- PTAB · Apr 17, 2025 · IPR2024-01473 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 7, 17, and 22–25 because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim, including its Cai-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering the arguments and evidence currently of record, we determine the Petition demonstrates “a reasonable likelihood that [P]etitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of claims 1–4, 6, 7, 17, and 22–25 of the ’360 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficient. According to the ’360 patent, “[t]he field of the invention is related to sensor arrays for the detection and diagnosis of disease states.” Ex. 1001, 1:28–29. The Specification describes accomplishing such by analysis of protein coronas using techniques such as LC-MS/MS. See id. at 4:43–5:2 (describing Figure 1). The prior art cited by Petitioner also describes the analysis of protein coronas using similar analytical techniques. See, e.g., Ex. 1005, 584; Ex. 1007, 1870; Ex. 1008, 355–356. Accordingly, the present record supports that a POSA would have an understanding of both proteins and the analytical techniques, e.g., mass spectrometry, that can be used to characterize them. We understand Petitioner’s definition of a POSA to encompass these elements. It requires a formal degree in chemistry,5 which itself entails some knowledge of proteins and related analytical techniques, along with several years’ additional experience in proteomics, protein analysis, or mass spectrometry. Moreover, Petitioner’s definition is flexible in that it allows higher education or skill with, e.g., mass spectrometry, to make up for a lack of specific experience with proteomics assay and protein coronas. This explanation is reasonable and supported on the current record.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Third, and perhaps most importantly, there is “no requirement for perfect match between an expert’s experience and the relevant field.” See Consolidated Trial Practice Guide (Nov. 2019) 34, available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“CTPG”). (citing SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)). A person need not be a person of ordinary skill in the art to testify as an expert under Federal Rule of Evidence 702, but rather must be “qualified in the pertinent art.” Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008). Here, there is no dispute that Dr. Vargas is qualified in the art of mass spectrometry and, on the current record, we discern no reason why she is not qualified to offer the testimony in her declaration. At most, Patent Owner’s argument that Dr. Vargas lacks experience “perform[ing] mass spectrometry techniques specifically for protein analysis,” goes to the weight we should afford her testimony at trial. See Prelim. Resp. 28–29. It is not a sufficient reason to deny institution, particularly given that Dr. Vargas’s testimony is only part of the showing offered in support of the Petition. 6 Patent Owner’s narrow characterization of Dr. Vargas’s experience (see Prelim. Resp. 28–29) is arguably inconsistent with the description in her CV (Ex. 1004). In any event, Patent Owner will have an opportunity to examine Dr. Vargas regarding her qualifications.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “submits that no express construction of terms is necessary.” Pet. 15. Patent Owner agrees no construction is needed at this stage. See Prelim. Resp. 26. We agree that no formal claim construction is necessary for this decision. 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)). To the extent we have concerns regarding the parties’ apparent interpretation of the claim language, or in some instances Patent Owner’s attempt to read-in unrecited limitations, we address those arguments below.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,435,360 - PTAB · Mar 13, 2025 · IPR2025-00104 · APJ Michael A Valek · IPR · Institution
The Board instituted review of claims 1, 2, 4–7, and 9–18 on all petition grounds and granted joinder to IPR2024-00770.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1. The “Reasonable Likelihood” Standard for Instituting Trial In the 770 IPR, we determined that Petitioner TikTok Inc. (“TikTok”) satisfied the “reasonable likelihood” standard for instituting trial. See IPR2024-00770, Paper 8 (“770 IPR Inst. Dec.”) at 13–48. Here, Petitioner presents substantively identical challenges to claims 1, 2, 4–7, and 9–18 of the ’030 patent based on the same prior art, the same evidence, and the same unpatentability theories as TikTok presents in the 770 IPR. Compare Pet. 10–81, with IPR2024-00770, Paper 2 (“770 Pet.”) 11–81; see also Mot. 5 (asserting that “[t]here are no substantive differences between the LifeScan Petition and the [770] IPR Petition”). Because Petitioner presents substantively identical challenges to claims 1, 2, 4–7, and 9–18 of the ’030 patent based on the same prior art, evidence, and unpatentability theories in the 770 IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons the “reasonable likelihood” standard for instituting trial was satisfied in the 770 IPR. See 770 IPR Inst. Dec. 13–48.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“If joined to the 770 IPR, Petitioner agrees “to adhere to all applicable deadlines set forth in the [770] IPR Scheduling Order.” Id. at 7. Petitioner also stipulates that it “will act as an ‘understudy’ and will not assume an active role unless Petitioner TikTok ceases to participate in the proceeding.” Id. a 2. Petitioner agrees that the following conditions will apply “[u]nless and until Petitioner TikTok ceases to participate in the [770] IPR”: a) The Joining Petitioners shall not make any substantive filing and shall be bound by the filings of Petitioner TikTok, unless a filing concerns termination and settlement, or issues solely involving the Joining Petitioners; b) The Joining Petitioners shall not present any argument or make any presentation at oral hearing unless an issue solely involves the Joining Petitioners, or when addressing Board-approved motions that do not affect Petitioner TikTok, or its respective position; c) The Joining Petitioners shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving the Joining Petitioners; d) The Joining Petitioners shall not seek discovery from Patent Owner on issues not solely involving the Joining Petitioners; e) The Joining Petitioners will not rely on expert testimony beyond that submitted by Petitioner TikTok unless Petitioner TikTok is terminated from the case. Id. at 7–8. For the reasons stated by Petitioner in the Motion, and in the absence of any opposition by Patent Owner, we agree that Petitioner’s joinder to the 770 IPR is appropriate and will not materially affect the trial schedule for the 770 IPR. See Mot. 4–9.” slip op. at 11
NonePatents in suitUS 8,904,030 - PTAB · Mar 13, 2025 · IPR2025-00103 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR on all asserted grounds for claims 1–15 and granted LifeScan, Senseonics, and Ascensia’s motion to join the TikTok IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Here, Petitioner presents substantively identical challenges to claims 1–15 of the ’766 patent based on the same prior art, the same evidence, and the same unpatentability theories as TikTok presents in the 769 IPR. Compare Pet. 15–111, with IPR2024-00769, Paper 2 (“769 Pet.”) 15–118; see also Mot. 5 (asserting that “[t]here are no substantive differences between the LifeScan Petition and the [779] IPR Petition”). Because Petitioner presents substantively identical challenges to claims 1–15 of the ’766 patent based on the same prior art, evidence, and unpatentability theories in the 769 IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons the “reasonable likelihood” standard for instituting trial was satisfied in the 769 IPR. See 769 IPR Inst. Dec. 15–55.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner asserts that joinder is appropriate because the Petition “challenges the validity of the same claims of the ’766 patent on identical grounds to those in the [769] IPR,” and “[t]here are no substantive differences between the LifeScan Petition and the [769] IPR Petition.” Mot. 5. Petitioner’s “supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are substantively identical to those presented in the [769] IPR.” Id. at 6. As such, Petitioner argues that a joined proceeding would “will not raise any new issues of unpatentability and will not impose any additional burden on the Board or Patent Owner, or add additional complexity to the case.be more efficient and less wasteful, as only a single trial on these common grounds would be required.” Id. If joined to the 769 IPR, Petitioner agrees “to adhere to all applicable deadlines set forth in the [769] IPR Scheduling Order.” Id. at 7. Petitioner also stipulates that it “will act as an ‘understudy’ and will not assume an active role unless Petitioner TikTok ceases to participate in the proceeding.” Id. a 2. Petitioner agrees that the following conditions will apply “[u]nless and until Petitioner TikTok ceases to participate in the [769] IPR”:” slip op. at 12
NonePatents in suitUS 9,900,766 - PTAB · Mar 13, 2025 · IPR2025-00102 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on all asserted grounds against claims 1–10 and granted LifeScan, Senseonics, and Ascensia’s motion to join the TikTok IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because Petitioner presents substantively identical challenges to claims 1–10 of the ’121 patent based on the same prior art, evidence, and unpatentability theories as TikTok presents in the TikTok IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons TikTok satisfied the “reasonable likelihood” standard for instituting trial. See TikTok Inst. Dec. 16–55.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“challenges the validity of the same claims of the ’121 patent on identical grounds to those in the TikTok IPR,” and “[t]here are no substantive differences between the LifeScan Petition and the TikTok IPR Petition.” Mot. 5. Petitioner’s “supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are substantively identical to those presented in the TikTok IPR.” Id. at 6. As such, Petitioner argues that a joined proceeding would “be more efficient and less wasteful, as only a single trial on these common grounds would be required.” Id. at 5. If joined to the TikTok IPR, Petitioner agrees “to adhere to all applicable deadlines set forth in the TikTok IPR Scheduling Order.” Id. at 7. Petitioner also agrees it “will act as an ‘understudy’ and will not assume an active role unless Petitioner TikTok ceases to participate in the proceeding.” Id. at 2. Petitioner agrees that the following conditions will apply “as long as Petitioner TikTok remains a party to the TikTok IPR”: (1) The Joining Petitioners shall not make any substantive filing and shall be bound by the filings of Petitioner TikTok, unless a filing concerns termination and settlement, or issues solely involving the Joining Petitioners; (2) The Joining Petitioners shall not present any argument or make any presentation at oral hearing unless an issue solely involves the Joining Petitioners, or when addressing Board-approved motions that do not affect Petitioner TikTok, or its respective position; slip op. at 12
NonePatents in suitUS 11,234,121 - PTAB · Mar 13, 2025 · IPR2024-01467 · APJ Michael A Valek · IPR · Institution
Instituted IPR on claims 1–8 and 11–22 based on the §103(a) challenge over Xu-752 and Jones, after finding a reasonable likelihood of success on claims 16–22.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reviewed Petitioner’s showing, we find that it demonstrates a reasonable likelihood that Petitioner will prevail in demonstrating that claim 16 is unpatenable over Xu-752 and Jones. Patent Owner’s arguments in the Preliminary Response are unavailing on the current record. We address those arguments below.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Having reviewed Petitioner’s showing, we find that it demonstrates a reasonable likelihood that Petitioner will prevail in demonstrating that claim 16 is unpatenable over Xu-752 and Jones. Patent Owner’s arguments in the Preliminary Response are unavailing on the current record. We address those arguments below.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We agree with Petitioner that Oka is not cumulative of Jones. Jones discloses an impedance measuring system for measuring the impedance of each well of a multiwell plate. Ex. 1006, code (57). Moreover, Jones clearly teaches that the daughter boards in its system “may be equipped with multiple analog-to-digital converters.” Id. ¶ 18. Oka, in contrast, does not. As Patent Owner acknowledges, “Oka is a planar multielectrode array that 11 Oka et al., “A new planar multielectrode array for extracellular recording: application to hippocampal acute slice,” 93 J. of Neuroscience Methods 61– 67 (1999) (Ex. 1026) (“Oka”). measures via extracellular recording instead of impedance.” Prelim. Resp. 51 n. 10 (emphases added). This is consistent with the applicants’ arguments during prosecution that Oka does not disclose a multiwell plate, plurality of wells, or even measuring cell-substrate impedance. See, e.g., Ex. 1002, 191–193. Moreover, as Petitioner points out, Oka appears to disclose only a single ADC connected to a switch. See Ex. 1026, 63 (Fig. 2); see also Ex. 1002, 188 (applicant urging that “Oka uses a switch to connect the AD-C to different electrodes at different times” and therefore is not performing measurements for individual electrode arrays). Thus, unlike Jones, Oka does not disclose a plurality of ADCs, much less multiple ADCs arranged and operated in parallel such that impedances for multiple wells are measured at a time.12” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of May 2009 “would have had a B.S. in electrical/mechanical/biomedical engineering or biological science, or a related field, and approximately 2 years of relevant experience or equivalent study in systems and methods for bioanalysis of cells.” Pet. 14 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,906,508 - PTAB · Jan 28, 2025 · IPR2024-01077 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1, 11, and 13–20 based on the Schröder and Mestas obviousness challenge; it did not decide whether the Yuen and Mestas challenge met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). 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.” 35 U.S.C. § 314(a). For the reasons that follow, we determine that the reasonable likelihood standard is met, and we institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’859 Patent Specification and the asserted prior art references.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute an inter partes review. Pet. 8; Prelim. Resp. 21. Nevertheless, there appears to be a dispute about the meaning of the term, “ring,” which we discuss below for purposes of providing guidance.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,139,859 - PTAB · Jan 28, 2025 · IPR2024-01078 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–6, 11–15, and 38–43 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Schröder and Mestas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). 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. We institute an inter partes review of claims 1–6, 11–15, and 38–43 based on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In view of the parties’ arguments and evidence, we do not agree with Patent Owner’s characterization of Mestas as cumulative. Noting that the Office allowed claims of the ’686 Application over U.S. Patent Application Publication No. 2013/0106603 (Ex. 2006, “Weast”), Patent Owner argues that Mestas discloses the same wristband as Weast. Prelim. Resp. 10–12, 58. Patent Owner overlooks that the Office’s consideration of Weast in the prosecution of the ’686 Application occurred after the ’953 patent issued, which does not show consideration of Weast’s or Mestas’s wristband configuration in the allowance of the ’953 patent’s claims. Ex. 2009, 1, 3; Ex. 1001, code (45); Prelim. Resp. 10–12, 58.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (Ex. 1002 ¶ 29). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See Prelim. Resp. 12. Based on the testimony of Dr. Anthony, we agree with Petitioner’s stated understanding of the level of ordinary skill in the art. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’953 Patent Specification and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner expresses that it “does not believe that any term requires express construction.” Pet. 8. Patent Owner does not dispute this assertion. See generally Prelim. Resp. At this stage, we need not and do not construe expressly any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,281,953 - PTAB · Dec 12, 2024 · PGR2024-00039 · APJ Elizabeth M Roesel · PGR · Institution
The Board instituted PGR on claims 1–17, finding the Schröder obviousness challenge to claim 1 met the institution threshold; it did not reach the remaining challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the parties’ arguments and evidence, we determine that Petitioner’s showing for the printed circuit board of claim element 1[c], as summarized above, is sufficient for purposes of granting institution of a post-grant review. For purposes of institution, Petitioner’s contentions are adequately supported by Schröder, which describes inlay 12 as a “flexible carrier material, e.g. PET, Kapton, etc.” and a “carrier” for the antenna, chip module, and “at least one further electronic component,” as well as Schröder’s Figures 7 and 8, which depict inlay 12 between ring halves 16 and 18. Ex. 1007, 12:28–42, 12:48–52, 12:61–65, 13:23–25. We have considered Patent Owner’s argument that Schröder’s inlay 12 “is merely a substance for holding the coil in place, not a printed circuit board,” as well as Patent Owner’s argument contrasting Schröder’s description of inlay 12 with the express disclosure of “a circuit on a circuit board” elsewhere in the reference. Prelim. Resp. 29–30 (emphasis omitted; citing Ex. 1007, 8:57–59, 22:48–50; Ex. 20119). These arguments raise a serious issue about whether a POSITA would have understood Schröder’s inlay 12 as teaching a printed circuit board. This issue would benefit from further development at trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“E. Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’702 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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. § 42.200(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)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 7; Prelim. Resp. 21.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,874,702 - PTAB · Dec 6, 2024 · IPR2024-00928 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–5, 11–13, and 16–18 on all grounds, finding a reasonable likelihood that the LeBoeuf challenge to claim 1 would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–5, 11–13, and 16–18 based on the grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusNot reached
“For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence.” Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202, 1210 (Fed. Cir. 2023). “A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention.” Id. slip op. at 16
§ 103 obviousnesscites PhillipsPatents in suitUS 9,582,034 - PTAB · Dec 6, 2024 · PGR2024-00030 · APJ Elizabeth M Roesel · PGR · Institution
Instituted PGR of claims 1–10 and 12–18; Petitioner met the institution threshold for claim 1 based on obviousness over Schröder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In applying § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or 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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal experience, and vice versa. Ex. 1002 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’178 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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. § 42.200(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)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 8; Prelim. Resp. 25.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“Petitioner relies on Dr. Anthony’s testimony that a POSITA would have understood Figures 6–8 as showing a cavity as recited in claim 1 and the battery must be arranged within that cavity because “[o]therwise, if the battery did not fit within the ‘finger-ring,’ the ‘finger-ring’ either has (1) a battery that sticks out or is exposed to the environment or (2) a wired connection to power its components, which is contrary to the intent of having a portable, wearable device.” Ex. 1002 ¶ 166. Dr. Anthony opines that “[a] POSITA would have understood that the battery’s location within the cavity is the ‘first portion’ of the cavity because the battery necessarily occupies space in the cavity.” Id. ¶ 168. Such testimony, when viewed along with the rest of Petitioner’s showing, provides sufficient basis for institution.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,868,178
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.