- Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00653 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution on all claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’504 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 9; Prelim. Resp. 4 (citing Ex. 2009 ¶ 72); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1002 ¶ 47. As reflected above, Dr. Wooley’s testimony as to element [1.2] does not even assert that Cardamone discloses a tank, let alone one or more sensors disposed at a tank as recited in element [1.2]. Thus, Dr. Wooley’s testimony does not support Petitioner’s argument on this issue.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,726,504 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00652 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’403 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 10; Prelim. Resp. 4 (citing Ex. 2009 ¶ 73); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses element [1.2] because the evidence cited does not disclose a “first computer system being configured to provide remote control of the first pump or first valve” (i.e., a fluid-handling device). Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but Petitioner has not identified any disclosure of the capability to remotely control fluid-handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, Kahn’s disclosures that Petitioner relies on for allegedly teaching remote control are deficient. We discuss each. First, Petitioner points to the following, “[f]or instance, as illustrated in FIG. 1C, a fluid control device such as a valve 15A is located on the input side of a sen[s]or unit 110.” Ex. 1005, 8:19–21, cited in Pet. 13. This portion of Kahn, however, does not disclose remote control. Second, Petitioner cites to the following: Finally, or in addition to, the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance. Pet. 13 (citing Ex. 1005, 10:62–67). We agree with Patent Owner that this portion of Kahn teaches on-site alerts and local control of the fluid-handling device. See Prelim. Resp. 7. This portion of Kahn does not disclose remote control.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,294,403 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00651 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6, 7, and 9–20 were unpatentable over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’680 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“target value” is part of a command that is sent from a computing device to a server and then to a controller. The controller then receives a measurement of the fluid by a sensor and determines whether the measurement satisfies the “target value.” If the measurement does not satisfy the “target value,” further operations are undertaken. The recited operation sequence makes clear that the plain and ordinary meaning of “target value” is not as Dr. Wooley opines because the particular operating condition that a device is in at a particular time is represented by the measurement taken by the sensor, 11 Some claim language less relevant to construing “target value” was omitted for ease of reference. which the controller then uses to determine whether the measurement satisfies the “target value.” Additionally, claim 1 recites that the “target value” is sent as part of a command to the controller. The “target value” is not sent to the controller from the sensor, as might be expected if the plain and ordinary meaning of “target value” were as Dr. Wooley opines. Petitioner and Dr. Wooley’s construction would also result in “target value” meaning effectively the same thing as the measurement of the fluid by the sensor, a concept that is separately recited in claim 1 and to which the “target value” is compared. The Specification of the ’680 patent does not support Petitioner’s understanding of the plain and ordinary meaning of “target value.” Although the Specification does not recite “target value,” it recites “target state,” and describes “target state” sufficiently to understand the plain and ordinary meaning of “target” as used in “target value” and “target state.” In particular, the ’680 patent explains that “[i]n some embodiments, the process 104 includes receiving, via a network interface, from a remote user device, (e.g., via a command-center server) a command to change a state of a fluid-handling device to a target state.” Ex. 1001, 11:48–51. This portion reflects that the command is seeking to change a state of a fluid-handling device to a target state. In other words, the “target value” or “target state” is not generally “the particular operating condition that a device is in at a particular time”; rather, it is a value or state that the fluid-handling device is desired to be in, as Patent Owner and Dr. Durham explain. Additionally, just as claim 1 recites a directional component for the “target value” to be sent to the controller in a command, so too does the Specification describe a “target state” as being sent in a command from a remote user device. Thus, the Specification clearly supports the plain and ordinary meaning proposed by Patent Owner and Dr. Durham and not the plain and ordinary meaning proposed by Petitioner and Dr. Wooley. slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“time-stamped process data, report exception therein to the remote host, and extract and transmit time-stamped process data to the remote host.” Ex. 1005, Abst. (emphases added). Almadi explains that its remote field systems must include a plurality of controller units “to issue commands to, and gather and process data from a plurality of field devices, including remote systems and instruments, . . . [and] a database server for the storage of process data retrieved from the remote subsystems and instruments.” Id. at 2:22–30 (emphases added). Based on these disclosures, we agree with Patent Owner that Petitioner has not established that Almadi discloses element [1.4]. Specifically, the teachings from Almadi identified by Petitioner refer to process data, which is data retrieved from the remote subsystems/field devices. Thus, we understand that Almadi’s teaching—of using an Ethernet switch to transmit “process data”—describes transmitting data from the remote subsystems/field devices. See Ex. 1005, 3:13–17, cited in Pet. 15. But claim 1 and particularly element [1.4], recites “sending, with the server, the target value to the network address [which identifies a controller of the fluid-handling device13] via the network,” which is different than sending process data from the field devices to the remote host or database server for storage.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,680 - Tanklogix, LLC v. SiteproInstitution deniedPTAB · Oct 10, 2025 · IPR2025-00650 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–32 and 34 were unpatentable over Kahn or Kahn and Gutierrez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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) (2024). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’871 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 18–32 and 34 of the ’871 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The respective proposed levels of qualifications for a person of ordinary skill in the art are similar, with Patent Owner proposing two years of experience compared to Petitioner proposing significant experience with remotely controlling fluid-handling devices, like SCADA systems. Patent Owner also proposes more extensive experience in lieu of educational experience. While we find Petitioner’s proposed qualifications to be acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of skill necessary to understand and implement the teachings of the ’871 patent and the asserted prior art. Our analysis and findings herein, however, do not turn on any differences in the qualifications adopted.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“actuators and the remote control of fluid handling devices, including the receipt with the user-interface module of “a user command to actuate an actuator via a presented control interface” (limitation [18.7]) and “account authorized to send commands to remotely control fluid handling devices” (limitation [18.11]). We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses or teaches these limitations because the evidence does not provide support that there is remote control of fluid handling devices or the use of a user command on a control interface to send a command to a fluid handling device, for instance. Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but we do not discern that it teaches or discloses the capability to remotely control fluid handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, the Kahn disclosures that Petitioner repeatedly relies upon for allegedly teaching this control are deficient. See Ex. 1005, 10:62–67, 14:35– 15:2, 15:62–16:32; see also Pet. 12–14, 16–18. Kahn discloses that “the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance.” Ex. 1005, 10:62–67. Communication unit 112B is part of the local “sensor unit,” wherein the detection conditions determined by the sensor are communicated to remote devices by communication unit 112B. See id. at 3:31–33, 5:62–6:2, 6:27–35, 7:33–37, 13:7–12, Figs. 1A–1C. Kahn discloses that the sensor units, which include communication units 112B, can be located near shut-off valves and can communicate with distant locations. See id. at 11:1–13. There are no disclosures, however, in the above passages that there is remote control of fluid handling devices, that there is a user command on a control interface that actuates an actuator, or that there is a command sent to the facility actuators via a network connection, as required in limitations [18.5]–[18.7] and [18.9]–[18.12], respectively. Rather, the disclosure indicates that the communication unit 112B includes on-site alerts and that the local (non-remote) communication unit 112B can be interfaced with the control valve.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,488,871 - 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 - Micron Technology, Inc. v. Yangtze Memory Technologies Co., Ltd.Institution deniedPTAB · Aug 8, 2025 · IPR2025-00244 · APJ Kimberly Mcgraw · IPR · Institution
The Board denied institution because the petition did not sufficiently show that Costa disclosed or suggested claim 11.H’s required arrangement, and the dependent claims did not cure that deficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In view of these deficiencies, the Petition fails to identify the proposed grounds for review with particularity as required by 35 U.S.C. § 312(a)(3) with respect to the limitations of independent claim [11.H]. Petitioner presents no arguments or evidence with respect to the dependent claims challenged under this ground that would remedy the defects noted above with respect to independent claim 11. See generally Pet. Thus, Petitioner has failed to demonstrate a reasonable likelihood that the subject matter of claims 11, 12, or 14–19 would have been obvious over Costa.” slip op. at 23
- BurdenDenied
“3. Analysis A petition is required to identify “with particularity[ ] the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge.” 35 U.S.C. § 312(a)(3). The “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). 37 C.F.R. § 42.22(a)(2). Our rules require that a petition include fully developed arguments. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence”). The petition must include both an adequate explanation of how the claims should be construed as well as how the construed claims are unpatentable over the asserted prior art. 37 C.F.R. § 42.104(b)(3), (b)(4). Additionally, the “petition must specify where each element of the claim is found in the prior art.” 37 C.F.R. § 42.104(b)(4). A petition should also “explain why a person of ordinary skill in the art would have combined elements from specific references in the way the claimed invention does.” ActiveVideo Networks, Inc. v. Verizon Comm'ns, Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012). Thus, based on our rules, we only consider fully developed arguments set forth in the petition.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“arguments. See, e.g., id. at 34–35 (arguing that “on” does not require overlap in the Z direction but “includes both objects that are merely touching (in any dimension) and objects that are in proximity to each other but not touching” (citing Ex. 1078, 1; Ex. 1001, 8:3–12)); see also id. at 36–38 (arguing that if “on” is construed to mean “directly on or on with an intermediate feature or layer therebetween,” then Costa’s second stacked layer 232, 242 and third channel structure (173) are “directly on” each other, because their edges are directly touching each other). The Petition, however, does not clearly present any of the claim construction arguments set forth in the Opposition Brief. See Paper 22 (not clearly identifying where the Petition provides the proposed claim construction); see generally Pet.; see also Pet. 33, 43, 56 (arguing “on” does not require “directly on” and permits intermediate layers but not presenting any of the other claim construction arguments set forth in the Opposition Brief). Nor did the Petition provide any particularized argument as to how Costa discloses or suggests a second stacked layer disposed on the third channel structure applying any of the claim constructions proposed in the Opposition Brief. See generally Pet. (presenting no argument that Costa’s second stacked layer 232, 242 is “on” semiconduction portion layer 173 (the asserted third channel structure) because they touch each other as shown above in Petitioner’s annotation of Costa Figure 21A). We will not consider any arguments not sufficiently set forth in the Petition. See 37 C.F.R. § 42.104(b)(3) (“the petition must set forth . . . [h]ow the challenged claim is to be construed”); 37 C.F.R. § 42.104(b)(4) (“the petition must set forth . . . [h]ow the construed claim is unpatentable”).” slip op. at 19
- Parallel petitionsNot reached
“Because we determine that Petitioner did not show a reasonable likelihood that it would prevail on the merits, we do not address Patent Owner’s parallel petitions argument.” slip op. at 23
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,886,291 - Micron Technology, Inc. v. Yangtze Memory Technologies Co., Ltd.Institution deniedPTAB · Aug 8, 2025 · IPR2025-00245 · APJ Michael T Cygan · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that claims 11, 13, and 15–17 would have been obvious over Costa or Costa and Oh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“§ 42.4(a), we may only institute an inter partes review when “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); see also 37 C.F.R. § 42.108(c). Based upon our review of the present record, Petitioner has not sufficiently shown a reasonable likelihood it will prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that none of the claims require express construction and the claims should receive their plain and ordinary meaning. Pet. 23. Patent Owner argues that no claim construction is necessary for the institution determination, and that the Petition “still fails if the claim term ‘on’ receives its plain and ordinary meaning -- e.g., physically in contact with or directly on top of with intervening objects therebetween.” Prelim. Resp. 20 (citing Ex. 2006 ¶ 66). Although Patent Owner argues that Petitioner has construed “on” as including indirectly on; i.e., where there is no physical contact, the Petition addressed now-disclaimed claim 18, and the Petition does not advance any construction for the remaining claims. See id. at 16–17 (citing Pet. 92; Ex. 1003 ¶ 258). Consequently, we determine that no construction is required to resolve the issues for institution.” slip op. at 7
- Skill levelSkill level petitioner adoptedOther
“we consider the level of ordinary skill at the time of filing. 35 U.S.C. § 103; see also Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (discussing pre- AIA obviousness). Petitioner contends that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. The earliest claimed priority date for the ’241 patent is after the effective date of the applicable AIA amendment. See Ex. 1001, (63). Thus, we refer to the AIA version of 35 U.S.C. § 103. 2 Costa, US 2018/001282771 (filed Feb. 28, 2017, published June 28, 2018) (Ex. 1005, “Costa”). 3 Oh, US 2017/0154892 A1 (filed June 10, 2016, published June 1, 2017) (Ex. 1006, “Oh”). some of the professional experience). Pet. 23–24. Petitioner also asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, how it is manufactured, and its component parts.” Id. (citing Ex. 1003 ¶¶ 36–40). Patent Owner does not take a position on the level of ordinary skill in the art. Prelim. Resp. 11; see also Ex. 2006 ¶ 34 (applying Petitioner’s definition of a POSITA to the opinions set forth in the declaration but reserving the right to opine to an alternative level of a POSITA). At this stage of the proceeding, we adopt Petitioner’s definition of a POSITA as it appears consistent with the level of ordinary skill in the art that is reflected by the prior art of record.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the Petition fails to sufficiently show that Costa teaches a “second stacked layer disposed on the third channel structure” as required by apparatus claim element [11.E]. The Petition asserts that Costa’s second alternating stack 232, 242 is formed “on the top surface of joint-level material layers.” Pet. 64. However, Costa refers to the term “joint-level material layers” as representing layers 175–177, not the asserted third channel structure 173. Ex. 1005 ¶¶ 166, 178, 184–85; see Ex. 2006 ¶ 77. Thus, under Petitioner’s characterization, which is consistent with Costa, Costa’s second alternating stack is not formed on the third channel structure, but instead, “on the top surface of the joint level material layers” that surround the third channel structure. Because Petitioner has not explained how a second alternating stack on the surface of the joint material layers teaches a second alternating stack disposed on the third channel structure, Petitioner has not met its obviousness burden for limitation [11.E].” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,482,532 - Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Institution deniedPTAB · May 8, 2025 · IPR2025-00035 · APJ Michael T Cygan · IPR · Institution
The Board denied institution because Micron did not show a reasonable likelihood that claims 1–5, 8–13, or 15 were obvious over either asserted reference combination.
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) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), 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.” For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–5, 8–13, and 15 of the ’604 patent. Accordingly, we do not institute an inter partes review of the ’604 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree that Petitioner has not shown that a person having ordinary skill in the art at the critical time would have been motivated to replace the wordlines in the staircase region with dielectric material if the result is that one of the memory cell arrays becomes unavailable. Petitioner relies upon two usable arrays for its combination, emphasizing Thimmegowda as desirably enabling “a single conductive contact (e.g., 334a) to bidirectionally drive memory cells in the memory arrays on either side of the bridge”; i.e., both the left and right memory cell blocks. Pet. 26 (citing Ex. 1003 ¶¶ 81– 83; Ex. 1005, 9:49–51; 7:61–64), 41 (stating that in the combination, “there Similarly, Thimmegowda emphasizes that the purpose of its bridge is to connect first and second blocks, which desirably replaces prior connection methods that consumed silicon real estate and interfered with the goal of shrinking the sizes or increasing the densities of memory arrays. Ex. 1005, 1:11–25, 3:20–28; Ex. 1003 ¶¶ 79–80 (“allowing a single staircase to access both memory arrays”), 83 (“a stairstep electrically couples to a respective gate layer (wordline) in both of the blocks on the right and left”). Dr. Banerjee also underscores the importance of using both arrays, stating that the combination relies on “Thimmegowda’s bridge and array architecture (to drive two memory arrays with one wordline via)” as part of the reasonable expectation of success in such a combination Ex. 1003 ¶¶ 102, 113. Petitioner and Dr. Banerjee rely upon the motivation of reducing punch-through, because punch-through causes “yield loss”; i.e., loss of the usability of the wordlines connected by the punch-through. Ex. 1003 ¶ 103; Pet. 35. However, such advantage is premised on retaining both arrays, and neither Petitioner nor Dr. Banerjee explains how the advantages of reducing punch-through should be weighed against a disadvantage of losing access to one of the two arrays. Nor do Petitioner and Dr. Banerjee discuss how the advantages of metal gate replacement should be weighed against losing access to one of the two arrays.4 Patent Owner’s declarant, Dr. Giapis, attests to the undesirability of such a combination, in which one array 4 Additionally, the claims of the ’604 patent do not require a metal conductor portion; Petitioner does not explain why gate replacement to a metal conductor from a polysilicon conductor, described as used in Lee’s “memory device at large,” (Pet. 40) is a benefit associated with Lee’s finger teaching relevant to the claims. Ex. 2007 ¶¶ 50–54. We agree with Patent Owner that the advantage of preventing individual wordlines from becoming unusable because of punchthrough would be outweighed by the loss of half of the wordlines if one of the memory arrays were to become unavailable because its connections were removed.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III. DISCRETION UNDER 35 U.S.C. § 314(a) Patent Owner argues that the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) based on the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (Mar. 20, 2020) additional briefing. Papers 12, 14. Because we determine that Petitioner has not shown a reasonable likelihood of success on the merits of its obviousness contentions, we need not resolve whether Fintiv would require discretionary denial of the Petition.6” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“at the critical time “would have had a bachelor of science degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) 2 We apply AIA 35 U.S.C. § 103 to the ’604 patent because it was filed after, and never claimed the benefit of an effective filing date before, March 16, 2013. Ex. 1001, codes (22), (63); Pet. 6. 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. Pet. 89; Prelim. Resp. level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 34 (citing Ex. 1003 ¶¶ 40–43). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 10. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’604 patent and the prior art of record.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,450,604 - Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCRehearing deniedPTAB · Apr 29, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Cargill’s rehearing request, leaving institution denied for claims 1, 6–9, and 11–24 because the petition did not show a reason to combine the selected prior-art data without hindsight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon request for rehearing, we assess a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a “decision was based on an erroneous conclusion of law,” “clearly erroneous factual findings,” or “a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(c) (2020). 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, or a reply. Id. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. We have reviewed Petitioner’s Rehearing Request and carefully considered all the arguments presented. For the following reasons, we are not persuaded that we misapprehended or overlooked any arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As discussed in the Decision, “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s. We find no instance in the Petition in which “motivation” and “iodine value” are discussed together or linked in any way. The same can be said of Dr. Marangoni’s declaration. And, as noted in the Decision, it was not until the Preliminary Reply that Petitioner argued that specific data on fatty acid wt% used for the conversion calculations were selected to represent “knowledge generally available to one of ordinary skill in the art” due to similarity of the iodine value (“IV”) of the palm stearin (and soybean oil) disclosed in Petrauskaite. See Prelim. Reply 2–3. New evidence or argument in the Preliminary Reply that could have presented earlier is not permitted. On this record, we find Petitioner relies its Rehearing Request on arguments about a motivation to combine, stemming from the significance of iodine values, that were not raised in the Petition. Accordingly, Petitioner fails to support that the Decision misapprehended or overlooked arguments in the Petition about the significance of iodine values.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,645,473 - PTAB · Apr 25, 2025 · IPR2024-00793 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing requests, finding no misapprehension or overlooked matter in its denial of institution based on the failure to show the challenged claims obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s own formulations of the grounds based on either Seo or Nam in combination with Choi posit the alternative theories that either Seo or Nam alone disclose Limitation [1.D], or the combination of either Seo or Nam with Choi teaches this limitation. Although Petitioner did not invoke inherency by name for the theories based on Seo or Nam alone, this is, in effect, the nature of Petitioner’s assertions, namely, voltage differentials in Seo and Nam would inherently remove fast charges. For example, with respect to Seo, Petitioner argues that “Seo teaches having a higher voltage on unselected WLs (e.g., adjacent WLs to the selected WL) during the first time period,” and “the ’342 patent recognizes [that] this voltage differential removes fast charges.” Pet. 35–36 (citing Ex. 1001, 12:24–34; Ex. 1003 ¶¶ 129–131) (emphasis omitted); see also id. at 82–83 (relying on the ’342 patent to support the contention that Nam teaches Limitation [1.D] because Nam “teaches having a higher voltage on unselected WLs (including WLs adjacent to the selected WL) relative to the selected WL during the first time period” (citing Ex. 1001, 12:24–34) (emphasis omitted)). Petitioner does not argue that Seo and Nam expressly disclose removing fast charges or sufficiently explain how a POSITA would have understood that the procedures used in Seo and Nam would have removed fast charges; instead, Petitioner effectively argues that removing fast charges is the inherent result of applying the voltage differential. See, e.g., Pet. 36 (stating Seo would have been understood to disclose “performing its read operation on chargetrap memories, which removes fast charges”).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s reliance on Choi does not cure the deficiencies set forth above. Petitioner asserts that “Choi explains the primary mechanism and unwanted impact of fast-charge loss on verification,” which provides the motivation “to use Seo’s and Nam’s methods to achieve fast charge removal to improve verification.” Req. 7 n.1. But again, Petitioner does not sufficiently explain how a POSITA, looking at Choi, would have understood that either Seo’s or Nam’s techniques result in fast charge removal. In other words, even if Choi teaches the impact of fast-charge loss on verification, Petitioner fails to sufficiently show that a POSITA would have understood that either Seo or Nam teach or suggest fast charge removal. It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner’s reliance on Choi does not cure the deficiencies set forth above. Petitioner asserts that “Choi explains the primary mechanism and unwanted impact of fast-charge loss on verification,” which provides the motivation “to use Seo’s and Nam’s methods to achieve fast charge removal to improve verification.” Req. 7 n.1. But again, Petitioner does not sufficiently explain how a POSITA, looking at Choi, would have understood that either Seo’s or Nam’s techniques result in fast charge removal. In other words, even if Choi teaches the impact of fast-charge loss on verification, Petitioner fails to sufficiently show that a POSITA would have understood that either Seo or Nam teach or suggest fast charge removal.” slip op. at 7
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,600,342
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.