• Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Rehearing denied
  PTAB · Dec 19, 2025 · IPR2025-00434 · APJ Mitchell G Weatherly · IPR · Rehearing

  The Board denied Petitioner’s rehearing request, leaving institution denied because Shen and Soldano did not establish a reasonable likelihood of anticipating claims 1–7.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on petition, the Board will review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004). The party challenging the decision has the burden of showing the decision should be modified, and the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed” in its papers. 37 C.F.R. § 42.71(d).” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “II. ANALYSIS In our Decision, we concluded that Petitioner had failed to carry its burden of demonstrating a reasonable likelihood of prevailing that either Shen or Soldano anticipated claims 1–7. Dec. 18, 26. Petitioner argues that we should institute review for three reasons. First, Petitioner argues that we abused our discretion by (a) “refusing” to interpret the scope of the claimed” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Owner’s interpretation of “carrier” as meaning “one or more components for supporting ROSA components such as an AWG.” Dec. 9 (quoting Pet. 11). For our analysis of Petitioner’s challenges, we referred to this interpretation of “carrier” as Petitioner’s second alternative construction. Id. We also noted that Petitioner appeared to dispute Patent Owner’s interpretation when it argued that “carrier” should mean “a ceramic or silicon substrate.” Id. (quoting Pet. 10). We referred to this interpretation of “carrier” as the first alternative construction. Id. Rather than resolve this apparent dispute about the meaning of “carrier,” we found that both of Petitioner’s anticipation challenges failed under both interpretations of “carrier.” Id. at 10–26. Because we found that Petitioner had failed to carry its burden regardless of which interpretation of “carrier” applied, we found it unnecessary to resolve the dispute over that interpretation. Id. at 9–10. For the reasons expressed in Parts II.B–C below, we maintain our conclusion that Petitioner has failed to demonstrate a reasonable likelihood of proving that either Shen or Soldano anticipates any claim under either interpretation of “carrier.” Accordingly, Petitioner fails to demonstrate an abuse of discretion in our alleged “refusal” to interpret “carrier.”” slip op. at 3

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Reh’g Req. 14. We cannot weigh Petitioner’s arguments based on its assertions about “caselaw” because Petitioner cited no cases to support its arguments. See id. Nevertheless, we infer that Petitioner intends its statements of “caselaw” to refer to the requirements to make out a case for anticipation. If so, Petitioner demonstrably miscasts what appear to be the legal principles for proving anticipation. As stated in our Decision: “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).” Dec. 7. Making a showing that a prior art reference anticipates a patent claim thus necessarily requires proof that a single reference “expressly or inherently” describes every element of that claim and with all elements being arranged in the reference as they are in the” slip op. at 7

  Claim construction§ 102 anticipation
  Patents in suitUS 10,379,301
• Shenzhen Tuozhu Technology Co. Ltd. v. Stratasys, Inc.Institution denied
  PTAB · Oct 6, 2025 · IPR2025-00585 · APJ Lilan Ren · IPR · Institution

  The Board denied institution on claims 1–6, 10–19 because claim 1’s scope is ambiguous and the petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Institution of an inter partes review requires that “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the scope of claim 1 is ambiguous and that there is not a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim, and we deny inter partes review.1” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “distinguishes and contrasts build material property from operational parameters. The diagnostic test passage therefore only describes a diagnostic test of the build material property but does not describe a subsequent diagnostic test to assess whether an operational parameter is suitable for the printer. Based solely on the diagnostic test passage and the prosecution history, a possible interpretation may be that the operational parameter determination in claim element 1b encompasses the diagnostic testing in claim element 1c. That is, “performing a diagnostic test to determine whether the operational parameter is suitable for the three-dimensional printer” in claim element 1c is subsumed as part of “determining an operational parameter of a fabrication process using the three-dimensional printer based upon the data, the operational parameter including at least one of a build platform temperature, a build volume temperature, an infill requirement, a rafting requirement, a support structure requirement, and a cooling requirement” in claim element 1b.” slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther

    “benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008); see also Research Corps. Techs. v. Microsoft Corp., 627 F.3d 859, 871–72 (Fed. Cir. 2010) (holding that claims of the later-filed application, which were not limited to a “blue noise mask,” were “not entitled to claim the benefit of their parent applications’ filing dates”); ICU Med., Inc. v. Alaris Med. Sys., 558 F.3d 1368, 1377–78 (Fed. Cir. 2009) (holding that “spikeless” claims “added years later during prosecution” were not supported by the specification which “describe[d] only medical valves with spikes”); Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158–60 (Fed. Cir. 1998) (holding the generic shaped cup claims of the later-filed child application were not entitled to the filing date of the parent application that “disclosed only a trapezoidal cup and nothing more”). “To satisfy the written description requirement the disclosure of the prior application must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, [the inventor] was in possession of the invention.” PowerOasis, 522 F.3d at 1306 (emphasis omitted; alteration in original). The sufficiency of written description support is based on “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art in the field in the relevant time frame would have had “(1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶ 20). Petitioner also contends that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. (citing the same). Patent Owner contends that an ordinarily skilled artisan “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Electrical Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 12. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it appears unopposed and consistent with the disclosures of the ’464 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  Claim construction§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,167,464
• Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Institution denied
  PTAB · Aug 26, 2025 · IPR2025-00436 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Mizobuchi or Akashi anticipates any of claims 1–17.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one challenged claim.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “All independent claims recite “a light engine driving circuit disposed on the substrate.” Ex. 1001, 9:59 (claim 1), 10:64 (claim 12), 12:7 (claim 15). Petitioner contends that “Mizobuchi discloses a light engine driving circuit disposed on the substrate that includes a clock data recovery (“CDR”) circuit and a power supply circuit.” See Pet. 19 (citing Ex. 1006, 3:57–4:18, 12:27–41, Figs. 2, 3A; Ex. 1003 ¶ 76 while addressing limitation 1d); see also id. at 26–28 (addressing claims 12 and 15 by cross-referencing showing for claim 1). Petitioner identifies the driving circuit on Mizobuchi’s “first circuit board” 2 in the annotated version of Mizobuchi’s Figure 2, reproduced below. See Pet. 19.” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner contends that the Board may find it necessary to interpret “feedthrough device,” “interconnect device,” and “opposing arrangement.” Pet. 8–11. Patent Owner responds to Petitioner’s proposed interpretations of these terms, but contends that the Board need not interpret them to determine whether to institute review. Prelim. Resp. 17–18. For reasons that become apparent below, we agree with Patent Owner and do not expressly construe these terms. B. Legal Standards” slip op. at 4

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 10,313,024
• Cambridge Industries USA, Inc. v. Applied Optoelectronics, Inc.Institution denied
  PTAB · Jul 29, 2025 · IPR2025-00434 · APJ Monica S Ullagaddi · IPR · Institution

  Institution was denied for claims 1–7 because the Petition did not show a reasonable likelihood that either Shen or Soldano anticipates any challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “The standard for institution is set forth in 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition and the 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 (2019); see also 37 C.F.R § 42.4(a) (2019) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the parties’ contentions and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one challenged claim of the ’301 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). We analyze” slip op. at 7

  Claim construction§ 102 anticipation
  Patents in suitUS 10,379,301
• Head Sport GmbH v. Vermont Safety Developments LLCInstitution denied
  PTAB · Jan 15, 2025 · IPR2024-01099 · APJ Barry L Grossman · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show that the prior art met the claims under the Board’s construction of “release logic.”

  RulingsInstitution decision

  • Other 314aNot reached

    “Thus, based in part on the “relatively minimal proceedings” in the District Court, and the “[t]he possibility of significant simplification” for the District Court from our claim construction of the term “release logic,” we decline Patent Owner’s invitation to discretionarily deny the petition. Moreover, we need not address Patent Owner’s contentions concerning discretionary denial because, as discussed below, Petitioner has not established a reasonable likelihood of prevailing on the merits in demonstrating unpatentability of any challenged claim of the ’953 patent. See MillerKnoll, Inc. v. Aaron DeJule, IPR2023-01428, Paper 8, 10 (PTAB March 22, 2024).” slip op. at 20

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We now turn to the merits of Petitioner’s asserted Grounds of unpatentability. Analysis of Claims We focus our analysis on the term “release logic,” which appears in all the challenged claims. As we explained above, we determined that the term “release logic” along with its recited functions should be construed under Section 112 ¶ 6 to cover “corresponding structure, material, or acts described in the specification and equivalents thereof,” that perform the recited functions. Petitioner did not identify how the asserted prior art described those structures or their equivalents. Instead, as discussed above, Petitioner relied on Patent Owner’s preliminary construction in the District Court, which Patent Owner identified in wholly functional terms as a “specific sequence of actions.” Pet. 6 (citing Ex. 1010; Ex. 1002 ¶¶ 52–53); Prelim. CC Reply 1 (citing Ex. 1010, 5). Thus, Petitioner’s analysis fails to address how the prior art meets the limitations set forth in the claims as we have interpreted those claims. Accordingly, we find that Petitioner has failed to meet its burden to establish a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition. Thus we deny institution of an inter partes review. See Samsung Elecs. Am., Inc. v. Cobblestone Wireless, LLC, IPR2024-00319, Paper 16, slip op. 16–23 (PTAB Jun. 24, 2024) (holding that because Petitioner’s obviousness showing was based on an incorrect claim construction, Petitioner did not demonstrate a reasonable likelihood that a claim limitation was disclosed by, or would have been obvious over, the cited reference).” slip op. at 49

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner

    “be persuasive, we conclude that an ordinarily skilled artisan would not have understood “release logic” to refer to, or to have a definite meaning as the name for structure. Accordingly, we find that any presumption that the claims at issue do not invoke § 112, ¶ 6 is overcome, and we conclude that “release logic” introduces claim language that is properly interpreted under § 112, ¶ 6. Dr. Hull’s testimony in the District Court appears to address only the embodiment disclosed in Figures 9–11 of the ’953 patent. He did not opine on the other embodiments disclosed in the patent, such as the embodiment in Figures 22–24 disclosing electronic third-quadrant release-logic binding system 2204. However, his testimony that the words of the claim would not be understood by an ordinarily skilled artisan to have definite meaning as the name for structure remains persuasive.” slip op. at 48

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “sophistication of the technology; and (5) educational level of active workers in the field.” Id. ¶ 30. Dr. Hull fails to state whether these factors were relied upon in forming his opinion, and if so, he also fails to state the underlying facts or data relating to these factors on which the opinion is based. There is no evidence to support why an “advanced degree” in mechanical engineering and five years of relevant experience is required. His opinion is supported only by his statement that he is “familiar with the technology at issue here and the state of the art at the time the application leading to the ’953 patent was filed.” Ex. 1002 ¶ 31. Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight. 37 C.F.R. § 42.65(a). Here, based on Dr. Hull’s extensive experience, we give his testimony some, but little, weight. Patent Owner states that “for purposes of this Preliminary Response only, VSD does not now dispute the definition of the POSITA as set forth by Dr. Hull.” Prelim. Resp. 7. We note that Patent Owner’s position is based on Dr. Hull’s full testimony, not the excerpt asserted by Petitioner. Accordingly, for purposes of this Decision, and based on the limited record before us, we determine, based on Dr. Hull’s testimony, the cited prior art, and Patent Owner’s qualified agreement with Dr. Hull’s testimony, that a person of ordinary skill in the relevant technology would have had an advanced degree in mechanical engineering or a related discipline and five years of experience in either ski binding design, manufacture, or testing; research concerning ski bindings and related equipment; or the development of standards concerning ski bindings or related equipment. This level of skill is approximate, and more experience would compensate for less formal education, and vice versa.” slip op. at 25

  Claim constructionDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,523,953
• Biofrontera Inc. / Biofrontera Bioscience GmbH et al. v. Sun Pharmaceutical Industries, Inc.Institution denied
  PTAB · Nov 12, 2024 · IPR2024-00874 · APJ Erica A Franklin · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, failing to show Bansal's claimed light intensity arrangement.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An obviousness determination requires finding both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.’” CRFD Research, Inc. v. Matal, 876 F.3d 1330, 1340 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367– 68 (Fed. Cir. 2016)). Obviousness grounds must be supported with “articulated reasoning with some rational underpinning” and not by “mere conclusory statements.” See KSR Int’l Co., 550 U.S at 418. slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “agree with Patent Owner that Petitioner has not sufficiently shown for institution that Bansal teaches or suggests arranging light sources “such that a higher intensity of light is emitted proximate the second edges compared to the intensity of light emitted not proximate the second edges,” as required by the challenged claims. Instead, Petitioner demonstrates how Bansal describes varying the density of light source distribution throughout the array to provide a higher density of light in the entire peripheral area of the array, which includes the areas proximal to both the first and second edges, as compared to the central area of the array. See Pet. 36–37; Ex. 1005 ¶ 25. In this regard, Petitioner relies on Bansal’s Figure 9b, asserting that it “shows one embodiment where more light sources are placed near the edges of the panel compared to the light sources in the center.” Pet. 36–37. The comparison of Bansal’s light density between the entire periphery and the central area of the array is insufficient. What is missing from Petitioner’s argument and discussion of Bansal is how Bansal teaches or suggests a configuration that provides a higher density of light proximate to the second shorter edges of the periphery in comparison to the remaining areas of the array, which includes the first longer edges of the periphery. Without that discussion, we find that Petitioner has not shown sufficient for institution that Bansal is persuasively relied upon for the light source arrangement limitation of the challenged claims. likelihood of prevailing in its obviousness challenge of independent claims 1, 5, 16, 20, or 21, or dependent claims 2, 4, 6–8, and 17–19 over Larsen, Bansal, and Jones.” slip op. at 17

  • Skill levelOther

    “would have had at least a Bachelor of Science in electrical engineering, physics, biomedical engineering, computer engineering, chemical engineering, material science, or a related scientific or engineering field, and at least one year of work or research experience in optics, optoelectronics, radiometry, photometry, photodynamic diagnosis (PD), photodynamic therapy (PDT), phototherapy (PT), or a related field. Pet. 8. Petitioner asserts that, alternatively, a “POSITA in the relevant time frame would have had at least four years of industry or academic experience in optics, optoelectronics, radiometry, photometry, PD, PDT, PT, or a related field.” Id. (citing Ex. 1003 ¶ 37). According to Patent Owner, a person of ordinary skill in the art at the time the application for the ’028 patent was filed, “would have had a M.D. and/or a Ph.D. in an electrical engineering, physics, optical sciences, optical engineering, or a related scientific or engineering field, and at least one to two years of work or research experience in optical engineering, optics, optoelectronics, phototherapy (‘PT’), PDT, or a related field.” Prelim. Resp. 16. Patent Owner asserts that, “[a]lternatively, a POSITA could have a Bachelor’s degree in one of the above areas and at least three to four years of work or research experience in that area.” Id. (citing Ex. 2001 ¶¶ 30–31). We note that the parties’ proposed definitions are largely similar. To the extent that the proposed definitions differ, we do not need to resolve those differences as our findings and conclusion in this Decision would be the same under any of the proposed definitions.” slip op. at 9

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,697,028
• Mylan Pharmaceuticals Inc. v. Novo Nordisk A/SInstitution denied
  PTAB · Oct 2, 2023 · IPR2023-00723 · APJ Robert A Pollock · IPR · Institution

  The Board denied institution on claims 1–6 because Petitioner 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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence (1966). In analyzing the obviousness of a combination of prior art elements, it can be important to identify a reason that would have prompted one of skill in the art “to combine . . . known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the specific subject matter of a challenged claim is not necessary to establish obviousness. Id. Rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. Accordingly, a party that petitions the Board for a determination of unpatentability based on obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal quotations omitted). slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); see also Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983). In addressing the level of ordinary skill in the art, Petitioner contends that “[t]he claimed subject matter falls within the medicinal chemical and pharmacological arts and encompasses the skills, education, and expertise of a team of individuals working together to develop and formulate GLP-1 analogs to treat patients having type-2 diabetes or related conditions.” Pet. 7. The persons of ordinary skill in the art (“POSA”) making up the team would have an M.D., Pharm.D., or doctoral degree(s) in chemistry, biochemistry, pharmaceutics, pharmaceutical sciences, chemical engineering, biochemical engineering or related fields, peptides or proteins, and experience with the development, design, manufacture, formulation, or administration of therapeutic peptides or proteins, and the literature concerning protein or peptide formulation and design or diabetes treatments. Id. at 7–8 (citing Ex. 1020 ¶ 27; Ex. 1022 ¶ 27; Ex. 1024 ¶ 21; Ex. 1026 ¶¶ 25–26). 13 Patent Owner does not offer a different level of ordinary skill in the art. See generally Prelim. Resp. On the current record, and for the purposes of this decision, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’343 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C. Claim Construction” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Moreover, “the specification ‘is always highly relevant to the claim construction analysis. Usually it is dispositive; it is the single best guide to the meaning of a disputed term.’” In re Abbott 13 We need not consider Petitioner’s similar alternative definitions. See id. at 8–9. v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)). The parties contend that no claim term requires construction. Pet. 13. Prelim. Resp. 15. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. v. Matal, 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))). D. Overview of Asserted References” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “On the record before us, however, Dr. Flatt’s assessment of the relative benefit one of ordinary skill in the art would have accorded the higher Ki of mono-substituted compound 3 as compared to the “much longer plasma half-life” of Dong’s bi-substituted compounds is at odds with Dong’s selection of bi-substituted compound 4 for clinical trials. See Ex. 1013, 670– 671 (Table 1). We are also skeptical of Dr. Flatt’s assertion that one of ordinary skill in the art would have recognized that Dong’s substitution of Aib for alanine at position 8 “would complement and work synergistically with liraglutide’s [other] properties,” including the fatty acylation of Lys26. See Ex. 1020 ¶ 181. In this respect, Patent Owner notes that, unlike liraglutide, Dong’s GLP-1 analogs were not acylated, whereas Knudsen 2001 counseled against N-terminal modifications in the context of acylation. Prelim. Resp. 28–30, 46 (citing Ex. 1011, 680–681). In addressing such combinations, Knudsen 2001 states, for example, that “Desamino His7 represents one of the more potent suggestions to a modification giving metabolic stability (81 ). Nevertheless, as seen when comparing 19 (687 pM) to 5 [liraglutide] (68 pM), considerably more potent compounds could be obtained by not modifying the N-terminus when a combination with acylation was desired.” Id. at 680. As such, we are unpersuaded on the record before us that one of ordinary skill in the art would have had a reasonable expectation that the Aib8 modification would be beneficial or otherwise “complement and work synergistically with” the acylated Lys26 of liraglutide or semaglutide. See Ex. 1020 ¶ 181.” slip op. at 30

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,129,343
• Mylan Pharmaceuticals Inc. v. Novo Nordisk A/SInstitution denied
  PTAB · Oct 2, 2023 · IPR2023-00722 · APJ Robert A Pollock · IPR · Institution

  Institution was denied for claims 1, 2, 4–11, 13, and 15 because Petitioner did not show a reasonable likelihood of proving them obvious under any of the three grounds.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In addressing the level of ordinary skill in the art, Petitioner contends that “[t]he claimed subject matter falls within the medicinal chemical and pharmacological arts and encompasses the skills, education, and expertise of a team of individuals working together to develop and formulate GLP-1 analogs to treat patients having type-2 diabetes or related conditions.” Pet. 7. The persons of ordinary skill in the art (“POSA”) making up the team would have an M.D., Pharm.D., or doctoral degree(s) in chemistry, biochemistry, pharmaceutics, pharmaceutical sciences, chemical engineering, biochemical engineering or related fields, with at least two years of experience in developing therapeutic peptides or proteins, and experience with the development, design, manufacture, formulation, or administration of therapeutic peptides or proteins, and the literature concerning protein or peptide formulation and design or diabetes treatments. ¶ 24).14 Patent Owner does not offer a different level of ordinary skill in the art. See generally Prelim. Resp. On the current record, and for the purposes of this decision, we accept Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’122 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties contend that no claim term requires construction. Pet. 16. Prelim. Resp. 16. Having considered the record, we determine that no express claim construction of any claim term is necessary to reach our 14 We need not consider Petitioner’s similar, but alternative, definitions. See id. at 8–9. v. Matal, 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 15

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “For the reasons provided below, we determine Petitioner has not satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has not demonstrated a reasonable likelihood that at least one claim of the ’122 patent is unpatentable, we do not institute an inter partes review on the Grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yesor-no institution choice respecting a petition, embracing all challenges included in the petition”); see also Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018).1” slip op. at 2

  • BurdenNot shown unpatentable

    “Considering the record before us, Petitioner has not shown sufficiently that one of ordinary skill in the art would be motivated to make the required modification with a reasonable expectation of success. (4) Hindsight and Reasonable Expectation of Success One of ordinary skill in the art seeking to modify liraglutide would need undertake at least four discrete steps to arrive at semaglutide—some of which entail multiple options and decision points (e.g., the selection and placement of di-AEEA, and whether to replace, or add to, the existing γ-glu linker). As discussed above, we find Petitioner’s justification for these individual steps problematic. Taken as whole, and considering the vast number of modifications suggested in the art—and indeed, the large number of amino acids suggested as cites for modification—Petitioner has failed to meet its burden of demonstrating why a skilled artisan would have been motivated to make all of the identified substitutions and no others. See e.g., Ex. 1010, 4130 (Figure 3) (identifying amino acids available for derivatization (Ser18, Gln23, Lys26, Glu27, Lys34, and Arg36) or modification (Ala8)); Ex. 1011, 680–681 (identifying desamino His7 as “one of the more potent suggestions to a modification giving metabolic stability,”); Ex. 1012 at, e.g., 9:21-19:59; 192:30–60 (Table 1), 193:35–46 (disclosing numerous GLP-1 analogs, including those with greater half-lives or potency than liraglutide, and teaching that each could be further modified, including with amino acid substitutions and/or acylation at multiple positions, numerous the fatty and amino acids); Ex. 1013, 670–671 (disclosing that GLP-1 analogs bearing modifications at both positions 8 and 35 maintain efficacy but “have much longer plasma half-life than mono-substituted compounds”).” slip op. at 43

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 8,536,122
• Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCInstitution denied
  PTAB · Apr 12, 2023 · IPR2022-01561 · APJ Neil T Powell · IPR · Institution

  The Board denied institution on claims 1–14 because the petition did not show a reasonable likelihood of success on the asserted obviousness grounds, and institution would be inefficient.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “In claim 1, “server” first appears in limitation 1b’s recitation of “a server.” Ex. 1001, 21:27–28. Every subsequent mention of “server” in claim 1 recites “the server.” Id. at 21:37, 21:40, 21:48, 21:51, 21:53, 21:60. Thus, grammatically, each time claim 1 recites “the server,” it refers back to the same “server” as in all previous recitations. Accordingly, claim 1’s plain meaning refers to the same server each and every time it recites “server.” See Salazar v. AT&T Mobility LLC, --- F.4th ---, 2023 WL 2778774 *3–4 (Fed. Cir. Apr. 5, 2023) (explaining claim language reciting element with definite article refers to same element previously recited) (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008); Harari v. Lee, 655 F.3d 1331, 1341 (Fed. Cir. 2011)). Neither party argues that any reason exists to construe claim 1’s recitations of “a server” and “the server” differently from their plain meanings. See generally Pet.; Prelim. Resp. We construe every one of claim 1’s recitations of “server” as referring to the same server (the “same-server requirement”).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Weighing the parties’ arguments and evidence, we find Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1 as allegedly obvious over Fletchall and Xavier. As discussed above in Section II.B, we construe claim 1’s recitations of “the server” as all limited to the same server. Thus, as Petitioner contemplated, “the server” recited in limitation 1i is “limited to the same server as in antecedent [limitations 1e–1f].” Pet. 30. Petitioner inadequately supports its position that “Fletchall teaches that also.” Id. at 30–31. Petitioner’s and Dr. Shamos’s explanations do not persuasively support their position that Fletchall teaches product database (121) and payment server (130) are the same server.4 Pet. 30–31; Ex. 1002 ¶¶ 210–212. For example, the observation that product database (121) and payment server (130) are part of system (100) and can communicate with one another via computer network (120) does not make product database (121) and payment server (130) part of the same server. Pet. 30–31; Ex. 1002 ¶¶ 210–212; Prelim. Resp. 24. As Patent Owner 4 Also, to the extent Petitioner and Dr. Shamos have some other basis for contending that Fletchall teaches using the same server in performing the actions recited in limitations 1f and 1i, they do not support that view with sufficiently persuasive evidence or explanation. argues, following Petitioner’s reasoning would lead to the untenable conclusion that any two components of system (100) that can communicate with one another via computer network (120), including mobile device (104) and product database (121), would be part of the same server. Pet. 30–31; Prelim. Resp. 24–25. Accordingly, we find Petitioner’s and Dr. Shamos’s contentions unpersuasive. We also find unavailing Petitioner’s and Dr. Shamos’s observation that “Fletchall teaches that the product database 121 can be hosted on a merchant server . . . and be part of the common system 100 that includes payment server 130.” Pet. 31; Ex. 1002 ¶ 211. Hosting product database (121) on a merchant server does not make product database (121) and payment server (130) part of the same server. Nor does including product database (121) and payment server (130) within system (100).” slip op. at 23

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Weighing the parties’ arguments and evidence, we find Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1 as allegedly obvious over Fletchall and Xavier. As discussed above in Section II.B, we construe claim 1’s recitations of “the server” as all limited to the same server. Thus, as Petitioner contemplated, “the server” recited in limitation 1i is “limited to the same server as in antecedent [limitations 1e–1f].” Pet. 30. Petitioner inadequately supports its position that “Fletchall teaches that also.” Id. at 30–31. Petitioner’s and Dr. Shamos’s explanations do not persuasively support their position that Fletchall teaches product database (121) and payment server (130) are the same server.4 Pet. 30–31; Ex. 1002 ¶¶ 210–212. For example, the observation that product database (121) and payment server (130) are part of system (100) and can communicate with one another via computer network (120) does not make product database (121) and payment server (130) part of the same server. Pet. 30–31; Ex. 1002 ¶¶ 210–212; Prelim. Resp. 24. As Patent Owner 4 Also, to the extent Petitioner and Dr. Shamos have some other basis for contending that Fletchall teaches using the same server in performing the actions recited in limitations 1f and 1i, they do not support that view with sufficiently persuasive evidence or explanation. argues, following Petitioner’s reasoning would lead to the untenable conclusion that any two components of system (100) that can communicate with one another via computer network (120), including mobile device (104) and product database (121), would be part of the same server. Pet. 30–31; Prelim. Resp. 24–25. Accordingly, we find Petitioner’s and Dr. Shamos’s contentions unpersuasive. We also find unavailing Petitioner’s and Dr. Shamos’s observation that “Fletchall teaches that the product database 121 can be hosted on a merchant server . . . and be part of the common system 100 that includes payment server 130.” Pet. 31; Ex. 1002 ¶ 211. Hosting product database (121) on a merchant server does not make product database (121) and payment server (130) part of the same server. Nor does including product database (121) and payment server (130) within system (100).” slip op. at 23

  • Other 314aInstitution denied discretionary otherInstitution denied

    “functions (VTSAs) of the server 111, the server 130, and merchant server hosting the product database 121 into the same server.” Pet. 41. As explained above in Sections II.C.3.a–c, Petitioner fails to demonstrate a reasonable likelihood of establishing unpatentability of either of challenged independent claims 1 and 10 or any of challenged dependent claims 2–4, 6, 8, 9, and 11–14. Considering this, to the extent Petitioner’s arguments and evidence may demonstrate a reasonable likelihood of prevailing on its challenge of dependent claim 5 as allegedly obvious over Fletchall and Xavier, we do not find that instituting inter partes review would use the Board’s or the parties’ resources efficiently. See 35 U.S.C. 316(b).” slip op. at 27

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,803,435
• Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCInstitution denied
  PTAB · Apr 12, 2023 · IPR2022-01471 · APJ Mitchell G Weatherly · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–6 were unpatentable as obvious over either asserted combination.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “timely filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 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). Based on our review of the record, we conclude that Petitioner is not reasonably likely to prevail with respect to at least one of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “demonstrate that Watanabe describes the step of “importing, by the second application, the order from the state container.” Prelim. Resp. 22–35. Petitioner identifies Watanabe’s nonvolatile memory 83, including various “areas” 87–89, as the claimed “state container” from which the second application imports an order including item information and a unique identifier. Pet. 15, 23–24 (citing Ex. 1002 ¶¶ 143, 170–175). For the importing step itself, Petitioner contends that Watanabe describes retrieving “purchased merchandise information from the application area” (i.e., the claimed state container) “as shown in annotated Figure 29,” which we reproduce below.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “not disclose this step. Pet. 63. Petitioner appears to identify Watanabe as describing importing the order from the state container using a unique identifier. Id. (citing Ex. 1005 ¶¶ 203, 204; Ex. 1002 ¶¶ 397, 398). First, Petitioner fails to account for its reliance on O’Hagan as describing the “state container” and “first application” and fails to explain how and why an ordinarily skilled artisan would combine teachings of O’Hagan and Watanabe to perform the claimed second importing step. Second, Petitioner unpersuasively argues that: “Having considered Watanabe, a POSITA would have been motivated to configure the “running total program,” like that disclosed by the O’Hagan-Giordano combination, to import an order from a state container, like that disclosed by Watanabe, to allow the customer complete a transaction for an item at the POS terminal.” Pet. 64 (citing Ex. 1005 ¶¶ 204, 216, 217; Ex. 1002 ¶ 401). Patent Owner argues, and we agree, that O’Hagan’s running total program plays no role in completing a transaction at a point-of-sale terminal and thus an ordinarily skilled artisan would have no reason modify that program to use Watanabe’s method of importing an order from a state container. Prelim. Resp. 54–56 (citing Ex. 1008 ¶¶ 31, 98, 99, 108–110, Fig. 15). For all these reasons, we find that Petitioner has failed to demonstrate a reasonable likelihood of establishing that the combined teachings of O’Hagan, Watanabe, and Giordano render claim 1 unpatentable as obvious. Because claims 2–6 depend ultimately from claim 1, Petitioner also fails to demonstrate a reasonable likelihood of establishing that claims 2–6 are obvious. F. Exercise of Discretion Under 35 U.S.C. § 325(d)” slip op. at 16

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “Because we have determined that Petitioner fails to demonstrate a reasonable likelihood of establishing that any claim of the ’133 patent is unpatentable, we need not reach Patent Owner’s argument that we should exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. Accordingly, we express no opinion on the issue.” slip op. at 17

  § 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 10,121,133

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.