- 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 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 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” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66–3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66– 3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 4
§ 103 obviousnessPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 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.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, 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 a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,811,689 - 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 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Institution deniedPTAB · Apr 25, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“experience working on the development of materials or components for electronic devices such as batteries.” Pet. 2. Petitioner further contends that “[a]dditional education, such as a graduate degree, could compensate for less work experience, and additional work experience could compensate for less formal education.” Id. Patent Owner states that, “[f]or purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’014 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). in this proceeding.” Pet. 3. Patent Owner contends that “[t]he Board need not construe any term in order to determine that institution should be denied.” Prelim. Resp. 4. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we are not persuaded that Petitioner sufficiently establishes that a POSITA would have been motivated to modify Hanafusa in light of Dobashi with a reasonable expectation of success as Petitioner contends. Accordingly, we determine that Petitioner fails to demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claim 1, and claims 4 and 8 that depend therefrom, would have been obvious over the combined teachings of Hanafusa and Dobashi.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner also focuses on Hanafusa’s teaching that all known methods can be used to make a rough surface low-profile, and Dobashi’s teaching that RSm can be used as an indicator for judgment of the surface, to support its contention that a POSITA would have been motivated to apply Dobashi’s RSm to further achieve Hanafusa’s purpose, without explaining how and why that would be the case. In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness and is rough when RSm is small.” Id. at 3:1–3, 6:27–29. Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66– 3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66–3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Institution deniedPTAB · Apr 23, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable over either asserted § 103 ground.
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 . . . 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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had at least an undergraduate degree in materials science, chemical engineering, electrical engineering, or related field, or equivalent knowledge, training, or experience, with at least two years of experience working on the development of materials or components for electronic devices such as batteries.” Pet. 4. Petitioner further contends that “[a]dditional education, such as a graduate degree, could compensate for less 7 We refer to the page numbers added by Petitioner to the bottom-center of the page. formal education.” Id. (citing Ex. 1003 ¶ 10). Patent Owner states that, “[f]or purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’689 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))).” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We are not persuaded, on this record, that Petitioner adequately establishes that Khatibi discloses a CTE in the claimed range of 16 to 22 µm/(m·°C.). Petitioner’s argument that Khatibi’s reported values meet this claim limitation are based solely on Dr. Randall’s testimony that Khatibi’s measurement method would produce results that would not significantly differ from results determined using the claimed method. See Pet. 16–18 (citing Ex. 1003 ¶¶ 56–60). Dr. Randall’s testimony, however, is largely conclusory and unsupported by adequate explanation and/or objective evidence. For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added). to little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (finding that “the Board was correct in giving little weight to Petitioner’s expert because the expert declaration merely offered conclusory assertions without underlying factual support”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.” (quoting Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985))); see also In re Ethicon, Inc., 844 F.3d 1344, 1348, 1352 (Fed. Cir. 2017) (concluding that the Board properly gave “little weight” to conclusory expert testimony of objective indicia). Because Petitioner offers Dr. Randall’s testimony to supply a limitation missing from the prior art, namely, the CTE measurement method, and we give Dr. Randall’s unsupported and conclusory testimony little weight, we are not persuaded that Petitioner establishes a reasonable likelihood of showing that Khatibi discloses limitation [1d].” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“second surfaces of the electrolytic copper foil ranges from 3 to 92.” Ex. 1001, 13:62–63. Petitioner contends that “Kim teaches that the electrolytic copper foil (e.g., untreated or treated copper foil) having Rz less than 2 µm is advantageous toward battery efficiency and performance,” and, similarly, Griesi describes the use of untreated electrolytic copper foil with an Rz value less than 2 µm in printed circuit boards that are compatible with secondary batteries. Pet. 58–59 (citing Ex. 1012, claim 2, ¶¶ 13, 25, 27; Ex. 1003 ¶ 157). In particular, Petitioner notes that Griesi’s Figure 3.16 describes an “Rz value of 1.2 µm.” Id. at 59 (citing Ex. 1015, 53–54; Ex. 1003 ¶ 158). Petitioner asserts that “Dr. Randall explains that a POSITA would have also recognized another surface roughness-related parameter, Rpc, in Griesi as a potentially useful parameter that can be optimized to further enhance uniformity or generally improve Kim’s copper foil surface, for example, to prevent wrinkles or achieve other advantageous effects.” Id. (citing Ex. 1003 ¶ 159). Although Dr. Randall demonstrates that Griesi’s Pc (or Rpc) value is 19.2 over a 4 mm sampling length (Ex. 1003 ¶ 155), Petitioner does not contend that Griesi addresses this value, or indicates any benefit that might be derived from its use. Instead, Griesi’s Pc value appears to be an incidental finding, which is not discussed or analyzed in the reference. See incidental, unexamined finding would lead a POSITA to import Griesi’s Pc value into Kim’s copper foil, absent a hindsight desire to reconstruct the claimed invention. As such, Petitioner’s arguments with respect to Kim and Griesi are not persuasive. See Cheese Sys. Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013) (“Obviousness cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.” (internal quotations marks omitted)). Thus, we are not persuaded, on this record, that the combined disclosures of Kim and Griesi teach all of the elements of limitation [1g].” slip op. at 23
§ 103 obviousnesscites PhillipsPatents in suitUS 10,811,689 - 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 - Solus Advanced Materials Co, Ltd. v. SK Nexilis Co., Ltd.Institution deniedPTAB · Apr 22, 2025 · IPR2024-01460 · APJ Jon B Tornquist · IPR · Institution
The Board denied institution of review of claims 1–11 because the Fintiv factors, including the early trial date and close merits case, favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review 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.” Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review. A. Real Parties-in-Interest” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Board’s projected statutory deadline to issue a final written decision. Fintiv, Paper 11 at 9. “If the court’s trial date is at or around the same time as the projected statutory deadline . . . the decision whether to institute will likely implicate other factors.” Id. Conversely, “[i]f the court’s trial date is earlier than the projected statutory deadline,” this has generally weighed “in favor of exercising authority to deny institution.” Id.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Petition under 35 U.S.C. § 325(d) because the same or substantially the same art and arguments were before the Examiner during prosecution and Petitioner’s has not demonstrated that the Examiner erred in a material manner when allowing the claims. Pet. 17–18. Given our discretionary denial of the Petition in view of the Fintiv factors, we do not address Petitioner’s further arguments with respect to § 325(d).” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner applies Petitioner’s recited level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 4. Upon review of the parties’ arguments and the prior art of record, we adopt Petitioner’s unopposed definition of the ordinarily skilled artisan for purposes of this decision as it appears consistent with the disclosures of the ’090 patent and the prior art of record. C. Claim Construction” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,480,090
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.