable to find, any teaching in Fuhse262 that each set of micro mirrors providing the pixels for each of the differing ones of the images has a differing cone angle offset from those of the other sets of micro mirrors. Petitioner asserts instead that “a POSITA would understand that there is a differing cone angle offset for each image because the surface normal of each image, which dictate the cone of reflected rays and cone axis, are required to be different.” Pet. 41. But this assertion suggests, at most, that the sets of micro mirrors that create pixels for a first image have different cone angle offsets than the sets of micro mirrors that create pixels for a second image; Petitioner does not appear to be asserting that, e.g., all the sets of micro mirrors creating pixels for the first image are also different from each other, as limitation [1d] requires. Because we are not persuaded that Fuhse262 teaches limitation [1d], we are not persuaded that Petitioner has a reasonable likelihood of prevailing in showing that claim 1 would have been obvious over Fuhse262 and Fuhse925.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art “would have had a minimum of an undergraduate degree in electrical engineering, mechanical engineering, or physics and at least 2 years of experience in micro-optic based security features.” Pet. 14 (citing Ex. 1003 ¶¶ 12–13). Patent Owner responds that one of ordinary skill in the art “would have had an undergraduate degree in electrical engineering, mechanical engineering, physics, or a similar field and at least 2 years of experience in micro-optic based security features.” Prelim. Resp. 10. We do not discern a meaningful difference between the parties’ positions, and do not believe that our decision would differ under either definition. Nonetheless, at this stage of the proceeding, we adopt Petitioner’s definition. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that no terms require construction. Pet. 15; Prelim. Resp. 10. We also do not see the need to expressly construe any claim term, as the threshold question of institution can be decided without doing so. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,317,691
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.