- PTAB · Oct 14, 2025 · IPR2025-00747 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Buttiker was not prior art, so Petitioner did not show a reasonable likelihood that claims 5, 6, 9, or 10 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“establish a reasonable likelihood of proving that any of the challenged claims would have been obvious because all of the challenges rely on Buttiker for specific limitations, and Buttiker is not prior art to the challenged claims of the ’271 patent. Accordingly, Petitioner has not shown” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“When claiming the benefit of priority to a provisional application, the provisional application must provide written description support for the claims in question. See 35 U.S.C. § 119(e) (referring to “an invention 10 Petitioner does not dispute Patent Owner’s arguments on this point in its Preliminary Reply. See Prelim. Reply 2–4. disclosed in the manner provided by section 112(a)”); see also New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (“[T]o be afforded the priority date of the provisional application, . . . the written description of the provisional must adequately support the claims of the non-provisional application.”). Patent Owner argues that the ’688 provisional application supports claims 5, 6, 9, and 10 of the ’271 patent because they describe the method of controlling the pumps and thermal modulators to achieve selected temperatures upstream of the brewing chamber and creating a resulting solvent used to infuse a solute, creating an infused beverage. See Prelim. Sur-reply 3–4 (citing Prelim. Resp. 16–18, 35–37; Ex. 1012, 12–15). Patent Owner also refers to Figure 2 of the ’688 provisional application, which discloses the device that performs the method described in the application. See id. at 4–5. With one exception that we address immediately below, Petitioner does not contest these assertions or argue that the ’688 provisional application fails to disclose the subject matter claimed in claims 5, 6, 9, and 10 of the ’271 patent. See Pet. 18–20; Prelim. Reply 2–4. Based on our review of the record, the ’688 provisional application provides adequate written description support for the challenged claims of the ’271 patent.11 See Ex. 1012, 11–15 (describing Figure 2 of the ’688 provisional application and related methods), Fig. 2.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference not prior artPrinted publication establishedDecided for patent owner
“only qualify as prior art under section 102(a)(1) because section 102(a)(2) does not apply to purely foreign patent publications like Buttiker. See 35 U.S.C. § 102(a)(2) (describing scope of prior art as including “a patent issued under section 151” (addressing issued U.S. patents) and “an application for patent published or deemed published under section 122(b)” (addressing published U.S. applications)); MPEP § 2152 (“The documents upon which a prior art rejection under 35 U.S.C. 102(a)(2) may be based are U.S. patent documents only.”).10 Under section 102(a)(1), Buttiker may be prior art if it “was patented [or] described in a printed publication . . . before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1). Buttiker published after the ’688 provisional application was filed, but before the other applications to which the ’271 patent claims priority were filed. See Ex. 1010, 1; Ex. 1001, code (60). Accordingly, whether the ’271 patent claims at issue here have adequate support in the ’688 provisional application determines whether Buttiker is prior art to those claims because Buttiker’s publication predates later applications to which the ’271 patent claims priority.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“When claiming the benefit of priority to a provisional application, the provisional application must provide written description support for the claims in question. See 35 U.S.C. § 119(e) (referring to “an invention 10 Petitioner does not dispute Patent Owner’s arguments on this point in its Preliminary Reply. See Prelim. Reply 2–4. disclosed in the manner provided by section 112(a)”); see also New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (“[T]o be afforded the priority date of the provisional application, . . . the written description of the provisional must adequately support the claims of the non-provisional application.”). Patent Owner argues that the ’688 provisional application supports claims 5, 6, 9, and 10 of the ’271 patent because they describe the method of controlling the pumps and thermal modulators to achieve selected temperatures upstream of the brewing chamber and creating a resulting solvent used to infuse a solute, creating an infused beverage. See Prelim. Sur-reply 3–4 (citing Prelim. Resp. 16–18, 35–37; Ex. 1012, 12–15). Patent Owner also refers to Figure 2 of the ’688 provisional application, which discloses the device that performs the method described in the application. See id. at 4–5. With one exception that we address immediately below, Petitioner does not contest these assertions or argue that the ’688 provisional application fails to disclose the subject matter claimed in claims 5, 6, 9, and 10 of the ’271 patent. See Pet. 18–20; Prelim. Reply 2–4. Based on our review of the record, the ’688 provisional application provides adequate written description support for the challenged claims of the ’271 patent.11 See Ex. 1012, 11–15 (describing Figure 2 of the ’688 provisional application and related methods), Fig. 2.” slip op. at 12
§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 11,957,271 - PTAB · May 21, 2025 · IPR2025-00193 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, or 30 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’030 patent is unpatentable.” slip op. at 2
- BurdenNot shown unpatentable
“What is missing from Petitioner’s stated motivation for modifying the array of Cantor is a reason why a POSA would seek to correlate the identification sequence with a location on the array at all. Prelim. Resp. 72. Indeed, the location of a bead on the substrate is not pertinent to the analysis disclosed in Cantor. Ex. 2002 ¶ 172; see also id. at ¶ 31 (Cantor “does not relate to the [spatial] analysis of tissue samples . . . .”). “[O]bviousness 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). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, and 30 would have been obvious over Cantor.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not argue that any claim term requires construction. Pet. 22–23. Likewise, Patent Owner takes the position that “no claim terms 2 Person of ordinary skill in the art. require explicit construction” for purposes of determining whether to institute inter partes review. Prelim. Resp. 19. Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“What is missing from Petitioner’s stated motivation for modifying the array of Cantor is a reason why a POSA would seek to correlate the identification sequence with a location on the array at all. Prelim. Resp. 72. Indeed, the location of a bead on the substrate is not pertinent to the analysis disclosed in Cantor. Ex. 2002 ¶ 172; see also id. at ¶ 31 (Cantor “does not relate to the [spatial] analysis of tissue samples . . . .”). “[O]bviousness 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). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, and 30 would have been obvious over Cantor.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,761,030 - PTAB · May 21, 2025 · IPR2025-00192 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, 17, 20, 23, 28, or 29 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’138 patent is unpatentable.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“[O]bviousness 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). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 5, 17, 20, 23, 28, and 29 would have been obvious over Cantor. slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claims 1 and 17 are supported by the ’124 provisional and/or whether the ’138 patent’s priority chain is intact. Pet. 52–60. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find (1) that the ’124 Provisional provides adequate written description support for each of the challenged claim elements; (2) that the ’138 patent’s priority chain is intact; and (3) that the ’138 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims.” slip op. at 28
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claims 1 and 17 are supported by the ’124 provisional and/or whether the ’138 patent’s priority chain is intact. Pet. 52–60. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find (1) that the ’124 Provisional provides adequate written description support for each of the challenged claim elements; (2) that the ’138 patent’s priority chain is intact; and (3) that the ’138 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,549,138 - SML Intelligent Inventory Solutions LLC / SML (USA) Inc. v. Adasa Inc.Institution deniedPTAB · May 20, 2025 · IPR2025-00125 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution 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
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that at least one challenged claim is unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claims 1–20 of the ’967 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner adopts the following definition of a person of ordinarily skill in the art (hereafter, sometimes “POSITA”) of the ’967 patent proposed by Patent Owner in the Avery Dennison litigation: [A]t least a bachelor’s degree in electrical engineering, computer science, or computer engineering, or a related discipline, and at least five years of experience which would consist of, A, designing, developing, evaluating and/or using RFID or other AIDC [automatic identification and data capture] technologies in inventory management, unique object identification, and/or security; or B, studying and conducting research related to RFID technologies and using RFID and other AIDC technologies in inventory management, unique object identification, and/or security. Pet. 6 (citing Ex. 1030, 707:3–13). Patent Owner does not offer a definition of an ordinarily skilled artisan of the ’967 patent at this time. See generally Prelim. Resp. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references and the problems addressed in the ’967 patent.” slip op. at 17
- Prior constructionPrior construction adoptedDecided for patent owner
“Petitioner proposes the following claim constructions: “an allocated block of serial numbers” as “a pre-authorized range of binary serial numbers” and “uniquely corresponding” as the “term’s plain and ordinary meaning, consistent with the articulation of the plain and ordinary meaning” in the Avery Dennison litigation. Pet. 8–12. As to the remaining claim terms, Petitioner applies the district court’s constructions in the Avery Dennison litigation. Id. at 12 (citing Ex. 1028). Patent Owner applies the following constructions that were entered during in the Avery Dennison litigation: “object class information space” as “data field within the memory of the RFID integrated circuit chip for information identifying the class of an object, such as a company prefix, item reference code, partition value, and/or filter value,” “unique serial number space” as “data field within the memory of the RFID integrated circuit for information identifying a unique serial number,” “being assigned a limited number of most significant bits” as “includes a limited, predefined sequence at the leading end,” “remaining bits of lesser significance” as “the remaining lower order bits at the trailing end,” “is encoded with one serial number instance” as “has stored within it one serial number instance,” “an allocated block of serial numbers” as “a pre-authorized range of serial numbers,” and “uniquely corresponding” as its plain and ordinary meaning. Prelim. Resp. 32. For purposes of resolving whether to institute trial, we adopt and apply the interpretations stated in the district court’s claim construction order and applied by the Federal Circuit on appeal, Ex. 1028.11 See 55 F.4th 900, 908–909, 912–913 (Fed. Cir. 2022) (citing the district court’s claim construction order).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“IBM200 and Kuhno would have made it obvious for a POSITA to commission RFID tags with unique serial numbers partitioned into MSBs and bits of lesser significance. See Pet. 34–39; Ex. 1005 ¶¶ 167–176. However, on this record, Petitioner has not sufficiently shown that the POSITA, having read IBM200 and Kuhno, would have been led to create a serial number space in which the limited number of “most significant bits” uniquely corresponds to those bits assigned to an allocated block of serial numbers, as recited in limitation [f].” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,798,967 - Aardevo North America, LLC v. Agventure B.V.Institution deniedPTAB · May 1, 2025 · IPR2025-00136 · APJ Jeffrey N Fredman · IPR · Institution
Institution of inter partes review was denied for claims 1–10 because Petitioner did not establish a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we find that on the current record Petitioner has not shown that it has a reasonable likelihood that it would prevail on these obviousness grounds. XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5. XIII. CONCLUSION After reviewing the information presented in the Petition and the Preliminary Response, we determine that, based on the evidence of record, Petitioner has not established a reasonable likelihood that claims 1–10 of the ’841 patent are unpatentable. XIV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), institution of an inter partes review of all challenged claims on all grounds presented in the Petition is denied.” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“However, neither Petitioner nor Dr. Jansky provide specific data on the record before us showing the actual measured homozygosity of either of the inbred lines, US-W 5309 and US-W 5315. And Phumichai experimentally demonstrates that Dr. Jansky’s assumption that theoretical heterozygosity reduction of 50% per generation is not necessarily accurate, stating the “observed average percentage of reduction of heterozygosity per generation (38.4% or 38.5%) was lower than the theoretically expected value of 50%.” Ex. 1005, 982. Indeed, Phumichai disclosed that the “SOPH [Section-based observed percentage of heterozygosity] decreased steadily from the original 100% in 99H2–1 (S0) to the family means of 62.4% in 3H2 (S1), 37.9% in 3H3 (S2).” Id. at 981. That is, Phumichai experimentally shows that in an S2 generation of a potato line, the heterozygosity was 37.9%, resulting in homozygosity of about 62.1%, below the 75% theoretically expected and the 75% required by claim 1 of the ’841 patent. Therefore, the evidence of record does not show that the S2 generation of potato lines in Jong necessarily satisfies the homozygosity recitation in claim 1 of the ’841 patent, and so cannot establish on the record before us that Jong inherently teaches this limitation.” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedNot shown unpatentableNot shown unpatentable
“Owner is telling. Petitioner does not refute Patent Owner’s evidence of objective indicia. On the current record, the objective indicia evidence is compelling. As to long felt need, Patent Owner cited evidence on record before the Examiner that showed a persistent need recognized by ordinarily skilled artisans. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). For example, Dr. Huang states “This research is the breakthrough we have been waiting for since nearly a century . . . This is crucial for the potato breeding worldwide.” Ex. 2009, 687. There is no evidence that this long-felt need was satisfied by another before Appellant’s invention. See Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved . . . .”). Lastly, Dr. Lindhout explains that this invention satisfies the long-felt need, stating “I have discovered, and disclosed in the present application for patent, how a fertile homozygote in” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,140,841 - PTAB · Apr 25, 2025 · IPR2024-01492 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–9 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Based on the foregoing, we conclude that Petitioner fails to establish that Coccia discloses “a resulting solvent valve” as required by claim 1 and as alleged in the Petition. See Pet. 35–42. 4. Conclusion Based on our review of the current record, Petitioner does not establish a reasonable likelihood of proving that claim 1 would have been obvious based on Coccia and Anson. The remaining challenged claims, claims 2–9, all ultimately depend from claim 1. See Ex. 1001, 18:42–19:48. Petitioner’s obviousness challenges to claims 2–9 build on its analysis for claim 1. See Pet. 10, 43–70, 79–86. Accordingly, for the same reasons we discuss above in the context of claim 1, Petitioner has not shown a reasonable likelihood in prevailing on its challenge to any of the dependent claims.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“cites the specification for support, but that argument largely misses the point and elides the claim requirements tied to the resulting solvent valve. See Pet. 35; Prelim. Reply 4. Patent Owner agrees with the general proposition that “a resulting solvent valve” means one or more resulting solvent valves. See Prelim. Resp. 10 (acknowledging that “two duplicative resulting solvent valves having the three positions” could each qualify as “a resulting valve”); Prelim. Sur-reply 4–5 (“Had Petitioner cited to multiple ‘resulting solvent’ valves that each” meet the claim requirements, “Patent Owner would not have raised an issue.”). The general statement that “a” or “an” means “one or more than one,” however, does not support Petitioner’s argument that the limitation broadly covers systems where no single resulting valve meets the three claimed valve positions. The dispute does not turn on whether “a” means “one or more than one”; the dispute, rather, concerns whether the claim allows for multiple valves to meet the three claimed states or whether a single valve must meet those claim requirements.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Patent Owner that Petitioner fails to establish that Coccia discloses the claimed “resulting solvent valve.” Importantly, Petitioner premises its argument for this limitation on a claim construction that we rejected in our analysis above. Because we determine that the claim requires at least one resulting valve to meet the three claimed states identified in the claim, Petitioner may not rely on a combination of Coccia’s valves 26 and 36 to provide the three claimed states, as Petitioner does throughout its analysis. See Pet. 35–42; Prelim. Reply 4. As to Petitioner’s alternative argument that Anson discloses the claimed resulting solvent valve, we decline to consider the argument because it was not included in the Petition and was made for the first time in Petitioner’s Preliminary Reply. See Pet. 35–42; Prelim. Reply 5. Petitioner relied on Anson in the Petition as an alternative reason to find that it would have been obvious to place Coccia’s valve 36 in the claimed location (downstream of the conduit joint and upstream of the brewing chamber), not to meet all of the limitations associated with the resulting solvent valve. See Pet. 38–39. Moreover, Petitioner’s limited argument and evidence in the Preliminary Reply lacks adequate development and fails to persuade us that Anson’s valve 28 performs all of the “claimed functions” associated with the resulting solvent valve, including the two “active” states that the Petition addresses with reliance on Coccia alone. See Pet. 40–42; Prelim. Reply 5. Based on the foregoing, we conclude that Petitioner fails to establish that Coccia discloses “a resulting solvent valve” as required by claim 1 and as alleged in the Petition. See Pet. 35–42. 4. Conclusion Based on our review of the current record, Petitioner does not establish a reasonable likelihood of proving that claim 1 would have been obvious based on Coccia and Anson. The remaining challenged claims, claims 2–9, all ultimately depend from claim 1. See Ex. 1001, 18:42–19:48. Petitioner’s obviousness challenges to claims 2–9 build on its analysis for claim 1. See Pet. 10, 43–70, 79–86. Accordingly, for the same reasons we discuss above in the context of claim 1, Petitioner has not shown a reasonable likelihood in prevailing on its challenge to any of the dependent claims.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,772,456 - PTAB · Apr 25, 2025 · IPR2024-01483 · APJ Richard H Marschall · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 would be unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the challenged claims in the petition.” For the reasons that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of the challenges in the Petition. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “would have had at least the following (or equivalents): a B.S. degree in mechanical engineering with at least five years of experience in product design; or an M.S. degree in mechanical engineering with at least two years of experience in product design.” Pet. 17 (citing Ex. 1002, 13). Patent Owner “submits a person of ordinary skill in the art (‘POSITA’) would be a mechanical or materials engineer, or other similar degree, having at least two to three years of personal experience in designing or development of espresso machines.” Prelim. Resp. 8. In the alternative, Patent Owner states that “because Petitioner’s definition is so close to that of Patent Owner’s definition, that no express finding is necessary to find Petitioner has not met its burden to show with particularity that claim 1 is unpatentable.” Id. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’524 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). The outcome of this case would remain the same if we applied Patent Owner’s similar proposal.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under that standard, we give the words of a claim their plain and ordinary meaning as would have been understood by one skilled in the art at the time of the invention and in the context of the entire patent disclosure. Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties propose constructions for several claim terms. For example, Petitioner contends that we should construe “conduit,” “coupled,” “another solvent,” and “dynamically modulate.” See Pet. 13–17. Patent Owner reserves its right to challenge Petitioner’s constructions and proposes its own constructions for “another solvent” and “communicatively coupled.” Prelim. Resp. 9–11. We determine that we need not construe any of these additional terms to determine whether Petitioner met its burden as to any of its challenges in the Petition.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“that any of them disclose an electronic controller coupled to two pumps and a thermal modulator, such as a heater. Petitioner suggests that Lai’s controller controls two “pump(s),” but Lai appears to describe a single pump 138, and Petitioner fails to point to any disclosure or suggestion in Lai that its system employs more than one pump. See Pet. 38–39 (citing Ex. 1002, 41–42); Ex. 1007 ¶ 98, Fig. 60. Petitioner does not directly assert that Santi discloses a controller connected to two pumps, and it too, like Lai, appears to only disclose a single pump. See Pet. 39; Ex. 1005 ¶ 64, Fig. 1. Petitioner correctly notes that Majer discloses controller 9 connected to two pumps, but we agree with Patent Owner that only one of those pumps meets the requirements of the claimed pumps, which are both connected to conduits that eventually lead to the brewing chamber. See Pet. 40; Prelim. Resp. 28; Ex. 1008, 9:11–12 (describing circuit C2 containing pump 4bis as not including any “brewing means”). In addition, Petitioner does not allege, and Majer does not appear to disclose, a controller coupled to Majer’s heating elements. See Pet. 40. Based on the foregoing, none of the prior art Petitioner relies on discloses an electronic controller that controls both claimed pumps and a thermal modulator. Despite these deficiencies, Petitioner summarily concludes that one of ordinary skill in the art “would have recognized that it would be obvious to combine Startz’s machine with the electronic controller of any of Lai, Santi, and/or Majer, and that such electronic controller would be communicatively coupled to both the thermal modulator and the pumps.” Pet. 40 (citing Ex. 1002, 43). The Petition provides no additional rationale or argument in support of this conclusion, and the cited declarant testimony provides no further analysis. See id.; Ex. 1002, 43. Given the lack of any teaching of a controller coupled to two pumps and a thermal modulator, it was incumbent upon Petitioner to provide some reason why one of ordinary skill in the art would have been motivated to combine the references in a manner that meets the limitation.14 Because the Petition lacks any such statement or rationale, we find Petitioner’s obviousness argument and evidence lacking in this critical respect.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,576,524 - Babybjörn AB v. The Ergo Baby Carrier, Inc.Institution deniedPTAB · Apr 22, 2025 · IPR2025-00111 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution of IPR on all challenged claims under § 314(a), finding the reasons offered for a second parallel petition unpersuasive.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“petitioner files two or more petitions challenging the same patent, we consider guidance in the Consolidated Trial Practice Guide, which provides that “one petition should be sufficient to challenge the claims of a patent in most situations” and that “multiple petitions by a petitioner are not necessary in the vast majority of cases.” Trial Practice Guide 59 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“TPG”). In such circumstances, a petitioner should provide: (1) a ranking of the petitions in the order in which it wishes the Board to consider the merits, if the Board uses its discretion to institute any of the petitions, and (2) a succinct explanation of the differences between the petitions, why the issues addressed by the differences are material, and why the Board should exercise its discretion to institute additional petitions if it identifies one petition that satisfies petitioner’s burden under 35 U.S.C. § 314(a). TPG 59–60. The Trial Practice Guide provides that “the Board recognizes that there may be circumstances in which more than one petition may be necessary” and that “two petitions by a petitioner may be needed, although this should be rare.” Id. at 59.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“We disagree with Petitioner that the still-open outcome of Lynk Labs in any way impacts the availability of Lundh in either the 110 IPR or this proceeding.10 Critically, in Lynk Labs, the Federal Circuit examined the prior art date of a U.S. patent application publication under pre-AIA § 102(e)(1) because the challenged patent in that case had a priority date in February 2004—well before the 2013 effective date of the AIA’s revisions to §§ 102, 103—such that the pre-AIA versions of § 102 determined the” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“We are not persuaded that this assertion supports the argument for a second petition. As argued by Patent Owner, Petitioner’s alleged need is undermined by the distribution of its arguments across the 110 IPR and this proceeding. As discussed above, for the “at least one thigh support adjusters” in the 110 IPR, Petitioner relies on one prior art structure from the first category and two prior art structures from the second category; and for the “at least one thigh support adjusters” in this proceeding, Petitioner relies on two prior art structures from the first category and one prior art structure from the second category. Id. In other words, as stated by Patent Owner, “Petitioner was able to address both its constructions in both of its Petitions.” Resp. 3–411; see also Medacta USA, Inc. v. RSB Spine, LLC, IPR2020-00275, Paper 22 at 10–11 (PTAB May 22, 2020) (denying institution of a second-ranked parallel petition challenging the same claims of the same patent and stating, “Because Petitioner was able to present an alternative challenge contingent upon [the] alternative claim construction” in the first-ranked petition, “we fail to see how uncertainty regarding claim construction justifies two petitions.”). In contrast, in the SolarEdge decision cited by Petitioner, the first-ranked petition presented one approach as to the prior art and the second-ranked petition was permitted because it presented a different approach, such that the two petitions “do not overlap in any meaningful way.” SolarEdge v. SMA Solar Techs., IPR2019-01224, Paper 10 at 10 (PTAB Jan. 23, 2020), cited at Expl. 4. Turning to the discovery issue, we determine that the alleged failure of Patent Owner to answer adequately an interrogatory in the Texas Litigation seeking information on “all corresponding disclosures and written 11 Petitioner highlights the two categories of prior art structures identified across the six grounds in these two proceedings rather than the two different constructions for “at least one thigh support adjuster” proposed. Looking at the distributions of the constructions presented, however, the same reasoning above applies as Petitioner relied on each construction at least twice to address the “one thigh support adjuster” in each proceeding. See 110 Petition 27 (relying on both constructions for Ground 1), 53–57 (relying on only a § 112(f) construction for Ground 2), 86–90 (relying on both constructions for Ground 3); Pet. 29–34 (relying on only a § 112(f) construction for Ground 4), 61–63 (relying on both constructions for Ground 5), 88–90 (relying on both constructions for Ground 6). description support for the ‘at least one thigh support adjuster’ limitation” (Ex. 1029 at 5) does not warrant a second petition here. The challenged patent was clearly available to Petitioner, and Petitioner was—even with Patent Owner’s non-substantive answer to the interrogatory (id. at 6)—able to propose a construction of “at least one thigh support adjuster” under § 112(f). See Pet. 7–12. For these reasons, the two different constructions presented do not warrant a second petition in this proceeding.” slip op. at 12
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 11,786,055 - Babybjörn AB v. The Ergo Baby Carrier, Inc.Institution deniedPTAB · Apr 22, 2025 · IPR2025-00110 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person having ordinary skill in the art “would have had at least a four-year degree in a design-based field, which may include fashion design, industrial design, mechanical engineering, or another technical field, or equivalent experience, and familiarity working with child products and/or adjustable products.” Pet. 6–7 (citing Smith Decl. ¶¶ 32–38). Patent Owner does not address Petitioner’s proposed definition, which appears consistent with the record in this proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Furthermore, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the current record, we need not construe explicitly the term “at least one thigh support adjuster” because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). More particularly, and as discussed below, Petitioner does not show sufficiently how the prior art teaches the structure identified as corresponding to the alleged claimed function. Further, because we deny on the merits (as discussed below), we do not address Patent Owner’s alternative argument that we should deny institution because “Petitioner fails to construe th[is] limitation and otherwise argues for an advisory opinion from the Board on indefiniteness.” Prelim. Resp. 1; see id. at 1–6 (entire argument). 2. “defined by” Limitations 1j and 11l each recite “a first setting, a second setting, and a third setting defined by the adjustable child carrier.” Ex. 1001, 17:38–39 (emphasis added), 19:43–44 (emphasis added). Limitation 6k recites “a first position, a second position, and a third position defined by the adjustable child carrier.” Id. at 18:36–37 (emphasis added). Patent Owner proposes a construction for “defined by” in these limitations. See Prelim. Resp. 12–15. At this stage of the proceeding and based on the current record, we need not construe explicitly “defined by”” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Public accessibility “has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ . . . .” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). In Hulu, the Precedential Opinion Panel (“POP”) rejected a petitioner’s argument that a reference necessarily meets “the reasonable likelihood standard for institution where the reference bears conventional markers of publication, such as a copyright date, edition identifiers, publication by a commercial publisher, and the assignment of an ISBN number.” Hulu, Paper 29 at 17. The POP stated: “We do not hold that any particular indicia per se is sufficient at the institution stage. Rather, the indicia on the face of a reference, such as printed dates and stamps, are considered as part of the totality of the evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Here, Petitioner provides no citation, no discussion, and no support for its assertion that the Synergy Manual was “published” in “2007.” See Pet. 2. Instead, we are left to assume that Petitioner relies on the text “© BabyBjörn AB, Stockholm, 2007” at the bottom of page 6 of the Synergy Manual. More to the point, Petitioner does not discuss in the Petition any evidence supporting the implicit position that the Synergy Manual was publicly accessible prior to the critical date of the claimed invention.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,786,055 - Eunsung Global Corp. v. Hydrafacial LLCInstitution deniedPTAB · Apr 11, 2025 · IPR2024-01491 · APJ Jamie T Wisz · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the advanced ITC proceeding and substantial overlap made review inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“When determining whether to exercise discretion to deny institution in view of a parallel litigation, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We find that Petitioner’s obviousness challenges meet the standard for institution. We also will not speculate as to whether the other three petitions referenced by Petitioner will be instituted. Taken together with the other” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“B. Discretionary Denial under 35 U.S.C. § 325(d) Patent Owner asserts that we should deny the Petition under 35 U.S.C. § 325(d) because the Petition presents substantially the same art and arguments that the Office previously analyzed and fails to show that the Office erred during prosecution. See Prelim. Resp. 58–68. Because we exercise discretion to deny institution under 35 U.S.C. § 314(a) for the reasons discussed above, we do not need to reach Patent Owner’s argument regarding denial under § 325(d).” slip op. at 17
Discretionary denialPatents in suitUS 11,865,287
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.