- Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 21, 2026 · IPR2024-01104 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–18 are unpatentable under § 103: claims 1–7, 9–13, and 15–18 over Lesniak, Phinney, and Bianchi ’518; claim 8 adds Lamb; claim 14 adds Bianchi ’254; and claims 1–18 are also unpatentable over the …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said stick being free of an aluminum salt” and “said stick” having a particular hardness range. PO Resp. 8–9. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 30 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick). We determine that no express construction of any other claim term is necessary to resolve the dispute between the parties. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only 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))). To the extent further discussion of the meaning any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art (“POSA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 24 (citing Ex. 1002, ¶¶ 26–28). Patent Owner does not dispute Resp. We adopt and apply Petitioner’s proposed definition of a POSA, which is consistent with the level of skill reflected in the asserted prior art.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We have considered Patent Owner’s arguments but find, on this record, Petitioner to have the better position. In particular, we are persuaded that a POSA would have been motivated to add magnesium hydroxide to Lesniak’s compositions because Phinney teaches that: (i) zinc oxide has “low activity” as a “deodorant agent”; (ii) magnesium hydroxide is “an effective synergistic effects, hence motivating a POSA to add magnesium hydroxide to Lesniak’s zinc oxide deodorants. Ex. 1004, 1:13- 3:16, 5:61-67. Reply 10; see also PO Resp. 25–26 (arguing that a POSA would have found it obvious to add magnesium hydroxide to the composition of Lesniak because zinc oxide is not a particularly efficacious antimicrobial in deodorants when used alone, whereas magnesium hydroxide is an effective deodorant). We acknowledge that Phinney suggests mixing zinc oxide with water in order to convert zinc oxide to zinc hydroxide. See, e.g., Ex. 1004, 1:17– 19 (“It was also found that a mixture of the hydroxides of zinc and magnesium could provide long lasting protection against odour due to perspiration.”). The evidence of record, however, shows that both magnesium hydroxide and zinc oxide were known options for deodorant antimicrobials, and claim 1 does not require a minimal level of effectiveness such that the combination of magnesium hydroxide and zinc oxide would need to outperform any other combination including the mixture of zinc and magnesium hydroxides. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“Our case law does not require that a particular combination must be the preferred, or the most desirable, combination[.]”). Here, we also credit the testimony of Dr. Michniak-Kohn that “POSA would understand that the water-based vs. anhydrous distinction is not relevant, as a POSA would understand that magnesium hydroxide would still function as an antimicrobial in anhydrous compositions such as those disclosed by Lesniak.” Ex. 1086 ¶ 9 (citing Ex. 1072, 1-2, 5 (disclosing deodorants without added water and with zinc oxide and/or magnesium hydroxide)). Accordingly, we are persuaded by Petitioner that “a POSA would have been” slip op. at 22
- Obviousness (§103) › KSR rationalesMotivation foundUnpatentable
“teaches baking soda as an effective ingredient in a deodorant. Ex. 1005, 131–33. Baking soda is also known to cause irritation that may motivate some to remove it from deodorants. See Ex. 2011 ¶ 109–110. Thus, the specific set of advantages and disadvantages for using baking soda in a deodorant was known to a person of skill in the art. On this record, the inclusion or exclusion of baking soda presents no unexpected result and the evidence of record establishes that it would have been an obvious matter of design choice within the skill of the art to balance the advantages and disadvantages associated therewith. See Medichem, S. A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”) In view of the above, we determine that the preponderance of the evidence supports Petitioner’s argument that claim 8 would have been obvious over the combination of Lesniak, Phinney, Bianchi ’518, and Lamb. Accordingly, we determine that claim 8 is obvious by the combination of Lesniak, Phinney, Bianchi ’518, and Lamb.” slip op. at 32
Patent outcomesUS 11,540,999 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,540,999 - Google LLC v. 138 East LCD Advancements LimitedAll claims unpatentablePTAB · Dec 19, 2025 · IPR2024-00959 · APJ George R Hoskins · IPR · Final written decision
Claims 1–10 are unpatentable: claims 1–8 as obvious and claim 9 as anticipated and obvious over the stated prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the level of [ordinary] skill . . . set forth in the Petition.” PO Resp. 14; Ex. 2001 ¶¶ 20–21. We adopt Petitioner’s unopposed assessment of ordinary skill, as it appears to be consistent with the ’082 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We discuss the scope of the term “specification data” in claim 1 below in Section III.D.3(b)(v) when comparing the claim with Fisher. We construe the term “image processing control data” in claim 1 below in Section III.E.2(e)(i) when comparing the claim with Ohga. Otherwise, based on the arguments and evidence presented, we determine no explicit construction is needed to resolve the parties’ controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Dr. Papanikolopoulos’s testimony that Kuwata teaches away from modifying its camera 22 to access an external server (such as Fisher’s Internet-enabled external data source) by stressing advantages of a self-contained camera-printer pair without external dependencies. See PO Resp. 15–16, 26–28 (citing Ex. 1005 ¶¶ 75, 77); Ex. 2001 ¶¶ 61–64. The cited disclosures in Kuwata simply do not discuss any advantages arising from a self-contained camera-printer pair without external dependencies, or any disadvantages arising from connecting camera 22 to an Internet server. See Ex. 1005 ¶¶ 75, 77. The cited disclosures instead tout the advantages arising from a camera manufacturer (rather than an end user photographer) specifying the image output control information CI for a specific camera-printer pairing, to reduce differences between an image as confirmed by the end user on the camera’s display and the image outputted by the printer. See id. That advantage, however, has nothing to do with whether camera 22 may or may not communicate with an Internet server. Indeed, rather than being self-contained as Patent Owner and Dr. Papanikolopoulos would have it, we find Kuwata’s camera 22 includes an I/O port for wired or wireless communication to transmit the camera’s image files GF / 10 to various printers 24 and various personal computers (PCs). See Ex. 1005, Fig. 4, ¶¶ 81, 85; Ex. 1003 ¶ 84; Pet. 14. Thus, Kuwata allows for and does not discourage communication between camera 22 and an Internet server such as Fisher’s external data source. In particular, Kuwata does not detract from the benefits of updating image output control information CI after the camera is manufactured, for example so that the camera can be paired with printers that were not yet on the market when the camera was manufactured. Moreover, Fisher recognizes that “a manufacturer may create various ancillary data files 418, and make the ancillary data files 418 available on a distributed computer network like the Internet for subsequent downloading and utilization by camera device 110.” Ex. 1006 ¶¶ 42, 55. That teaching in Fisher dovetails with Kuwata’s disclosure concerning camera manufacturers optimizing their cameras with various different printers, supporting Petitioner’s combination. See Ex. 1003 ¶¶ 84–89, 102–108.” slip op. at 27
Patent outcomesUS 7,428,082 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,428,082 - PTAB · Dec 19, 2025 · IPR2025-01078 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–12, 14–22, and 24–30, finding a reasonable likelihood that Kido anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). 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, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1011, 5:18–21. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’371 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes “a person having at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronic gaming technology.” Pet. 10 (citing Ex. 1003 ¶¶ 22–26). Petitioner further notes that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not dispute this level of skill. See Prelim. Resp. 13–14 (“Evolution does not set forth an alternative level of skill for a person of ordinary skill in the art”). For purposes of this Decision, we adopt Petitioner’s proposal, which comports with the teachings of the ’371 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “a first selected position . . . to have an increased payout . . . greater than a first non-selected payout.” See Pet. 25–27, 30, 35, 36. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a payout that does not receive the Prog bonus. Pet. 35–36 (“had the first selected position not been randomly selected, the player would only be eligible for the basic payout”). Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,756,371 - PTAB · Dec 17, 2025 · IPR2025-01072 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–3, 5–11, 13–19, and 21–24 on all asserted grounds, finding a reasonable likelihood that Kido anticipates claims 1, 9, and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). 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, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” Sur-reply 2. We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1001, 5:16–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’014 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 32–36. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Id. at 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129.” slip op. at 14
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,011,014 - PTAB · Dec 16, 2025 · IPR2025-01073 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR of claims 1–5, 7–12, 14–18, and 20 on all petitioned grounds, finding a reasonable likelihood that Kido anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2024). 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, 584 U.S. 357, 371 (2018).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“At this juncture in the proceeding, and based on the current record, we do not agree with Patent Owner that “payout,” as claimed, should be limited to “the amount a player will win in relation to the amount wagered.” We recognize, as Patent Owner points out, that the examples provided in the Specification are listed in odds format. See id. at 2. The Specification, however, also states that “[a]ny suitable payouts can be used in some embodiments.” Ex. 1005, 5:13–17. This language suggests a broader interpretation of “payout” beyond just payout odds and we therefore decline to import the wager limitation into the claim term. Although the ’024 patent generally describes payouts in terms of odds, like 49:1, the intrinsic record lacks clear evidence necessary to limit the claims as Patent Owner proposes.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the evidence before us, we find persuasive Petitioner’s contention that Kido’s accumulated jackpot paid when landing on a star mark reads on the claimed “first payout . . . wherein the first payout is higher.” See Pet. 33–35. As explained above, the current record does not support limiting the term “payout” to just the amount a player will win in relation to the amount wagered. As Petitioner notes, a first payout that receives Kido’s accumulated Prog bonus payout is necessarily higher than a second payout that does not receive the Prog bonus. Pet. 35. Further, Kido even describes its bonus routines and jackpots as payouts. Kido describes, for example, that “[w]hen the privilege unit 113 obtains the win information from the special game value award mark win determining unit 112, it awards, as a payout, the game value stored in the accumulated game value memory 117” and it describes the “jackpot (JP) amount” as “a special payout.” Ex. 1007 ¶¶ 119, 129. Patent Owner next contends that Kido does not disclose a first payout that is “for the spin of the roulette wheel.” Prelim. Resp. 29. Patent Owner’s argument is premised on the cumulative nature of Kido’s Prog bonus – it builds with every spin of the roulette wheel until won. Id. (“Each time the wheel is spun, 0.5% of the amount wagered is added to the progressive jackpot, and thus, the jackpot’s value reflects multiple spins of the roulette wheel.”). Thus, according to Patent Owner, the value of the jackpot is determined using multiple spins of the roulette wheel and is not “for a spin of the roulette wheel” as claimed.” Id. at 30. The claims, however, only require a first payout that is higher than a second payout. Nothing prohibits the higher payout from accumulating from prior spins of the roulette wheel because, when it is actually won, it will be for that last spin of the roulette wheel. Ex. 1005, 8:35–36 (“indicating that the first player is to be paid at the first payout for the spin of the roulette wheel”). Regardless of how Kido’s Prog bonus accumulated, it is paid for a spin of the roulette wheel – at that juncture Kido discloses each claim element. Anticipation occurs when a prior art reference discloses every element of a patent claim at a point in time, as Kido does with a single spin of the roulette wheel that pays the Prog bonus. As persuasively explained by Petitioner, “the steps of Figure 12 (including A13) occur within a single round of roulette, for a single spin of the roulette wheel, until the routine ‘returns to the step of A1 and is transited to a next game.’” Pet. 39 (quoting Ex. 1007 ¶ 233).” slip op. at 13
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,629,024 - PTAB · Dec 12, 2025 · IPR2025-01116 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Sudre, Lee, and Penven.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023). In other words, a decision to institute under § 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). In addition, if the Board institutes trial, it will “institute . . . on all grounds in the petition.” PTAB Consolidated Trial Practice Guide, 5–6 (Nov. 2019)1 (“CTPG”); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least (1) a Bachelor’s Degree (or higher) in material science, materials engineering, mechanical engineering, textile engineering, or a related field, and (2) a minimum of two years of working experience in textiles engineering, fibers and textiles manufacturing, or a related field.” Pet. 4 (citing Ex. 1003 ¶¶ 21–22). Petitioner also argues that “[a]dditional education could substitute for professional experience, and vice versa.” Id. On the present record, Patent Owner does not contest Petitioner’s proposed level of ordinary skill. Prelim. Resp. 25–26. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’566 patent and the asserted prior art. 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
“Both parties argue that no claim terms require express construction at this stage of the proceeding. Pet. 3; Prelim. Resp. 26. On the present record, we agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent the parties’ arguments regarding unpatentability do address claim construction issues, we address these issues below.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“articulated a reason why a person of ordinary skill in the art would have combined the teachings of Sudre, Lee, and Penven. Prelim. Resp. 60–63. In particular, Patent Owner argues that a person of ordinary skill in the art “would not have been motivated to look into Penven to modify the teachings of Lee because Lee and Penven disclose substantially different structures.” Id. at 60–61. This argument does not address Petitioner’s proposed reason to combine, which looks to Lee and Penven each to modify Sudre, not to Penven to modify Lee. See Pet. 79–81. In addition, “[c]ombining the teachings of references does not involve an ability to combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). In other words, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425–26 (CCPA 1981). Petitioner provides “some articulated reasoning with some rational underpinning” to combine the teachings of Sudre with those of Lee and Penven. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In particular, Petitioner directs us to Sudre’s teaching of “a method for manufacturing PMC,” to Sudre’s lack of teaching of “specific parameters, such as warp thread size and spacing” to satisfy the “particular requirements” of its fabric. Pet. 79 (citing Ex. 1003 ¶¶ 248–250; Ex. 1004, 1:2–5, 6:14–17). As Petitioner points out, id. at 79–80, Lee and Penven provided yarn diameters and loop diameters that were conventional, and there is evidence of record that a person of ordinary skill in the art would have used these conventional diameters in constructing Sudre’s paper machine clothing. Ex. 1003 ¶¶ 258–261, 263–266; Ex. 1006, 3:64–66.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,261,566 - Boe Technology Group Co., Ltd. v. 138 East LCD Advancements LimitedSome claims unpatentablePTAB · Dec 1, 2025 · IPR2024-00973 · APJ George R Hoskins · IPR · Final written decision
Claims 1, 3–7, 9–13, and 15–18 are unpatentable as obvious over Reiner and over Reiner with Takahara; claims 2, 8, and 14 were not shown unpatentable.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“patentability based solely on arguments considered above in the context of claim 4. See, e.g., PO Resp. 42–43, 47–52. Therefore, Patent Owner has waived any other argument. See Inst. Dec. 44; Paper 10, 10. We adopt Petitioner’s arguments concerning these claims having been obvious over Reiner as our own in this Decision. See Pet. 40–44, 50–56, 57–70, 71; Ex. 1003 ¶¶ 134–142, 154–168, 174–221, 227. Accordingly, we conclude a preponderance of the evidence establishes these claims are unpatentable as having been obvious over Reiner.” slip op. at 83
- Expert testimonyOther
- Skill levelOther
Patent outcomesUS 9,184,157 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,184,157 - PTAB · Nov 10, 2025 · IPR2025-00878 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1–3 and 11 after finding a reasonable likelihood that claim 1 is anticipated by Cleveland or obvious over Nakagawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“contentions, the cited portions of Cleveland, and the testimony of Clearwater’s expert), we find, preliminarily, that Cleveland discloses each claim element in the manner recited by claim 1. Thus, on the current record, Clearwater demonstrates a reasonable likelihood that challenged claim 1 is unpatentable as anticipated by Cleveland.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“5 Clearwater argues that Cleveland qualifies as prior art under 35 U.S.C. § 102(e)(1) “based on both its provisional and non-provisional filing dates.” Pet. 17. In support, Clearwater asserts that Cleveland’s provisional (Ex. 1006) is “virtually identical” to Cleveland itself (id. at 18) and submits claim charts to demonstrate that the Cleveland provisional provides written support for: (1) at least claim 1 of Cleveland (id. at 18–21); and (2) the subject matter relied upon in Cleveland (id. at 21–40 (citing Ex. 1006 throughout)). Based on our review of the Cleveland provisional, as well as Clearwater’s claim charts, we are persuaded that the current record demonstrates that Cleveland is prior art to the challenged patent. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015).” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“satisfies each claim element as identified above in Section I.D, i.e., elements [1.pre]–[1.6]. See id. at 22–40. Clearwater also submits annotated Figure 3 of Cleveland, reproduced below, to further illustrate the specific laminate structure of Cleveland’s coffee cup. See id. at 39.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“protective layers have “a coat weight of from 5 to 30 lbs/3000 ft2,” Clearwater submits the declaration of its expert, who explains that, because Nakagawa identifies the specific polymers and the thickness of the coat used for the plastic layers and one skilled in the art “would recognize that the disclosed polymers have a given density,” then “[w]ith these known parameters, the coat weight is easily calculated to be 23.04 lbs./ 3000 ft2 — falling squarely within the claimed range.” Pet. 53–54 (citing Ex. 1003 ¶¶ 132–133; Ex. 1008 ¶ 24; Ex. 1024, at 4). At this stage, we find that testimony credible and supported by the evidence presently of record. After reviewing the preliminary record (including Clearwater’s contentions, the cited portions of Nakagawa, and the testimony of Clearwater’s expert), we find, preliminarily, that Nakagawa discloses or otherwise suggests each claim element in the manner recited by claim 1. Thus, on the current record, Clearwater demonstrates a reasonable likelihood that challenged claim 1 is unpatentable as obvious over Nakagawa. We need not decide Clearwater’s challenge of the dependent claims based on Nakagawa alone nor its challenge of claims 1–3 based on Nakagawa and Tanner. Our analysis of these challenges, in our view, is best left for trial after full development of the record.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,637,126 - PTAB · Oct 15, 2025 · PGR2025-00002 · APJ Frederick C Laney · PGR · Adverse judgment
After Patent Owner disclaimed claims 1–78, the Board granted its motion for adverse judgment and terminated the post-grant review.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under our rules, “[a] party may request judgment against itself at any time during a proceeding,” which includes “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018) (“there is no claim remaining for trial . . . when, as here, all of the challenged claims have been cancelled”). Thus, actions construed to be a request for adverse judgment include cancellation of patent claims such that a party has no remaining claim in the trial. 37 C.F.R. § 42.73(b)(2). Because Patent Owner has disclaimed all challenged claims such that no claims remain in the trial, we grant Patent Owner’s Motion to Terminate by Adverse Judgment.” slip op. at 2
NonePatents in suitUS 12,134,952 - Ascend Elements, Inc. v. Duesenfeld GmbHInstitution deniedPTAB · Oct 10, 2025 · PGR2025-00037 · APJ Kevin W Cherry · PGR · Institution
The Board denied institution of PGR on claims 1–14 because Petitioner did not show that any challenged claim was more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition filed under [35 U.S.C. §] 321 . . . demonstrates that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that Petitioner has failed to demonstrate that it is more likely than not that at least one of claims 1–14 of the ’463 patent is unpatentable. Accordingly, we deny institution of a postgrant review of claims 1–14 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had at least a Bachelor’s degree in electrical engineering, material science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithiumion batteries. Additional formal education focusing on processing of lithium batteries may substitute for practical experience and additional practical experience can substitute for less education.” Pet. 10–11. Patent Owner does not contest this definition of a person of skill in the art. See Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’463 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“distinct from “comminute[ion],” Petitioner offers only the testimony of its expert, Mr. Juzkow, who equates Tomioka’s “cutting” with “comminute[ion].” See Ex. 1003 ¶ 121. However, Mr. Juzkow provides insufficient reasoning to support his conclusion, particularly given the intrinsic and extrinsic evidence discussed above. In contrast, Patent Owner’s expert, Mr. Dantam, provides extensive reasoning, supported by citations to other evidence, to support his conclusion that Tomioka’s “dismantling” is not the claimed “comminution.” Thus, we give more weight to Mr. Dantam’s testimony than Mr. Juzkow’s testimony. Weighing this evidence all together, we find that Petitioner has failed to show that it is more likely than not that Tomioka’s teaches the claimed comminution under Petitioner’s first theory.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundTeaching away not foundNot shown unpatentable
“obvious. Pet. 34–35. However, we agree with Patent Owner that Petitioner has also failed to show that it is more likely than not that Tomioka renders this limitation obvious. See Prelim. Resp. 28–31. To begin with, Petitioner’s contentions lack sufficient reasoning explaining why a person of ordinary skill would have modified Tomioka in the manner proposed. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Petitioner merely asserts that a person of ordinary skill in the art could use the roller system in place of the dismantling disclosed for the embodiments in Figures 19 and 20. On this record, we find this bare contention insufficient. actual disclosure of Tomioka. The rollers in Tomioka are used to separate the “battery body” from the “resin package enclosing the battery body,” and Tomioka specifically discloses that this technique is designed to “avoid damaging the battery body.” Ex. 1005 ¶¶ 25, 26, 29; Ex. 2011 ¶¶ 72–73. Thus, there is a significant difference between what Tomioka teaches and what Petitioner proposes to use the roller system to do. In addition, as Patent Owner points out, Tomioka specifically discloses there are risks associated with mechanically crushing battery packs, such as “risk of sparking due to residual voltage if the battery units are damaged in the process.” Ex. 1005 ¶ 5. Although we do not agree with Patent Owner that this amounts to a “teaching away,” see In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), we do believe that this teaching suggests a trade off that should be weighed in determining whether to make the modification, see Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). However, Petitioner has failed to account adequately, if at all, for this trade off. Thus, we find that Petitioner has failed to show that it is more likely than not that Tomioka accounts for the claimed “comminuting.”” slip op. at 15
§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 12,119,463
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.