- Viance, LLC v. Koppers Performance Chemicals, Inc.Institution deniedPTAB · Aug 19, 2026 · PGR2026-00023 · APJ John A Squires · PGR · Director review
The Director denied the PGR petition and instituted no trial because Petitioner failed to identify Venator as a real party in interest within the statutory filing period.
RulingsDirector review decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“However, as I previously explained, RPIs are not limited to entities that are actually funding and controlling the proceeding but include entities that have the ability to control the proceeding. See Tianma, IPR2025-01579, Paper 12 at 9–10. Petitioner argues that its two owners do not have unilateral control of Petitioner. However, unilateral control is not the standard, and control of Petitioner is vested solely in its two owners as members of the Board of Directors. See Moyes Decl. ¶ 7. Accordingly, I am not persuaded that Venator and Lanxess do not have the ability to control” slip op. at 3
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“Patent Owner further argues that Petitioner cannot correct its RPI listing because adding an RPI would require a new filing date that places the Petition outside the 9-month window for filing a PGR. DD Opp. 11–12 (citing Corning, IPR20214-00440, Paper 68 at 24). Patent Owner is correct. See Sun Pharm. Indus., Inc. v. Biofrontera, Inc., PGR2026-00021, Paper 12 at 4 (Director May 26, 2026) (denying PGR petition because Petitioner did not meet the requirement to name all RPI within the statutory timeframe for filing a PGR petition). Accordingly, this Petition is denied, and Petitioner may file an IPR petition listing the appropriate real parties in interest.3” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied rpiInstitution denied
“listing because adding an RPI would require a new filing date that places the Petition outside the 9-month window for filing a PGR. DD Opp. 11–12 (citing Corning, IPR20214-00440, Paper 68 at 24). Patent Owner is correct. See Sun Pharm. Indus., Inc. v. Biofrontera, Inc., PGR2026-00021, Paper 12 at 4 (Director May 26, 2026) (denying PGR petition because Petitioner did not meet the requirement to name all RPI within the statutory timeframe for filing a PGR petition). Accordingly, this Petition is denied, and Petitioner may file an IPR petition listing the appropriate real parties in interest.3 In consideration of the foregoing, it is: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 4
Discretionary denialPatents in suitUS 12,370,716 - Apple, Inc. v. Wecrevention, Inc.Institution deniedPTAB · Jun 24, 2026 · IPR2026-00242 · APJ John A Squires · IPR · Director review
The Director denied the petitions and instituted no trial, exercising discretion based on Petitioner’s unexplained inconsistent claim-construction positions before the Board and district court.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 11,894,098 - Sun Pharmaceutical Industries, Inc. v. Biofrontera Inc.Institution deniedPTAB · May 26, 2026 · PGR2026-00021 · APJ John A Squires · PGR · Director review
The Director denied Sun Pharmaceutical Industries’ PGR petition because it failed to show that it had identified all real parties in interest.
RulingsDirector review decision- PTAB / AIA Trials › Real party in interest / privityInstitution denied rpiDecided for patent owner
“As I previously explained, RPIs are not limited to entities that are actually funding and controlling the proceeding, but include entities that have the ability to control the proceeding. See Tianma Microelectronics (Director Mar. 18, 2026) (precedential) (“With its identification of RPIs in dispute, it is Petitioner’s burden to bring forth evidence or arguments demonstrating that it had named all RPIs—and that none were foreign governments or entities a foreign government had the ability to control.”); see also Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244–45 (Fed. Cir. 2018) (remanding to the Board to further consider RPI where the patent owner identified an unnamed party with the “opportunity to control” the proceeding). Petitioner has not provided sufficient evidence that SPI Ltd., the corporate parent and 100% owner of SPI Inc., does not have the ability to control the proceeding. Rather, Petitioner’s declaration evidence is focused on whether SPI Inc. is actually funding or controlling the proceeding. See Ex. 1021 ¶ 4 (“SPI Inc. is an indirect wholly-owned subsidiary of Sun Pharmaceutical Industries, Ltd.”). On this record, Petitioner fails to carry its burden to establish that it has identified all RPIs.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“(Director Mar. 18, 2026) (precedential) (“With its identification of RPIs in dispute, it is Petitioner’s burden to bring forth evidence or arguments demonstrating that it had named all RPIs—and that none were foreign governments or entities a foreign government had the ability to control.”); see also Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1244–45 (Fed. Cir. 2018) (remanding to the Board to further consider RPI where the patent owner identified an unnamed party with the “opportunity to control” the proceeding). Petitioner has not provided sufficient evidence that SPI Ltd., the corporate parent and 100% owner of SPI Inc., does not have the ability to control the proceeding. Rather, Petitioner’s declaration evidence is focused on whether SPI Inc. is actually funding or controlling the proceeding. See Ex. 1021 ¶ 4 (“SPI Inc. is an indirect wholly-owned subsidiary of Sun Pharmaceutical Industries, Ltd.”). On this record, Petitioner fails to carry its burden to establish that it has identified all RPIs.” slip op. at 3
Discretionary denialPatents in suitUS 12,280,146 - Berkshire Hathaway Energy Company / Pacificorp v. Birchtech Corp.Institution deniedPTAB · May 18, 2026 · IPR2025-00278 · APJ David Cotta · IPR · Institution
The Board denied institution of Berkshire Hathaway Energy Company and PacifiCorp’s petition because it had instituted the earlier-filed IPR2025-00274 challenging the same patent.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“request from Patent Owner for Director Review, finding that Patent Owner introduced “evidence sufficient to put RPI and privity at issue” and remanding with instructions to “allow discovery, narrowly tailored to resolve the RPI and privity issues” including “at least materials sufficient to clarify the evidence the Board found to be ‘ambiguous’ and to avoid the need for the Board to ‘speculate as to the nature of the redacted material.’” Paper 57 (Decision on Request for Director Review). The Director instructed that after allowing such discovery, we “should then determine on the full record whether Petitioners have met their burden of demonstrating that the Petitions are not time-barred under § 315(b), applying the framework set forth in Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242–44 (Fed. Cir. 2018). Concurrently herewith, we issue a decision in IPR2025- 00278 finding that Petitioner has met its burden of demonstrating that its Petition is not time-barred under 35 U.S.C. § 315(b).” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Review Decision instructing that “if the Board determines that Petitioners met their burden to identify all RPIs in the Petitions, then the Board should maintain at most one IPR challenging each of the ’114 patent, the ’517 patent, the ’430 patent, and the ’225 patent.” Paper 79, 3. Together with its Petition in this proceeding and the proceeding in IPR2025-00274, Petitioner filed an Explanation Regarding the Necessity of Multiple Petitions. Paper 2 (“Explanation”); IPR2025-00274, Paper 2. In the Explanation, Petitioner “request[s] that, if the Board uses its discretion to institute the Petitions, the Board consider the merits of IPR2025-00274 . . . before IPR2025-00278.” Explanation, 3. Further to Petitioner’s request, we first considered the merits of IPR2025-00274. For the reasons discussed in our concurrently issued decision in IPR2025-00274, we institute inter partes review on the grounds set forth in the Petition in IPR2025-00274. Further to the Director’s instruction that we “maintain at most one IPR challenging . . . the ’114 patent,” and the Petitioner’s request that we consider the merits of IPR2025-00274 before IPR2025-00278, we deny institution of the Petition in this proceeding.” slip op. at 3
Discretionary denialPatents in suitUS 10,343,114 - Google LLC v. Secure Communication Technologies, LLCInstitution deniedPTAB · May 15, 2026 · IPR2026-00099 · APJ John A Squires · IPR · Director review
The Director denied Google’s petition and instituted no trial, exercising discretion based on the complete record and holistic assessment, including settled expectations.
RulingsDirector review decision- Settled expectationsInstitution denied settled expectationsDenied
“Petitioner’s arguments are not persuasive. Petitioner was aware of the challenged patent no later than February 2012, and Patent Owner specifically identified the patent as being of interest to mobile commerce providers. See Ex. 2004. Petitioner cited the challenged patent to the Office during prosecution of Petitioner’s own Application No. 13/716,675 in December 2012. See Ex. 2007. Application No. 13/716,675 is titled “Methods and Systems for Efficient Discovery of Devices in a Peer-to-Peer Network.” See Ex. 2006. Efficient discovery of devices in a peer-to-peer network appears to be relevant to both retail operations and the finding and tracking of personal electronic devices. Accordingly, Petitioner’s own actions indicate it was aware that the challenged patent was relevant to its technology space.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for patent owner
“Finally, I do not agree with Petitioner’s assertion that the Office committed a material error during prosecution. While demonstrating error is usually one of the strongest considerations weighing against discretionary denial, here Petitioner’s material error argument is weak. Petitioner points to the notice of allowance, and focuses on a single phrase that appears in a rather long listing of limitations the examiner indicated were missing from the prior art. DD Opp. 2–3. According to Petitioner, the phrase “first, direct, short range separate local wireless link” never existed in the claims. Id. at 4. However, Petitioner acknowledges that the phrase “via a separate local wireless link” was part of the claims, as was the phrase “first, direct, short range” local wireless link. Id. Although the ultimate listing in the notice of allowance may constitute a clerical error, Petitioner has not demonstrated sufficiently that this error was material to the patentability of the challenged claims, especially considering the number of other limitations listed in the notice of allowance that the examiner determined to be missing from the reviewed prior art. Petitioner does not address those limitations in its error arguments. Id. at 3–6.” slip op. at 3
Discretionary denialPatents in suitUS 8,116,749 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Omni Medsci, Inc.Institution deniedPTAB · May 14, 2026 · IPR2025-01253 · APJ John A Squires · IPR · Director review
The Director vacated institution and denied the IPR petition because the patent was determined eligible for PGR and therefore not eligible for IPR.
RulingsDirector review decision- Director reviewDirector review, grantedDecided for patent owner
“Given my determination in PGR2026-00003 as to the ’790 patent’s PGR eligibility, and because a patent cannot be both PGR eligible and IPR eligible at the same time, it is appropriate to vacate institution of this IPR. See, e.g., Philip Morris Prods., S.A. v. RAI Strategic Holdings, Inc., IPR2020-01188, Paper 12 at 10–12 (PTAB Jan. 13, 2021); Paper 6, 3 n.2 (Samsung acknowledging that the ’790 patent is not eligible for simultaneous IPR and PGR). Accordingly, it is: ORDERED that the Notice granting institution of inter partes review (Paper 19) is vacated; and FURTHER ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 3
Discretionary denialPatents in suitUS 12,193,790 - PTAB · Feb 10, 2026 · IPR2025-00688 · APJ Kristina M Kalan · IPR · Remand
On remand, the Board denied institution of IPR on claims 1–18 because this was the second-ranked petition and the Director directed institution of only one petition.
RulingsRemand decision- RemandDecided for patent owner
“Remand, do not institute inter partes review based on the second-ranked petition on this complete record. As stated in the Remand, “Petitioners present ten total grounds challenging the claims of the ’370 patent and thirteen total grounds challenging the claims of the ’218 patent [in IPR2025- 00717 and IPR2025-00718].” Remand 3. The Remand cites to the Board’s Trial Practice Guide, which “explains that ‘one petition should be sufficient to challenge the claims of a patent in most situations’ and ‘multiple petitions by a petitioner are not necessary in the vast majority of cases.’” Id. (citing Patent Trial and Appeal Board Trial Practice Guide (“TPG”) § II.D.2 (Dec. 12, 2025)). The Remand states: “The TPG further explains that dispute requiring arguments under multiple prior art references.’ TPG § II.D.2.” Id. at 2–3. The Remand determines: “Given that Petitioners had ample room in each petition to present multiple grounds challenging the claims of each patent, this was not a ‘rare’ circumstance that justified the filing of multiple petitions against each patent.” Id. at 3. The Remand explains that “absent exceptional circumstances, in a case where there is a dispute over priority date, the Board should either resolve the priority date issue or institute, at most, the first-ranked petition.” Id. The Director instructed the Board panel “to determine which of the two petitions” to institute. Id. at 4. We interpret the Remand as stating that the Director has determined that only one petition for each patent should have been instituted, and as delegating the discretionary authority to the panel to determine which of the two petitions to institute. Accordingly, in view of the foregoing and in view of Petitioner’s ranking of this Petition as the second-ranked petition, we deny institution of inter partes review.” slip op. at 11
- Parallel petitionsInstitution denied discretionary otherInstitution denied
“Remand, do not institute inter partes review based on the second-ranked petition on this complete record. As stated in the Remand, “Petitioners present ten total grounds challenging the claims of the ’370 patent and thirteen total grounds challenging the claims of the ’218 patent [in IPR2025- 00717 and IPR2025-00718].” Remand 3. The Remand cites to the Board’s Trial Practice Guide, which “explains that ‘one petition should be sufficient to challenge the claims of a patent in most situations’ and ‘multiple petitions by a petitioner are not necessary in the vast majority of cases.’” Id. (citing Patent Trial and Appeal Board Trial Practice Guide (“TPG”) § II.D.2 (Dec. 12, 2025)). The Remand states: “The TPG further explains that dispute requiring arguments under multiple prior art references.’ TPG § II.D.2.” Id. at 2–3. The Remand determines: “Given that Petitioners had ample room in each petition to present multiple grounds challenging the claims of each patent, this was not a ‘rare’ circumstance that justified the filing of multiple petitions against each patent.” Id. at 3. The Remand explains that “absent exceptional circumstances, in a case where there is a dispute over priority date, the Board should either resolve the priority date issue or institute, at most, the first-ranked petition.” Id. The Director instructed the Board panel “to determine which of the two petitions” to institute. Id. at 4. We interpret the Remand as stating that the Director has determined that only one petition for each patent should have been instituted, and as delegating the discretionary authority to the panel to determine which of the two petitions to institute. Accordingly, in view of the foregoing and in view of Petitioner’s ranking of this Petition as the second-ranked petition, we deny institution of inter partes review.” slip op. at 11
Discretionary denialPatents in suitUS 10,933,370 - Tiktok, Inc. v. Shopsee, Inc.Institution deniedPTAB · Jan 16, 2026 · IPR2025-01485 · APJ John A Squires · IPR · Director review
The Director granted Patent Owner’s request for discretionary denial and denied the Petition under § 314(a), declining to institute an IPR.
RulingsDirector review decision- Other 314aInstitution denied discretionary otherInstitution denied
“[W]hen a petitioner advances different positions before the Board and a district court, that petitioner is required to explain why those different positions are warranted.” Tesla Inc., v. Intellectual Ventures II, LLC, IPR2025-00340, Paper 18 at 3 (Director Nov. 5, 2025) (informative) (citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 at 3–5 (Director Nov. 3, 2025) (precedential)). Petitioner has not done so. Rather, Petitioner has stipulated that it will continue to pursue different constructions and abandon the inconsistent construction in district court if the IPR is instituted. This is not in keeping with our precedent, and I decline to modify it to permit this approach. Additionally, Petitioner’s claim construction stipulation is distinguishable from its stipulation that “it will not pursue in the parallel litigation the grounds it raised or could have reasonably raised in the petition, and that it will not pursue any ground that relies on Ohliger or the Veepio system.” DD Opp. 1–2. The latter stipulation increases efficiency by reducing duplication between the district court and the Board. It also minimizes the potential for inconsistent outcomes in the two proceedings. Petitioner’s stipulation not to continue to advance different claim construction positions lacks similar benefits. At best, it replaces one argument in district court for another argument at the Board. Accordingly, the Petition is denied under 35 U.S.C. § 314(a). slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“[W]hen a petitioner advances different positions before the Board and a district court, that petitioner is required to explain why those different positions are warranted.” Tesla Inc., v. Intellectual Ventures II, LLC, IPR2025-00340, Paper 18 at 3 (Director Nov. 5, 2025) (informative) (citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 at 3–5 (Director Nov. 3, 2025) (precedential)). Petitioner has not done so. Rather, Petitioner has stipulated that it will continue to pursue different constructions and abandon the inconsistent construction in district court if the IPR is instituted. This is not in keeping with our precedent, and I decline to modify it to permit this approach. slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 11,134,316 - Ascentcare Dental Product, Inc. v. Solmetex, LLCInstitution deniedPTAB · Dec 23, 2025 · IPR2025-01104 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art combinations.
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) (2025). 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 institution of inter partes review, the review proceeds “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Based on our consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“the ’329 patent was filed would have had “at least a B.S. degree in mechanical engineering or a related field with at least two years’ experience designing dental devices” and that “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 32. Patent Owner contends that Petitioner’s definition is overly narrow and argues that “[n]othing in the claims of the ’329 Patent requires experience designing ‘dental devices.’” Prelim. Resp. 19. According to Patent Owner, “the claims are directed to the structural components of a dental isolation mouthpiece, and an individual with a mechanical engineering degree and experience designing medical devices would be a [person of ordinary skill in the art] for purposes of the ’329 Patent.” Id. (citing Ex. 2030 ¶ 83). We adopt Patent Owner’s proposed level of skill for purposes of this Decision. We determine that this level of ordinary skill in the art—i.e., an individual with a mechanical engineering degree and experience designing medical devices—is consistent with the level of technical understanding and competence reflected in the ’329 patent Specification and the asserted prior art references, based on our review of the current record. Moreover, our determination in this Decision would be the same were we to adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner asserted “[p]lain and ordinary meaning” for “a plurality of protrusions” in claims 9 and 30, whereas Petitioner proposed “an internal structure attached to the second wall that prevents the collapse of the first and second wall during suction.” Prelim. Resp. 20 (citing Ex. 2039). Here, Patent Owner argues that “protrusion” should be construed to mean “a structure attached to the second wall but not the first wall,” with respect to claims 1, 9, and 30, and to mean “a structure attached to the first wall but not the second wall,” with respect to claim 21. Id. at 24. Patent Owner also argues that structure attached to both the first wall and the second wall is inconsistent with “the plain and ordinary meaning of ‘protrusions’ in light of the specification.” Id. at 21 (citing Ex. 2030 ¶¶ 111–112). We address Patent Owner’s arguments in the context of our analysis of Petitioner’s contentions below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“combination deficient. Petitioner argues that Park’s walls are “likely to collapse under the suction force,” based not on Park, but on Baughan, which states that “discs” in Baughan are used to prevent the “flexible sleeve” of Baughan from collapsing. Pet. 89. (citing Ex. 1007, 3:46–48). Petitioner reasons that because Park uses silicone, a flexible material, Park’s walls must also collapse like Baughan. Id. (citing Ex. 1006 ¶¶ 32, 34). Petitioner, however, directs us to no disclosure in Park to suggest that the material used in Park or the arrangement of Park would collapse in the same manner as Baughan. Indeed, if Park’s mouthpiece collapses as Petitioner speculates, it would appear likely to render Park inoperable. See Ex. 2030 ¶ 205. Additionally, Petitioner recognizes that in Park “the sidewalls and the insertion part 111 would help resist this collapsing force,” and states that in Park it “is unclear whether the mouth prop 100 includes a spine or other rigid structure running through the middle of the mouth prop 100.” Pet. 89– 90. Thus, whether Park is susceptible to collapse is, at best, unknown. See Prelim. Resp. 48 (asserting that a person of ordinary skill would have known “that silicone can have varying degrees of hardness, tensile strength, and elasticity such that Park’s mouthpiece would not necessarily collapse under suction”) (citing Ex. 2030 ¶¶ 189–90; Ex. 2036; Ex. 2037). Even assuming, as Petitioner asserts, that “additional anti-collapsing structure would assist at the weakest areas of the tongue retractor” in Park, Petitioner offers insufficient reasoning for why a person of ordinary skill would have turned to Baughan and modified the structure taught by Baughan to instead conform to what is recited in claim 1. Petitioner’s suggestion that “common sense” would have led a person of ordinary skill in the art to modify the structures of Baughan to solve a problem with collapse in Park that Park does not suggest was a problem is likewise unpersuasive and insufficient. Pet. 93 (further asserting that “it was well known in the art how to make projections on a flat surface”). Petitioner’s reliance on Johnson as generically teaching that protrusions can be on flat surfaces does not supply a reason why a person of ordinary skill in the art would have made the proposed modifications outside of improper hindsight. See also Prelim. Resp. 58, 59 (arguing that the projections in Johnson are on a semicircular surface, not on a flat surface as Petitioner asserts) (citing Ex. 1008 Figs. 4, 5). Based on the evidence and arguments presented, we determine that Petitioner fails to show sufficiently for purposes of instituting inter partes review that the asserted combination of Park, Baughan, and Johnson, or in further combination with Zheng, teaches “protrusions protruding from an interior surface” of one wall of the mouthpiece “towards” an opposing wall of the mouthpiece, as required by claim 1, or that a person of ordinary skill in the art would have had reason to combine the asserted references in the manner alleged by Petitioner.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,011,329 - Caption Health, Inc v. University Of British ColumbiaInstitution deniedPTAB · Dec 19, 2025 · IPR2025-01066 · APJ Mary C Hoffman · IPR · Institution
Institution was denied because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, including failure to show the claimed image-receiving quality-assessment neural network.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . 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.” Based on the current record and for the reasons explained below, Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’591 patent. Thus, we do not institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Because Petitioner’s formulation is supported by declaratory testimony and appears consistent with the level of skill reflected in the asserted prior art and the ’591 patent, and because Patent Owner does not provide any supporting evidence, we adopt Petitioner’s formulation of the level of ordinary skill in the art. See Ex. 1002 ¶¶ 31–33. Our decision would be the same regardless of the differences between Petitioner’s and Patent Owner’s formulations.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose any express claim construction. Pet. 11– 12; Prelim Resp. 17. We also determine that no express claim construction is necessary for our Decision, apart from that discussed in our below analysis. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“Petitioner also fails to provide sufficient rationale and a reasonable expectation of success in combining Krishnan and Lee to arrive at a quality assessment neural network configured to receive an image. See Pet. 34–37. For example, the Petition lacks an explanation of why a POSITA would have been motivated to modify Krishnan’s quality assessment neural network to be configured to receive an image, instead of extracted features, in view of Lee’s image-receiving category classifying neural network. Id. Without such further explanation, Petitioner’s challenge falls short. Petitioner’s argument that neural networks for image quality assessment were “well-known” is not persuasive—it does not address the particular scope of limitation 1i, which also requires that the neural network is configured to receive images. Pet. 35 (citing Ex. 1002 ¶¶ 47–51, 118; Exs. 1017, 1023, 1024, 1026). Petitioner’s argument that combining Krishnan and Lee “would merely amount to applying known work from the field . . . to yield predictable results” is not persuasive because the Petition ties this reasoning to modifying Krishnan with Lee’s view-category-specific assessment parameters, not modifying Krishnan’s quality assessment neural network to receive images instead of extracted features. Id. at 37 (citing Ex. 1002 ¶ 126). Lastly, we note Petitioner’s expert’s discussion regarding neural networks for image quality assessments. Ex. 1002 ¶¶ 43–53 (citing Exs. 1010, 1015, 1016, 1017, 1018, 1023, 1024, 1026). However, the Petition does not explain how this evidence demonstrates that the proposed combination teaches or suggests a quality assessment neural network configured to receive images, or that such would have been obvious in the context of the claimed invention. See Pet. 32–37.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,129,591
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.