- PTAB · Oct 6, 2025 · IPR2025-00438 · APJ Lilan Ren · IPR · Institution
The Board instituted IPR on claims 1–5, 7–13, and 16–20 and all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Institution of an inter partes review requires that “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim, and we institute an inter partes review.1” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner contends that an ordinarily skilled artisan “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Electrical Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 11–12. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it appears unopposed and consistent with the disclosures of the ’466 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this stage of the proceeding, neither party contends that any formal claim construction is necessary. See Pet. 6 (“Petitioner submits that no claim terms require a formal construction for purposes of evaluating the prior art and resolving issues this proceeding.”); Prelim. Resp. 12 (“For the purposes of this Preliminary Response, Patent Owner submits that the Board does not need to construe any claim terms in any particular way to conclude that the Petition is deficient and thus institution of review is not warranted.”). After reviewing the parties’ respective arguments and the evidence currently before us, however, we determine that we do not need to expressly construe any claim term to resolve any controversy at this stage of the proceeding. D. Alleged Obviousness Over Loughran and Dubois (Ground 1A)” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“The record before us supports Petitioner’s contention that the combining Loughran and Dubois is no more than a “combination of familiar elements according to known methods . . . [which] does no more than yield predictable results.” Compare Pet. 12, with Prelim. Resp. 19–23 (disputing some of Petitioner’s reasons to combine without addressing Petitioner’s reasoning based on KSR); see KSR, 550 U.S. at 416. By contrast, Patent Owner’s contentions relating to the alleged motivation to combine teachings of Loughran and Dubois lack evidentiary support. Based on our review and consideration of the current record, we are persuaded that Petitioner has adequately shown for purposes of institution that there is sufficient rationale to combine as well as a reasonable expectation of success in combining the teachings of Loughran and Dubois in the manner suggested.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,569,466 - PTAB · Jun 18, 2025 · IPR2025-00321 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–7, 9, 16, and 17, finding a reasonable likelihood that claim 1 is anticipated by Boyer.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“approximately two weeks before the statutory deadline for a final written decision, but the most recent median time-to-trial statistics for Judge Gilstrap in the Eastern District of Texas indicate that the actual trial date will likely be in July 2026, which is later than the statutory deadline to issue a final written decision in this proceeding in mid-June 2026. See Ex. 2001, 7 (median time from filing to trial of 23.2 months); Prelim. Resp. 10. Thus, we find this factor is neutral or weighs slightly against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had (1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶¶ 14–16). Petitioner also argues that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. Patent Owner proposes a slightly different level of skill, arguing that a person of ordinary skill in the art “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 24. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’713 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We note that, as discussed below, we are able to determine whether to institute inter partes review of the ’713 patent without expressly construing the term “from multiple print heads or deposition lines.” 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))). As for Patent Owner’s argument that Petitioner has failed to carry its burden to identify how the claims are to be construed, we disagree on the present record. Although Petitioner does not provide a preferred construction for the single term it proposes requires construction, Petitioner does identify which of its two alternative constructions applies to each of its asserted grounds of unpatentability. Pet. 6 (“Under the first construction, [the obviousness grounds] are applicable, and [the anticipation ground] would be excluded from the claim scope. Under the alternative construction, all of [the asserted grounds] are applicable.”). In our view, this approach does not fail to satisfy Petitioner’s burden under 37 U.S.C. § 42.104(b)(3).” slip op. at 17
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,421,713 - PTAB · Jun 18, 2025 · IPR2025-00311 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR of claims 1, 3–11, and 17–22 on all asserted grounds because Petitioner showed a reasonable likelihood of prevailing on claim 1 over Mazumder and Mori.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on Petitioner’s first stipulation filed on December 18, 2024.15 Prelim. Resp. 13–15. Patent Owner does not address Petitioner’s updated second stipulation filed on April 8, 2025. This updated second stipulation mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of any potentially conflicting decisions. See Sand at 12. We therefore find that this factor weighs against exercising discretion to deny institution. See id., n.5. 5. Whether Petitioner and the Defendant in the Parallel Proceeding are the Same Party Whereas Petitioner does not address factor 5, Patent Owner argues that the parties to this proceeding are both in the related district court litigation. Pet. 98–99; Prelim. Resp. 15. While it is common in IPR proceedings for the petitioner and patent owner to also be parties in a related district court proceeding, this factor weighs slightly in favor of discretionary denial. Fintiv, Paper 11 at 13–14.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over the combination of Mazumder and Mori. Accordingly, we institute inter partes review with respect to all claims and all grounds asserted in the Petition. 5. Claims 3, 5–7, 9, 10, and 19–22 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’324 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. See Prelim. Resp. 28–46. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 27
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). For a reference to be analogous art, it must be “either in the field of the applicant's endeavor or [be] reasonably pertinent to the problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Mazumder because “the presentation of both image types would have beneficially aided the remote user to more easily visually compare the actual image and virtual image to quickly identify any defects or problems with the fabrication process.” Pet. 23–24 (citing Ex. 1003 ¶ 113). Patent Owner argues that “it is hindsight to use ‘the invention to define the problem the invention solves.’” Prelim. Resp. 43 (quoting Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012); citing AT&T Services Inc. et. al. v. Innovative Sonic Ltd., IPR2024-001143 (PTAB Feb. 11, 2025)). According to Patent Owner, because neither Mazumder nor Mori teaches visual comparison of image types, the idea to improve the Mazumder-Mori combination by simultaneously displaying different image types and thus permitting visual comparison must be driven by hindsight. Id. at 44–45. But Petitioner cites evidence other than the ’324 patent to support the person of ordinary skill in the art having a desire to visually compare the different images presented in the Mazumder-Mori combination. Pet. 23–24 (citing Ex. 1003 ¶ 113). Specifically, Dr. Wolfe testifies that “the presentation of the actual images captured by the camera and the virtual images simultaneously within the user interface would have beneficially aided the remote user to more easily visually compare the actual image and virtual image to quickly identify any defects or problems with the fabrication process” and that a person of ordinary skill in the art would have recognized this. Ex. 1003 ¶ 113. Thus, Petitioner has shown sufficiently for the purpose of the present decision that Mori teaches or suggests the disputed limitation of claim 1. We encourage the parties to develop the arguments and the record surrounding this issue further during the trial.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,562,324 - PTAB · Jun 6, 2025 · IPR2025-00257 · APJ Lilan Ren · IPR · Institution
The Board instituted IPR on claims 1–15 and all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Cable and Naware and over Comb and Tummala.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“discussed below, we decline to exercise our discretion to deny the Petition.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). Institution of an inter partes review requires that “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“persuaded that Petitioner has sufficiently shown for purposes of institution that a person of ordinary skill in the art would have been motivated to combine the teachings of Cable and Naware in the manner argued by Petitioner. For example, both references directly relate to 3D printing, and we are persuaded that Cable teaches “a heated build platform and calls on the POSITA to implement this teaching via suitable solutions known in the art.” Pet. 13 (noting that Cable teaches a build platform that can be heated “by any suitable heating elements” (citing 1006 ¶ 45)). The current record also indicates that Naware taught known options in this regard, e.g., where it describes a build plate to be used in a 3D printing process that includes contact plates and temperature control modules. See, e.g., Ex. 1007, code (57). Petitioner additionally argues that there is a reasonable expectation of success in combining Cable with Naware because “3D printers with temperature-controlled heated build plates were well-known technologies at the time of the ’660 patent in 2014, and these technologies had been successfully demonstrated in the real-world by then.” Pet 15 (citing various portions of Ex. 1003). Patent Owner does not contest Petitioner’s arguments with respect to a reasonable expectation of success in combining Cable with Naware. See generally Prelim. Resp. Based on our review and consideration of the current record, we are persuaded that Petitioner has sufficiently shown for the teachings of Cable and Naware in the manner argued by Petitioner.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not contest Petitioner’s description of a person of ordinary skill in the art (a ‘POSITA’) having a bachelor’s degree in Mechanical Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 37. Patent Owner does not address the specific knowledge that Petitioner contends that ordinarily skilled artisan would possess. Id. For purposes of this decision, we adopt Petitioner’s unopposed definition of the level of ordinary skill in the art as it appears consistent with the disclosures of the ’660 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,592,660 - PTAB · Feb 20, 2025 · IPR2024-00996 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 13–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: [A] person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had a bachelor’s degree or higher in electrical engineering, at least 3 years of experience designing or researching electronic circuits, and familiarity with power electronics and inductive power transfer circuits. Pet. 8 (citing Ex. 1003 ¶ 20). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner adopts the Petitioner’s proposal.” Prelim. Resp. 17. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and “[h]ere, given the remarkable overlap between the preferred embodiment of the ’461 patent and the prior art/predictable combinations articulated in Grounds 1A–3, Petitioners submit that no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 8. Patent Owner states that, “[t]o simplify the issues before the Board, Patent Owner has not asserted any claim constructions in this preliminary response and adopts the Petitioner’s position that ‘[a]ll claim terms should be construed according to the Phillips standard.’” Prelim. Resp. 17 (quoting Pet. 8). On this record and for purposes of this decision, we determine that no” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments. Patent Owner does not cite to evidence, such as expert testimony, to support its implied argument that Olson’s measured current is “fundamentally different” from the current received by the primary coil. See Prelim. Resp. 31–32. Petitioner’s declarant, Dr. Woods, on the other hand, testifies, inter alia, that “[t]he ‘[c]urrent measured by current measure block 226 is used in the calculation of power, which as depicted in FIG. 14, measures the ‘power in’ provided to transmit block 214/primary coil 54.” Ex. 1003 ¶ 37 (citing Ex. 1004 ¶¶ 74–75, Fig. 14) (first alteration added); see also, e.g., id. ¶ 42 (Dr. Woods testifying that the measured current to the power supply “is the current driving the external antenna 52, via the transmit block 214 and to the primary coil 54.” (citing Ex. 1004 ¶¶ 74–75, 112, Fig. 14)). Paragraph 75 of Olson, cited in support of that testimony, provides: “The power in is gauged by the power generated by charging unit 50 and is determined by multiplying the voltage of the internal voltage of charging unit 50, e.g., the voltage of a battery or batteries internal to charging unit 50, by the current driving external antenna 52.” Ex. 1004 ¶ 75 (emphasis added). We note that external antenna 52 includes primary coil 54. See, e.g., Fig. 14. Dr. Woods’ testimony is, at this stage, unrebutted. Patent Owner also argues that “Petitioner fails to provide any evidence regarding the function of Olson’s microprocessor 212 in relation to measuring input power,” and that, “[w]hile Olson describes a power calculation in paragraph [0075], Olson does not describe this power calculation as performed by microprocessor 212.” Prelim. Resp. 32 (citing Pet. 16; Ex. 1004 ¶ 72) (first alteration added). At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments regarding the microprocessor. Although Patent Owner does not bear the burden to show patentability, we observe that Patent Owner does not suggest that there is another component in Olson’s external charging device that might perform the admittedly-disclosed power calculation. See Prelim. Resp. 32–33. Dr. Woods testifies that microprocessor 212 receives the measured current and the input voltage of the charging device, and, from those values, calculates power in. See Ex. 1003 ¶¶ 43–44 (citing, inter alia, Ex. 1004 ¶¶ 71–78, Fig. 14); see also Ex. 1004 ¶ 74, Fig. 14 (Olson stating that “[c]urrent measured by current measure block 226 is used in the calculation of power in along with the voltage of batteries 160,” and Figure 14 depicting the signal from measure block 226 as an input to microprocessor 212). Dr. Woods’ testimony is, at this stage, unrebutted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,626,461 - PTAB · Feb 20, 2025 · IPR2024-00995 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–6, 8, and 10–13 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’204 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’204 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“different from the resonant frequency of the inductive couple.” Ex. 1001, 21:16–20. The Specification then states the following: “Preferably the transmission frequency is selected to lie within one of the near-linear regions 6, 8 [of Figure 6b] where the slope of the frequency-amplitude graph is less steep.” Id. at 21:20–23; see also id. at 21:56–59 (“Referring back to FIG. 6b, the frequency of transmission is selected to be in the approximately linear region 8 of the curve between a lower frequency value of fL and an upper frequency value of fU.”9); Pet. 8 (citing the same).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,083,204 - PTAB · Dec 10, 2024 · IPR2024-00994 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–14 on all asserted grounds, finding a reasonable likelihood of success on the Onishi-based obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially 4 For purposes of this Decision, we assume the challenged claims have an effective filing date prior to March 16, 2013, the effective date of the relevant aspects of the Leahy-Smith America Invents Act, Pub. L. No. 112- 29, 125 Stat. 284 (2011) (“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103. the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’696 patent. Further, we decline to discretionarily deny inter partes review. Accordingly, we institute an inter partes review as to all the challenged claims of the ’696 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. However, Patent Owner’s declarant, Dr. Mercier, opines that [A]t the time of the ’696 Patent, a POSITA would have a working knowledge of wireless charging and inductive charging. The person would have gained this knowledge through an undergraduate Bachelor of Science degree in electrical engineering, computer engineering, computer science, or a related field, with at least two years of experience working in the field of wireless or inductive charging device design, or testing of such wireless or inductive charging device testing, or 5 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. an equivalent combination of academic study and work experience. More education (e.g., a Master’s degree) or work experience any relevant field may compensate for a deficit in one of the relevant qualifications stated above. Ex. 2001 ¶ 26. We observe that, in Dr. Mercier’s definition, the undergraduate degree categories are a bit broader and the experience possibly a bit more specific than in Petitioner’s definition. However, at this stage and absent argument to the contrary by the parties, we discern no material difference between the parties’ definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Dr. Mercier’s assessment, the outcome of this Decision would be the same.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“near-linear region—consistent with the quoted applicant’s use of the term “near-linear”—rather than a linear or non-linear region, which seemingly would encompass the entire curve. As to the second part, we understand Patent Owner to be referring to the purported benefit of linear control, and we determine that Patent Owner has not explained adequately why such a benefit should be read into the claim term “substantially different,” particularly where the quoted Specification support does not explicitly mention linear regulation.7 See Ex. 1001, 21:61–63 (“The induced voltage 7 To the extent that Patent Owner relies on its declarant’s testimony as an explanation of Patent Owner’s claim construction position, we remind Patent Owner about the prohibition on incorporation by reference. See 37 C.F.R. § 42.6(a)(3); Consolidated Trial Practice Guide, November 2019, 35–36 can be increased by reducing the transmission frequency and can be reduced by increasing the transmission frequency.”). On this record and for purposes of this decision, we determine that— consistent with the Specification’s description of the frequency that is “[p]referably . . . selected” and applicant’s argument regarding the same during prosecution—“a transmission frequency substantially different from said characteristic resonant frequency of said inductive couple” encompasses frequencies that lie within one of the near-linear regions of a frequency-amplitude graph associated with the inductive couple. See Ex. 1001, 21:20– 24; Ex. 1002, 70. At this time and for purposes of this Decision, we need not and do not reach the issue of the outer bounds of the scope of “substantially different.” We also note that independent claim 1 is an apparatus claim and the subject limitation 1.7 further defines the “driving circuit” recited in limitations 1.5 and 1.6. Specifically, limitation 1.7 requires a driving circuit that is “configured and operable to produce said oscillating driving voltage at a transmission frequency” that is “substantially different” from the inductive couple’s resonant frequency. Ex. 1001, 28:43–46. In future briefing, the parties’ arguments regarding the prior art references should focus on that recited structure, i.e., a circuit that is configured and operable to produce the recited frequency.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,048,696 - PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - PTAB · Nov 14, 2024 · PGR2024-00026 · APJ Hyun J Jung · PGR · Institution
Instituted PGR on claims 1–7 and all grounds because Petitioner showed it was more likely than not that at least one challenged claim lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s arguments, cited portions of the Specification, and supporting testimonial evidence demonstrate that it is more likely than not that claims 1–7 are unpatentable.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“patent describes that “angular position transducer 78 is placed on top of swing leg pivot shaft 24” and that “pivot shaft 24 is rotationally fixed to the connector plate and duplicates the angular movements of swing leg 20 about the pivot shaft.” Ex. 1001, 12:15–16, 12:20–22, Figs. 5, 7. The ’723 patent also describes that “[a]ngular position transducer 78 is mounted inside . . . protective can 90 . . . which is bolted to hinge bracket 28 via an upright holding arm 92” and that “trigger pin 94 projects upwardly from the top surface of pivot shaft 24 and cooperates with angular position transducer 78 to generate an angular position signal.” Id. at 12:28–33, Fig. 5. These descriptions expressly convey that angular position transducer 78 is on pivot shaft 24 and mounted inside protective can 90 that is bolted to hinge bracket 28. Id. at 12:15–16, 12:20–22, 12:28–30, Figs. 5, 7; see also Prelim. Resp. 17 (describing the same embodiment shown in Figs. 5 and 7). According to Petitioner, the ’723 patent describes the pivot shaft as part of the hinge bracket, not the modular frame or swing leg. Pet. 109–110 (citing Ex. 1001, 7:42–46, 12:17–22). On the preliminary record, we agree because the cited portions of the Specification describe that a “hinge bracket is interposed between each swing leg and an associated surface of the bolsters and includes a fixed, upright pivot shaft that pivotally engages the swing leg for pivotal movements” and “pivot shaft 24 is rotationally fixed to the connector plate.” Ex. 1001, 7:42–45, 12:20–21. We also agree that “even if one were to find that the hinge bracket is part of either the modular frame or swing leg (contrary to the claims and specification treating these all as separate components), the specification would only provide written description for one of the claimed alternatives.” Pet. 110 (citing Ex. 1002 ¶ 199).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether it is more likely than not that at least one of the claims challenged in the petition is unpatentable. 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)).” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We will also not use our discretion under § 325(d) to deny the Petition based on arguments previously presented in IPR2021-00135, because Petitioner relies on a Board determination regarding claim 8 from IPR2021- 00136, not arguments previously made for claim 1 in IPR2021-00135. Pet. 111–115, 119; Prelim. Resp. 8–9; Prelim. Sur-reply 5. Furthermore, we determined the effective filing date of claim 8 of the ’571 patent without deciding, that other challenged claims, such as claim 1, were entitled to their earliest possible effective filing date. See Godberson-Smith, Paper 61 at 11, 12.” slip op. at 12
Claim construction§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,772,723 - PTAB · Nov 14, 2024 · IPR2024-00835 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable over CIII and Rio.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Advanced Bionics stated that: If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments. It informs, therefore, the petitioner’s showing under factors (e) and (f), which focus on the petitioner’s evidence of previous Office error regardless of the context in which the same or substantially the same art or arguments were previously presented. For example, if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f). On the other hand, if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record. That is, although Becton, Dickinson factor (c) evaluates “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” the focus should be on the record when determining whether the Office erred in evaluating such art or arguments.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its challenge that CIII and Rio teach, suggest, or would have been understood to disclose the limitations of claim 1 and that one of ordinary skill in the art would have combined the references in the manner asserted with a reasonable expectation of success.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“track” that “is configured to rotate . . . relative to the jacking column,” Petitioner proposes modifying CIII in view of Rio “by positioning Rio’s rotary actuator 44 between the jacking column and crawler track, and using that rotary actuator to rotate CIII’s crawler track relative to the entire jacking column, rather than just its outer cylinder.” Pet. 45 (citing Ex. 1002 ¶ 89) (emphasis added); see also id. at 47 (citing Ex. 1002 ¶ 92; Ex. 1006, 5:8–11, 6:2–6). Petitioner argues such a modification would have been a design choice, one of a finite number of alternatives, obvious to try, and a known design that provides maneuverability. Id. at 29–31 (citing Ex. 1002 ¶¶ 61–67; Ex. 1006, 5:8–11; Ex. 1007, 5:14–59, Figs. 4–5; Ex. 1008, 7:35– 53, Figs. 7, 20; Ex. 1009 ¶¶ 5, 19–20, Fig. 2; Ex. 1011, 4:7–16, Fig. 3; Ex. 1013 ¶¶ 41, 44–45). At this stage, Petitioner’s arguments and cited evidence sufficiently support for institution that the modification would have been made so that the proposed combination would have had “a crawler track” that “is configured to rotate . . . relative to the jacking column.” Regarding claim 1’s “slew drive,” as discussed above, Petitioner proposes modifying CIII so that rotary actuator 44, the asserted slew drive, would be between the jacking column and crawler track. See Pet. 29–31. Petitioner also argues that, in the proposed combination, “actuating the rotary actuator causes the crawler track to rotate relative to the entire jacking column.” Id. at 47 (citing Ex. 1002 ¶ 92). The present record supports Petitioner’s argument that Rio’s worm gear actuator would have been understood to disclose a slew drive with support from the ’318 patent itself, the opinion of its declarant, and deposition testimony of Patent Owner’s expert in related litigation. Id. at 46–47 (citing Ex. 1001, 11:40–61; Ex. 1002 ¶ 91; Ex. 1006, 4:61–5:3; Ex. 1032, 84:12–86:17). At this stage, the cited evidence sufficiently supports for purposes of institution Petitioner’s argument that the proposed combination would have included the recited “slew drive.”” slip op. at 28
- Skill levelSkill level petitioner adoptedOther
“had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 8– 9 (citing Ex. 1002 ¶¶ 22–24). Petitioner also argues that “[a]dditional experience could substitute for a formal degree, and an advanced degree could substitute for experience.” Id. at 9 (citing Ex. 1002 ¶¶ 22–25). Petitioner states that “[t]he Board adopted this definition of the level of ordinary skill for the related ’749 patent.” Id. (citing Godberson-Smith Const. Co. v. Guntert & Zimmerman Const. Div., Inc., IPR2020-01698, Paper 80, 21–24 (PTAB Apr. 12, 2022) (Final Written Decision)). For purposes of its Preliminary Response, Patent Owner applies Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 13 (quoting Pet. 8–9). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. Pet. 8–9; Godberson-Smith, Paper 80 at 21–24 (determining level of ordinary skill after considering the parties’ competing proposals and evidence).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,535,318
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.