- PTAB · Feb 10, 2026 · IPR2025-00687 · APJ Kristina M Kalan · IPR · Remand
On remand, the Board instituted IPR on claims 1–8 and 10–18 over all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRemand decision- RemandInstituted
“Paper 34, 1 (requesting “Director Review of the Director’s August 22, 2025 Decision Referring the Petition to the Board (‘Referral Decision’)”). Patent Owner argued that institution of IPR2025-00687 and IPR2025-00688 “should be discretionarily denied.” Id. at 5. Petitioner opposed. Paper 37. The Director granted review and found that “granting institution of two petitions that each challenge the same claims of the ’370 patent and ’218 patent 2” was an “abuse[] of discretion.” Paper 40, 1. The Director remanded the cases “to the Board panel to determine which of the two petitions challenging each of the ’370 and ’218 patents to institute.” Id. at 3. Pursuant to the Director’s instruction that we choose only one of the two petitions challenging the ’370 patent to institute, and for the reasons set forth below, we choose to institute review of the ’370 patent in this Petition, and not in IPR2025-00688.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Petitioner bears the burden of demonstrating compliance with 35 U.S.C. § 312(a)(2) and § 315(b). See, e.g., Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 (PTAB Jan. 24, 2019)” slip op. at 9
- 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). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “[does] not, at this time, contend that any term requires construction,” and instead, states that “[a]ll terms have been accorded their plain and ordinary meaning.” Pet. 11 (citing Ex. 1002 ¶¶ 212–215). Patent Owner asserts that it “does not presently propose any constructions,” but discusses the Board’s claim construction in IPR2020- 00834, Paper 18, 7–8. Prelim. Resp. 7. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,933,370 - PTAB · Dec 12, 2024 · IPR2024-00986 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 3, 4, and 6 on all grounds, finding a reasonable likelihood that the claims are unpatentable over Shin despite concerns about Ground 2.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In its Preliminary Response, Patent Owner applies Petitioner’s definition. Prelim. Resp. 10 (citing Pet. 7–8). Petitioner’s definition appears consistent with the challenged patent and the prior art of record. See Pet. 7–8. Thus, we apply that definition.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes giving each term its plain and ordinary meaning. Pet. 7. Patent Owner agrees. Prelim. Resp. 10. On the current record, no terms are in controversy, and the Board does not need to construe any term here.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightOther
“We agree that Petitioner’s obviousness rationale appears to be based on the challenged patent’s disclosure—at least in part. See Pet. 46–47 (citing Ex. 1001, 1:25–50), 61 (citing Ex. 1001, 2:34–40). Dr. Mark P. Mahon’s corresponding testimony relies on the same parts of the challenged patent, adding little additional technical reasoning or support from the prior art of 8 Petitioner cites “Section 5.8a.1.3.”, but the quoted passage appears in Section 5.8.1.3. Pet. 60 (emphasis added). challenged patent itself raises the possibility that Petitioner has succumbed to impermissible hindsight bias. See Zoltek Corp. v. United States, 815 F.3d 1302, 1313 (Fed. Cir. 2016) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007)) (discussing the “the distortion caused by hindsight bias”); see also InTouch Tech., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It appears that [the expert] relied on the . . . patent itself as her roadmap for putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”). Even so, the preliminary record also indicates that it may be inherent in an NB-IoT system that “DCI indicating an SC-MCCH change notification must be transmitted in a different subframe from the DCI indicating a resource for the updated SC-MCCH information.” Pet. 61. This is a factual issue best resolved on a fully developed record.” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for patent owner
“We see no basis for using China Standard Time here. “The time and date of receipt of an application filed via EFS-Web is the local time and date in USPTO headquarters in Alexandria, Virginia.” Manual of Patent Examining Procedure (MPEP) § 502.05 I.C.2 (9th ed. Rev. 07.2015, Nov. 2015) (emphasis added).7 The MPEP provides an example of how an application filed from the Pacific Time Zone would receive the filing date as of the USPTO’s local time: For example, if an applicant in California officially files a patent application with the USPTO through EFS-Web by clicking on the SUBMIT button at 10 p.m. Pacific Time in California on May 1, that application would be officially received by the USPTO at 1 a.m., local time (i.e., Eastern Daylight Time) on May 2. Accordingly, the application would receive a filing date of May 2. Id. Thus, we disagree with Patent Owner’s argument that Fujishiro is not prior art for this reason. Prelim. Resp. 28–29.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,785,764 - Apple Inc. v. Masimo CorporationInstitutedPTAB · Jun 27, 2024 · IPR2024-00294 · APJ David Cotta · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all grounds asserted in the Petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims are unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–20 of the ’507 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).11 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00293 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv.” slip op. at 10
- Parallel petitionsDecided for petitioner
“Discretionary Denial in View of Parallel Petitions Petitioner filed two petitions for inter partes review of claims 1–20 of the ’507 patent, this Petition and the petition filed in IPR2024-00293. See Apple Inc. v. Masimo Corp., IPR2024-00293, Paper 3 (PTAB, filed December 12, 2023). Patent Owner argues that Petitioner “fails to establish that two petitions on the ’507 Patent are necessary” and that “if the Board institutes one of the Petitions, it should deny the other.” Paper 8, 1. This argument is moot because, concurrently herewith, we deny institution of inter partes review in IPR2024-00293 on the merits. III.” slip op. at 11
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The main differences between the parties’ definitions of the POSA appear to be that Patent Owner specifies that the POSA’s knowledge and experience may include optical sensors and that the POSA may have a degree emphasizing software. On the present record, we do not deem these differences material, particularly because the optical sensors and technologies at issue are those used in physiological monitoring technologies and both parties agree that the POSA would have a working knowledge of physiological monitoring technologies. Ex. 1003 ¶ 24; Prelim. Resp. 6. We find the additional specificity of Patent Owner’s definition to be helpful. In addition, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’507 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We note that we would reach the same outcome under either definition of the POSA.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,736,507 - PTAB · Sep 1, 2023 · IPR2023-00712 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on claims 6–8, 14, and 16–18 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv Order 5–6. In evaluating these factors, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. Additionally, the Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation issued by the Director of the United States Patent and Trademark Office (the “Memorandum”)10 provides that the Board will not discretionarily deny institution of inter partes review “where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Memorandum, 3.” slip op. at 9
- Parallel petitionsNot reached
“9 Petitioner filed an Explanation of Parallel Petitions in both this proceeding and in IPR2023-00713 stating that it requests that the Board consider the Petition in this proceeding first, followed by the petition filed in IPR2023- 00713. Paper 4, 1. Accordingly, we do not reach the issue of whether institution of inter partes review based on a second petition is warranted in this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). 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). Moreover, a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In determining the level of ordinary skill in the art, various factors 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) (citation omitted). Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree and/or master’s degree in mechanical engineering or industrial design, along with at least 4 to 6 years of experience designing consumer or medical device products to optimize human factors such as handleability or ergonomics.” Pet. 7. Patent Owner asserts that a person of ordinary skill in the art would have “completed college-level coursework, and/or obtained a bachelor’s degree, in engineering, such as mechanical engineering or biomechanical engineering, or another similar discipline, and (2) have had at least one year of experience researching, developing, and/or designing mechanical medical devices.” Prelim. Resp. 5. Patent Owner further states that its Preliminary Response “does not turn on the definition of a [person of ordinary skill in the art].” Id. Although Patent Owner notes that Petitioner proposes “a higher level of skill,” at this stage of the proceeding neither Party has shown a material difference between the levels of skill each has proposed and either Party may further address the issue, if necessary, during the trial. For purposes of this Decision, we apply Petitioner’s proposed level of skill because, on the current record, it is consistent with the level of skill at the time of the claimed invention reflected by the ’635 patent and the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,840,635 - PTAB · May 31, 2022 · IPR2022-00402 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1–30, finding a reasonable likelihood of success on the anticipation challenge and all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Petitioner has shown that Pioneer Hi-Bred discloses examples of synthetic guide RNA and crRNA molecules having the recited modifications at their 3’ and 5’ ends. See Pet. 20–24 (referring to Table 8 of Ex. 1006). That disclosure undermines the Applicant’s arguments during prosecution that: (1) “a skilled person would not modify a CRISPR guide RNA or crRNA at the particularly claimed positions,” and (2) the reference to “‘securing or steadying the structure’ of RNA in [Zhang] relates to secondary structure” as opposed to “modifications at the claimed positions,” i.e. within five nucleotides from one or both of the ends. Ex. 1002, 783. Both of these arguments were credited by the Examiner as reasons for withdrawing the rejection over Zhang. Id. at 783–784. Thus, Petitioner has sufficiently shown that the Examiner materially erred by not recognizing the relevance of Pioneer Hi-Bred’s disclosure and in particular the crRNA examples in Table 8.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“On the current record, we determine that the merits of Petitioner’s anticipation ground appear to be particularly strong for the independent claims and for those dependent claims where Petitioner’s arguments are similarly premised on the crRNA examples in Table 8 being anticipatory without any further modification. See infra § V.E (explaining that, on the current record, Petitioner has shown that Pioneer Hi-Bred Table 8 discloses presumptively-enabled examples that read on claims 1 and 12 as well as a number of the dependent claims). Accordingly, we find that this factor weighs strongly against exercising discretion to deny institution. G. Weighing of Fintiv Factors Considering the Fintiv factors as part of a holistic analysis of the factors discussed above, we are not persuaded that the interests of the efficiency and integrity of the system would be served by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. Accordingly, we do not exercise our discretion to deny institution under § 314(a).” slip op. at 18
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art Relying on the testimony of its declarant, Dr. Furneaux, Petitioner contends that a POSA “as of December 3, 2014 (the earliest possible priority date of the ’001 Patent) would have had a Ph.D. in molecular biology, biochemistry, or a related discipline.” Pet. 12 (citing Ex. 1003 ¶ 60). Patent Owner’s declarant, Dr. Marshall, applies the same definition for his analysis. Ex. 2003 ¶ 85. At this stage in the proceeding, we find this description of the level of ordinary skill in the art to be sufficiently supported by the record. Thus, for purposes of this decision, we adopt the description of a POSA noted above.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party identifies any claim term for construction. Pet. 17; Prelim. Resp. 35. We agree that no formal claim construction is necessary at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that it is only necessary to “construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,337,001 - Streck, Inc. v. Ravgen, Inc.InstitutedPTAB · Apr 22, 2022 · IPR2021-01577 · APJ Timothy G Majors · IPR · Institution
The Board instituted inter partes review of claims 55–61, 68, 69, 80–86, 89–92, 94, 126–130, 132, and 133 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We do not agree that General Plastic Factor 1 favors discretionary denial on this record. To be sure, Streck’s tubes feature prominently in Patent Owner’s infringement allegations against Quest, Natera, and other customers. See Exs. 2065, 2178, 2179, and 2196 (identifying, collectively, Streck’s tubes dozens of times). And, as evidenced by the filing of its own petition, Streck is also interested in seeing claims of the ’277 patent held unpatentable. But Streck is not a defendant in any action brought by Patent Owner related to the ’277 patent. Nor is there any assertion or indication that Streck’s blood collection tubes infringe the methods claimed in the ’277 patent. These facts, at minimum, distinguish this case from Valve. Valve at 9–10 (explaining that Valve and HTC were co-defendants sued at the same time in the same case, based on the same allegedly infringing devices that HTC and Valve co-developed).” slip op. at 17
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“each case, taking account of equitable and practical considerations. CTPG 13; RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 at 7–8 (PTAB Oct. 2, 2020) (precedential) (hereafter “RPX”) (asking “whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner”) (quoting Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018)). Two questions are at the heart of the RPI inquiry: whether the non-party desires review of the patent and whether the petition has been filed at the non-party’s behest. RPX at 7–8; see also CTPG at 16 (explaining that a “common consideration” is “whether the non-party exercised or could have exercised control over a party’s participation in proceeding”). Privity is a more expansive concept because a privy need not be an RPI. RPX at 37; CTPG at 13.” slip op. at 59
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“each case, taking account of equitable and practical considerations. CTPG 13; RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 at 7–8 (PTAB Oct. 2, 2020) (precedential) (hereafter “RPX”) (asking “whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner”) (quoting Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018)). Two questions are at the heart of the RPI inquiry: whether the non-party desires review of the patent and whether the petition has been filed at the non-party’s behest. RPX at 7–8; see also CTPG at 16 (explaining that a “common consideration” is “whether the non-party exercised or could have exercised control over a party’s participation in proceeding”). Privity is a more expansive concept because a privy need not be an RPI. RPX at 37; CTPG at 13.” slip op. at 59
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Altogether, we determine that Petitioner has met its threshold burden and established to a reasonable likelihood that at least claim 55 would have been obvious over Pertl and Granger. Petitioner cites evidence to support its assertions on the other challenged claims, none of which are separately argued by Patent Owner at this stage. Pet. 32–42. Considering Petitioner’s argument and evidence, Petitioner is reasonably likely to prevail in establishing that one or more of those additional claims are unpatentable over Pertl and Granger.” slip op. at 51
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,332,277 - PTAB · Apr 12, 2022 · IPR2021-01565 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–24, finding a reasonable likelihood that at least one challenged claim is unpatentable based on the petition’s asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Legal Standards “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes two highly similar and interrelated versions of a person of ordinary skill in the art. The first comprises a multidisciplinary team consisting of at least (1) a person (“Engineer POSA”) with either (a) a bachelor’s or master’s degree in mechanical engineering, biomedical engineering or a similar field, as well as two or more years of work experience with catheters or similar medical devices, or (b) a Ph.D. in mechanical or biomedical engineering, or in a similar field; working with (2) a person with an M.D. or analogous degree and five or more years of work experience in interventional cardiology, hemodynamics or a similar discipline (“Clinician POSA”). Pet. 24–25; Ex. 1002 ¶¶ 97–98; Ex. 1004 ¶¶ 54–55. In the second, Petitioner recasts the above team as a collection of skilled artisans in complementary fields, specifically, an Engineer POSA receiving assistance from, or equivalent to that provided by, a Clinician POSA; a Clinician POSA receiving assistance from, or equivalent to that provided by, an Engineer POSA; or a single person with the qualifications of both an Engineer POSA and a Clinician POSA. Pet. 25; Ex. 1002 ¶ 99; Ex. 1004 ¶ 56. However phrased, Petitioner’s proposed definition indicates a high level of skill in the relevant art.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Consistent with this portion of the Specification, the parties agree that maintaining systemic pressure excludes “reducing pressure like prior treatments.” See Prelim. Resp. 13, 20 (quoting Pet. 26). But because the record does not make clear how broadly one of ordinary skill in the art would have defined hypotension—let alone the conditions under which hypotension activates the renin angiotensin aldosterone system—the parties are encouraged to address how one of ordinary skill in the art would understand the range of pressure (if any)—and any permissible temporal variance—encompassed by the term “maintaining.”” slip op. at 30
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Considering the intrinsic record and the testimony of Dr. Garcia, Petitioner has the better argument on present record. For the purpose of institution, we provisionally construe “maintaining intravascular pressure,” as used in independent claims 1 and 13 to mean, “maintaining pressure within blood vessels or a blood vessel” and encompassing: 1) maintaining a systemic pressure that does not lead to hypotension; 2) maintaining an isolated region of reduced pressure between pairs of occlusion devices; and 3) maintaining a region of reduced pressure in the vicinity of an occlusion device. The parties are encouraged to submit additional argument and evidence as to the meaning of this term at trial. 2. “distal restrictor,” the catheter extends across a vein wall,” and “resistors” Patent Owner “does not take a position on the constructions of the remainder of [the terms addressed by Petitioner] for the purposes of this Preliminary Response because no issue that must be decided by the Board depends on them.” Prelim. Resp. 12. While we agree with Patent Owner that our Decision on Institution does not depend on a precise meaning of “distal restrictor,” “the catheter extends across a vein wall,” or “resistors.” Petitioner presents reasoned argument and evidence as to their meaning, which we find useful in understanding the claims as a whole, and Petitioner’s proposed definitions appear consistent with the intrinsic evidence of record. In the interest of clarity, we provisionally adopt Petitioner’s proposed definitions for these terms, and invite Patent Owner to address the meaning of any relevant claim term at trial.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,639,460 - PTAB · Feb 9, 2022 · IPR2021-01339 · APJ David Cotta · IPR · Institution
The Board instituted inter partes review of claims 1–16, 18–26, and 28–31, finding a reasonable likelihood that Brcka anticipates some challenged claims and renders the others obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“35 U.S.C. § 314(a) and deny institution in light of the advanced stage of the parallel district court proceedings involving the ’538 patent. Prelim. Resp. 5–27; Prelim. Sur-reply 1–5. Petitioner contends that Petitioner is not a party to any of the parallel district court proceedings involving the ’538 patent, and resolution of those parallel proceedings would not resolve the dispute between Petitioner and Patent Owner with respect to the present proceeding. Pet. 10–15; Prelim. Reply 1–5. In assessing whether to exercise such discretion, the Board weighs six non-exclusive factors, known as the Fintiv factors. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). Recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor,” the Board “takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“are anticipated by Brcka. Pet. 30–44. We provided an overview of the prior art above. Petitioner shows, based on this preliminary record, where each of the limitations of the challenged claims is disclosed in Brcka. Id. Petitioner’s assertions are backed by the cited prior art and by the testimony of its declarant, Dr. Shanfield. Id.; see also Ex. 1003 ¶¶ 68–107. On this preliminary record, we determine that Petitioner’s arguments and evidence are sufficient for purposes of institution. We focus our discussion on Patent Owner’s arguments to provide guidance to the parties. Prelim. Resp. 38–44.” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“illustrating Brcka’s “fault detection analysis.” Pet. 32–33; see also, Ex. 1003 ¶¶ 72–73. Figure 4 is a “flow diagram demonstrating operation of a learning system and a neural network model designed in accordance with at least one embodiment of [Brcka’s] invention.” Ex. 1005 ¶ 44. In step 415 of the operation disclosed in Figure 4, “a determination is made whether maintenance has been performed or a machine failure has occurred.” Id. ¶ 44, Fig. 4. In step 440, “a determination is made whether maintenance is needed.” Id. ¶ 45; Fig. 4. Thus, Brcka determines whether a failure has occurred, accounts for this determination by assigning a “reward value” (Fig. 4, step 425), and then decides whether maintenance is needed. On this record, the analysis reflected in these steps qualifies as a “fault detection analysis.”” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Obviousness over Brcka Petitioner asserts that claims 3–5, 7, 8, 14–16, 20, 24–26, 30, and 31 would have been obvious over Brcka. Pet. 31–33. Petitioner provides documentary and testimonial evidence to back its assertions. Id.; see also Ex. 1003 ¶¶ 108–143. Patent Owner argues that claims 3–5, 7, 8, 14–16, 20, 24–26, 30, and 31 are not rendered obvious by Brcka because of the alleged shortcomings of Brcka with respect to the claims challenged as being anticipated, and because Petitioner has not asserted the knowledge of a POSA remedies these alleged shortcomings. See Prelim. Resp. 45. For the reasons discussed above, on the current record, we do not find these arguments persuasive. IV. CONCLUSION On this preliminary record, Petitioner has established a reasonable” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,676,538 - Illumina, Inc. v. Ravgen, Inc.InstitutedPTAB · Jan 26, 2022 · IPR2021-01271 · APJ David Cotta · IPR · Institution
The Board instituted review of claims 1, 3–9, 21, 22, and 24–30 after finding a reasonable likelihood of unpatentability on the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that the challenged claims are unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–9, 21, 22, and 24–30 of the ’720 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“For the reasons above, we find that Factor 1 weighs against denial of Illumina’s Petition.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Overall, we consider Fintiv factor 6 to be neutral. 7. Balancing the Fintiv Factors We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. In our view, the facts weighing against exercising discretion to deny institution collectively outweigh those favoring denial and concerns about potential inefficiency or integrity of the system. For these reasons, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes the following POSA definition: [A POSA] would have had “a M.D. and/or Ph.D. in a related area such as genetics, biochemistry, molecular biology, cell biology, 36 or microbiology and at least one to two years of work in one of those related areas, [or] a Bachelor’s degree in one of the foregoing areas and at least three to four years of work in that area.” Pet. 12 (quoting Ex. 1020 ¶ 15). Petitioner additionally asserts that “[b]ased on this asserted level of skill, the POSA . . . would have had academic or industry experience collecting and analyzing cell-free nucleic acid, such as DNA, from blood samples.” Id. Patent Owner proposes substantially the same definition. Prelim. Resp. 11 (citing Ex. 2001 ¶ 32). To the extent there are minor differences in the proposals, Patent Owner’s declarant testifies that such differences are not material and his “opinions . . . would not change if Dr. Levy’s [i.e., Petitioner’s] proposed level of ordinary skill were adopted.” Ex. 2001 ¶ 34. The parties are in substantial agreement on the POSA level, and we adopt Petitioner’s proposal for this Decision. Our determinations below would not change if we adopted Patent Owner’s minimally different level.13” slip op. at 36
Claim construction§ 102 anticipationDiscretionary denialcites GrahamPatents in suitUS 7,727,720 - Illumina, Inc. v. Ravgen, Inc.InstitutedPTAB · Jan 26, 2022 · IPR2021-01272 · APJ Timothy G Majors · IPR · Institution
The Board instituted review of claims 55–63, 66–69, 80–91, 94–96, 126–130, 132, and 133 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We do not agree with Patent Owner that Factor 1 weighs in favor of discretionary denial here. To the extent there is any relationship between Illumina and the earlier challengers, we find that such relationship is not a “significant” one, such as contemplated by Valve. First, although Illumina, Natera, Quest, and Labcorp are each defendants accused of infringing the ’277 patent, unlike Valve, they are not co-defendants in the same case. Valve at 9–10. Nor were Illumina and the other parties sued at the same time—Patent Owner instead sued those parties in seriatim district court complaints filed over approximately six months starting in mid-2020. Exs. 2086, 2087, 2088, and 2089. Thus, the staggered nature of the alleged follow-on challenges by those parties can be reasonably explained by Patent Owner’s elected timetable for suing the defendants.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“7. Balancing the Fintiv Factors Altogether, considering and balancing the Fintiv factors holistically, we decline to invoke our authority to deny the Petition on a discretionary basis under § 314(a).” slip op. at 38
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION On this preliminary record, Petitioner has established a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable based on grounds advanced in the Petition. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is granted, and we institute inter partes review of claims 55–63, 66–69, 80–91, 94–96, 126–130, 132, and 133 based on the grounds asserted in this Petition;” slip op. at 66
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“Based on the current record, we find that Petitioner has met its institution burden in establishing that Landes is entitled to claim the priority benefit of the Landes Provisional and, thus, is prior art to the ’277 patent. On the matter of written description support under § 112, the claims of Landes (claims 1–4) appear unchanged in the Landes Provisional (claims 1– 4). Compare Ex. 1003, 22–23, with Ex. 1006, 21–22. Petitioner also provides citations to the specification of the Landes Provisional that, while broad, correspond to several disclosed alternative embodiments, and the various working examples (Materials and Methods and Experimental Examples 1–5) that describe and explain how to carry out the methods claimed. Pet. 17–19 (citing, e.g., Ex. 1006, 8:7–9:27, and 10:1–20:12). Patent Owner cites precedents for the proposition that, in some circumstances, the presence of the same claim language in an original disclosure may not be enough to satisfy the description requirement. Prelim. 49 Resp. 23–24. But Patent Owner provides neither specific argument nor evidence that this is one of those circumstances. If Patent Owner believes there is some particular deficiency with respect to Landes’s claims and the written description requirement, Patent Owner leaves it unsaid.” slip op. at 49
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,332,277
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.