- PTAB · Oct 3, 2025 · IPR2025-00680 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR of claims 2 and 3 on all grounds in the Petition and granted Nintendo’s motion to join IPR2024-00807, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Apple IPR on all challenged claims and all asserted grounds of unpatentability. Apple IPR, Paper 10 (institution decision); see also Apple IPR, Paper 2 (the “Apple Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR. Compare Pet. 2, with Apple Petition 1; see also Mot. 1 (asserting the instant “Petition is substantively identical to Apple Inc.’s petition (‘Apple Petition’) in the Apple IPR, including that it relies on the same expert declaration,” and asserting “the same grounds presented in the Apple IPR”). As indicated, Petitioner also relies on the same declarant as did the petition in the Apple IPR. Mot. 1; compare Ex. 1003 (Hannaford Declaration), with Apple IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the Apple IPR and for the same reasons stated in our Decision to Institute in the Apple IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Apple IPR, Paper 10 (analyzing challenges in the Apple Petition).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Apple Petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration, the Hannaford Declaration (Ex. 1003). Mot. 1, 4. Petitioner represents that “joinder will not negatively impact the Apple IPR trial schedule” and “expressly consents to the existing trial schedule.” Id. at 10; see also id. at 7 (“Proceeding with a consolidated inter partes review would avoid potential inconsistency, promote efficient review of the same claims for the same patent under the same grounds, and would result in a final written decision without delay.”). Petitioner also represents that as “long as Apple remains in the joined IPR, Nintendo remains in a limited ‘silent understudy’ role that does not actively participate in the IPR.” Id. at 8. The record supports Petitioner. In addition, the final written decision in the Apple IPR is due to issue on or before October 15, 2025, with the Oral Hearing complete and no further briefing due. See IPR 2024-00807, Paper 15 (Oral Hearing Transcript); Paper 18, 2–3. Therefore, as Petitioner argues, joinder by Petitioner will have little or no impact on the trial schedule in the Apple IPR. On the other hand, if the Board denies joinder, Petitioner submits that it “intends to file a separate petition for IPR (‘Second Petition’) that includes grounds in addition to some (or all) of the grounds in the Apple IPR.” Mot. 14.” slip op. at 10
NonePatents in suitUS 8,860,337 - 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 · Nov 1, 2024 · IPR2024-01010 · APJ Brian D Range · IPR · Institution
The Board instituted inter partes review of claims 1–6 and 8 on all petition grounds and granted Texas Instruments’ motion to join the NXP IPR as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, for the same reasons set forth in our institution decision in the NXP IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–6 and 8 are unpatentable. See NXP Dec. Accordingly, we institute an inter partes review of the same claims on the same grounds as the ones on which we instituted review in the NXP IPR. 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner agrees that, if joinder is granted, it will have an “understudy role.” Id. at 2–3, 6–8. Petitioner agrees to various restrictions as an understudy. Id. Along these lines, Petitioner will abide by the following conditions so long as NXP is actively participating in this proceeding: (a) TI shall not make any substantive filing and shall be bound by the filings of Petitioner NXP, unless a filing concerns termination and settlement, or issues solely involving TI; (b) TI shall not present any argument or make any presentation at oral argument unless an issue solely involves TI, or when addressing Board-approved motions that do not affect Petitioner NXP or its respective position; (c) TI shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving TI; (d) TI shall not seek discovery from Patent Owner on issues not solely involving TI; (e) TI will not rely on expert testimony beyond that submitted by Petitioner NXP unless Petitioner NXP is terminated from the case. If Petitioner NXP is not terminated from the case, TI agrees to rely entirely on, and be bound by, the expert declarations and depositions in the NXP IPR. Mot. 6–7. In sum, TI “will not assume an active role unless Petitioner NXP ceases to participate in the proceeding.” Mot. 2.13 The conditions above mean that joinder will have no impact on the NXP IPR trial schedule and will not complicate the NXP IPR briefing or discovery. These understudy provisions are consistent with the provisions imposed by, for example, Ecobee Techs. ULC v. EcoFactor, Inc., IPR 2022-01460, IPR2022-00473, Paper 7 (PTAB Jan. 24, 2023) and Apple Inc. v. INVT SPE LLC, IPR2019-00959, Paper 8 (PTAB May 30, 2019).” slip op. at 6
NonePatents in suitUS 7,345,245 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- 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) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · May 12, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 21, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 on all petition grounds, and granted …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentability as the ones on which we instituted review in the Cree IPR. Compare Pet. 10–116, with Cree Dec. 10, 45–46. Indeed, Petitioner contends that the Petition and evidence Petitioner relies upon is “identical to the grounds in the Cree IPR petition.” Mot. 5. Petitioner acknowledges that the Petition relies on a different expert; however, Petitioner asserts that “the supporting declaration of Dr. Bretschneider submitted by Feit Electric adopts the opinions of Cree Lighting’s expert, Dr. Lebby, in full, with minor clarifications . . . that are immaterial to the broader analysis.” Id. at 8, n. 1; see also Ex. 1021 (declaration of Dr. Bretschneider). Petitioner further states that it will rely on the declaration of Dr. Bretschneider “only in the event that Cree Lighting is terminated from the proceedings.” Mot. 8, n. 1. Patent Owner waives its preliminary response, and it does not dispute Petitioner’s arguments or evidence. See generally Waiver.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cree IPR. See Mot. 5. Petitioner states that its Petition is “essentially a copy of the Cree Lighting Petition.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cree IPR.” slip op. at 6
NonePatents in suitUS 6,465,961 - PTAB · May 12, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 21–91 listed in the order on all petition grounds and granted joinder in IPR2022-00847.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. INSTITUTION OF INTER PARTES REVIEW The Petition in this proceeding asserts the same grounds of unpatentability as the ones on which we instituted review in the Cree IPR. Compare Pet. 12–124, with Cree Dec. 10, 45–46. Indeed, Petitioner contends that the Petition and evidence Petitioner relies upon is “identical to the grounds in the Cree IPR petition.” Mot. 1. Petitioner acknowledges that the Petition relies on a different expert; however, Petitioner asserts that “the expert declaration of Dr. Christian Wetzel (Ex. 1021, “Wetzel Decl.”), [] is substantively identical to the declaration put forth in the Cree IPR.” Id. at 2. Petitioner further states that Dr. Wetzel agrees with the opinions of Cree’s expert and “adopts them as his own.” Id. at 2, n. 1.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cree IPR. See Mot. 5. Petitioner states that it uses “the same arguments, analysis, evidence, and grounds of unpatentability as the Cree IPR.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cree IPR. Petitioner agrees that, if joinder is granted, it will have a “true understudy role.” Reply. 1–2. Petitioner agrees to various restrictions as a true understudy and further agrees to any further limitations the Board may impose. Reply 2; Mot. 7–8 (“Petitioner will also abide by any additional conditions the Board deems appropriate”). Along these lines, Petitioner will abide by the following conditions so long as Cree is actively participating in this proceeding: 1. Petitioner will not take any depositions or otherwise participate in the proceeding (Reply 2);” slip op. at 6
NonePatents in suitUS 6,465,961 - Life Spine, Inc. v. Globus Medical, Inc.InstitutedPTAB · Mar 24, 2023 · IPR2022-01434 · APJ Cynthia M Hardman · IPR · Institution
Instituted IPR on all asserted grounds against claims 1–15 after finding a reasonable likelihood that claim 15 is anticipated by Chung.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“the same or substantially the same prior art or arguments previously were presented to the Office.” The Board analyzes this issue under a two-part framework: (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. slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering all of the arguments and evidence of record, we determine that for purposes of institution, Petitioner has sufficiently shown that Chung discloses an intervertebral implant that teaches all limitations of claim 15. See Pet. 57–62. The arguments and evidence for limitation 15[g]’s “extension” are the same as for the “extension” of claim 1. See, e.g., Pet. 58, Prelim. Resp. 32–47. Thus, we refer back to our analysis above (see supra Section II.F.1.a.i) in determining that Petitioner has sufficiently shown for purposes of institution that Chung teaches the claimed “extension.” On this record, Petitioner has shown a reasonable likelihood of establishing that claim 15 is anticipated by Chung. On that basis, we institute an inter partes review of all challenged claims. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1358 (2018); 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“On this preliminary record, Petitioner has the better argument. It appears that Patent Owner’s construction improperly reads in limitations from example embodiments, such as the embodiments depicted in Figures 25 and 46 of the ’731 patent. See Prelim. Resp. 39 (Patent Owner’s annotated Figures 25 and 46). Petitioner demonstrates that both the Specification and the Examiner used the term “extension” more broadly to refer to a variety of structures, not merely to structures that “increase the length of the central ramp.” See, e.g., Prelim. Reply 3; Ex. 1001, 5:47–58, Fig. 10, 11:8–10, 11:40–42, Fig. 23, 9:40–45, 10:1–19, Fig. 24, claims 2, 3; Ex. 1004, 42–44, 66–67, 126–27. Patent Owner seeks to ignore the Specification and Examiner’s use of the term “extension” in connection with structures other than the central ramp (see, e.g., Prelim. Sur-reply 4), but on this record nothing indicates that the patentee intended a special definition for the term “extension” in the context of the central ramp. For purposes of this Decision, we apply the plain and ordinary meaning of the term “extension,” i.e., “an addition to a main structure.” See Ex. 3001, 4. This construction is consistent with the broad use of the term “extension” in the Specification to refer to a variety of additions to a main structure having a variety of shapes.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“Petitioner’s annotated excerpt of Chung’s Figure 1 (reproduced above on the left) does not appear to show that extension/dovetail (32) extends in a longitudinal direction from the expansion portion (yellow). Instead, it terminates in the longitudinal direction at or before the edges of the expansion portion (yellow). Additionally, on this record, we find that the annotated excerpt of Chung’s Figure 2 is inconclusive as to whether extension/dovetail (32) extends in a longitudinal direction from the expansion portion (yellow). Based on the excerpt of Chung’s Figure 2, it is equally likely that the structures colored blue and yellow terminate in the same plane, as shown in Patent Owner’s further annotated excerpt of Chung’s Figure 2, reproduced below: Prelim. Resp. 77. In Patent Owner’s further annotated excerpt of Chung’s Figure 2 reproduced above, Patent Owner demonstrates that Chung’s dovetail (blue) protrudes in a direction (shown by the blue dashed arrow) that is acute to the longitudinal axis (red dashed line), but does not appear to extend in a longitudinal direction past the plane where the expansion portion (yellow) terminates. See id. On this record, we find Patent Owner’s interpretation of Chung Figure 2 more plausible than Petitioner’s.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,845,731 - PTAB · Dec 14, 2022 · IPR2023-00016 · APJ Michael A Valek · IPR · Institution
The Board instituted review of claims 1–6 on the petition’s unpatentability grounds and granted MSN’s motion to join IPR2022-00722 as a silent understudy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IPR2022-00722, challenging the same claims based on the same grounds and relying on the same declarant testimony and other evidence for support. See Pet. 4–5 (stating its grounds are “substantially identical,” “challenge the same claims over the same prior art,” and “rely on the same exhibits, arguments and expert testimony presented with the Mylan Petition”). Patent Owner does not dispute that MSN’s Petition is substantially identical to Mylan’s, nor identify any material distinction between the arguments” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“agree with the arguments MSN makes for joinder. See Paper 4, 8–12. As discussed above, the Petition raises the same unpatentability grounds as IPR2022-00722, and no others. Thus, this review does not present any ground not already at issue in IPR2022-00722. Efficiency favors addressing these challenges in a joined proceeding.” slip op. at 4
NonePatents in suitUS 7,041,786
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.