- PTAB · Jun 10, 2025 · IPR2025-00114 · APJ Annette R Reimers · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7, 8, 11, 12, 14–16, and 18–20 on all petitioned grounds, finding a reasonable likelihood of unpatentability over Bourque and Wampler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’879 patent.” slip op. at 2
- BurdenMixed
“Decision we find “axially adjacent” to mean “adjacent to one another as measured along a central axis.” Petitioner does not contend or show in the Petition that Wampler teaches a magnetically driven rotor adjacent to a first magnetic device as measured along a central axis. See Pet. 24–26. In” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 7 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1. We find, for purposes of this appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’879 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Magnetic Device” and “Magnetically Driven Rotor” along a “Central Axis”. Ex. 1019, 6. We find nothing in Exhibit 1019 that defines “axially adjacent” to mean “a magnetic element sealed within a rotor,” as Petitioner alleges. In this regard, Patent Owner argues as follows: Exhibit 1019 contains no mention of “a magnetic element sealed within a rotor” or a contention that such a configuration would represent an “axially adjacent” orientation of such components. Instead, [in Exhibit 1019], Patent Owner illustrates a Petitioner product and labels components identified as the claimed magnetically driven rotor and first magnetic device that are adjacent to one another as measured along a central axis. [See Ex. 1019 at 5]. This is in accordance with the plain and ordinary meaning of the claim terms and does not suggest that any component “sealed within” another component would categorically be axially adjacent thereto.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,572,879 - PTAB · Jun 9, 2025 · IPR2025-00112 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on claims 1–3, 10, 11, 14, and 17 on all petitioned grounds, finding a reasonable likelihood of success on obviousness over Bourque and Wampler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’357 patent.” slip op. at 2
- BurdenDecided for petitioner
“4. Determination as to a Reasonable Likelihood of Prevailing Upon consideration of the arguments and evidence of record, we conclude, for the reasons provided above, that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1–3, 10, 11, 14, and 17 of the ’357 patent as obvious over Bourque and Wampler.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1. We find, for purposes of this appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’357 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In sum, Petitioner maintains a narrower construction of “magneto coupling” is correct, and alleges grounds of unpatentability based on both its narrower proposed construction (a construction encompassed by the broader construction), as well as based on the broader construction that Patent Owner does not dispute. We, therefore, find no merit to Patent Owner’s argument that Petitioner’s contention “contradicts itself” or fails to present a “prima facie obviousness position.” See Prelim. Resp. 3. Patent Owner does not dispute the broader construction applied by Petitioner, which encompasses the narrower construction Petitioner proposes. For purposes of this Decision, we apply the broader construction of “magneto coupling,” which encompasses generating a rotating field either by rotating magnets or by an electromagnet / stator.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,351,357 - PTAB · Jun 6, 2025 · IPR2025-00113 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on claims 1–5, 10, 11, 14, 16, and 17, finding a reasonable likelihood that claims 1–5, 10, 11, 14, 16, and 17 are obvious over Bourque and Wampler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’415 patent.” slip op. at 2
- BurdenNot shown unpatentable
“Decision we find “axially adjacent” to mean “adjacent to one another as measured along a central axis.” Petitioner does not contend or show in the Petition that Wampler teaches a magnetically driven rotor adjacent to a first magnetic device as measured along a central axis. See Pet. 24–25. In opposition, Patent Owner argues, and we agree on the current record, as follows: Wampler does not teach or suggest “a magnetically driven rotor . . . axially adjacent to a first magnetic device” based on its imbedding of permanent magnets 88 in the impeller 74 because these components are not adjacent to one another as measured along the central axis of the device. Instead, the magnet segments 88 and impeller 74 are aligned with, and overlap, one another as measured along the central axis in Wampler’s configuration. See Ex. 1008, [where the magnet segments are housed within the impeller blades.] Prelim. Resp. 23 (citing Ex. 1008, ¶ 18, Figs. 3, 4, 7, 9, 11, 13, 15, 17, 19). We find Patent Owner’s arguments refuting Petitioner’s contention that the Challenged Claims would have been obvious over Wampler, alone, have substantial merit. We, therefore, turn to Petitioner’s contentions based on Bourque, in combination with Wampler, which instead rely on Bourque as teaching the “axially adjacent” limitation.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1. We find, for purposes of this appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’415 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We find insufficient support for Petitioner’s assertion that “a magnetic element sealed within a rotor is ‘axially adjacent.’” Pet. 24. Moreover, we find Patent Owner’s definition of the claim language reflects its plain and ordinary meaning and is consistent with the disclosure of the ’415 patent (which illustrates only a “magnetically driven rotor” positioned adjacent to a “first magnetic device” as measured along a central axis). See Ex. 1001, Fig. 2. It is also consistent with the construction Petitioner appears to contend is the correct construction, as applied by Petitioner in, for example, it’s contentions based on the asserted combination of Bourque and Wampler. See Pet. 60 (relying on Bourque’s teaching of a rotor and magnetic device adjacent to one another as measured along a central axis with regard to the “axially adjacent” limitation and not on Wampler’s magnets embedded in the impeller at the same location along a central axis). Accordingly, we find, for purposes of this Decision and based on the current record, that the plain and ordinary meaning of “axially adjacent,” as shown by Patent Owner, is “adjacent to one another as measured along a central axis,” and apply this definition to our analysis of Petitioner’s contentions below.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,376,415 - PTAB · Jun 3, 2025 · IPR2025-00216 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Thiel and Gruber.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2023); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’138 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“exercise of discretion under 35 U.S.C. § 325(d). Pet. 88–89; Prelim. Resp. 3–8. In evaluating these arguments, we use a two-part framework, with the first part being 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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing eyewear and/or consumer electronics.” Pet. 22–23 (citing Ex. 1003 ¶ 28). Petitioner adds that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 23. Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’138 patent or identify any shortcoming in Petitioner’s formulation. See generally Prelim. Resp. level of skill for one of ordinary skill in the art. Pet. 22–23. We view this definition for the level of ordinary skill as consistent with the ’138 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Here, neither party sets forth any term for claim construction. Pet. 23–24; see Prelim. Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,487,138 - PTAB · May 19, 2025 · IPR2025-00096 · APJ James A Tartal · IPR · Institution
The Board instituted inter partes review of claims 1–7, 10, 12, and 13 on all petitioned grounds, finding a reasonable likelihood of prevailing on obviousness over Bourque and Wampler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’356 patent.” slip op. at 2
- BurdenInstituted
“Decision we find “at a position axially adjacent” to mean at a position “adjacent to one another as measured along a central axis.” Petitioner does not contend or show in the Petition that Wampler teaches a magnetically driven rotor coupled to a first magnetic device at a position adjacent to one another as measured along a central axis. See Pet. 26–28. In opposition, Patent Owner argues, and we agree on the current record, as follows: Wampler cannot teach or suggest a first magnetic device that is at a position axially adjacent to a magnetically driven rotor based on the positioning of its magnet segments 88 and impeller 74 because these components are not adjacent to one another as measured along the central axis of the device. Instead, the magnet segments 88 and impeller 74 are aligned with, and overlap, one another as measured along the central axis based on the disclosed configuration where the magnet segments are housed within the impeller blades.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1. We find, for purposes of this appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’356 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We find no sufficient support for Petitioner’s assertion that “a magnetic element sealed within a rotor is ‘at a position axially adjacent to the magnetically driven rotor.’” Pet. 26. Moreover, we find Patent Owner’s definition of the claim language reflects its plain and ordinary meaning and is consistent with the disclosure of the ’356 patent (which illustrates only a “magnetically driven rotor” positioned adjacent to a “first magnetic device” as measured along a central axis). See Ex. 1001 Fig. 2. It is also consistent with the construction Petitioner appears to contend is the correct construction, as applied by Petitioner in, for example, it’s contentions based on the asserted combination of Bourque and Wampler. See Pet. 61–62 (relying on Bourque’s teaching of a rotor and magnetic device adjacent to one another as measured along a central axis with regard to the “axially adjacent limitation” and not on Wampler’s magnets embedded in the impeller at the same location along a central axis). Accordingly, we find, for purposes of this Decision and based on the current record, that the plain and ordinary meaning of “at a position axially adjacent,” as shown by Patent Owner, is at a position “adjacent to one” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,351,356 - PTAB · Apr 30, 2025 · IPR2024-01493 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–15 and all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Bowen and Sunai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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) (2024); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’167 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 20 (citing Ex. 1024 ¶ 25). Petitioner adds that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Id. Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’167 patent or identify any shortcoming in Petitioner’s formulation. Prelim. Resp. 18. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 20. We view this definition for the level of ordinary skill to be consistent with the ’167 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Here, neither party sets forth any term for claim construction. Pet. 17; see generally Prelim. Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., 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) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Second, on this record we agree that one of ordinary skill in the art would have been motivated to substitute Sunai’s CoFeB layer for Bowen’s Fe layer to increase the tunnel magnetoresistance ratio (“TMR”) of Bowen’s MTJ. Pet. 24; Ex. 1055,9 2269–70 (“The benefit of using CoFeB” includes “a higher TMR value.”), 2270 (“[I]t is natural to replace both the free and pinned layers to CoFeB to further increase the TMR value.”); Ex. 105610 ¶ 39 (“[A]n amorphous layer comprised of a CoFeB alloy . . . exhibits a larger TMR ratio.”), ¶¶ 67–68 (“In the construction[,] . . . ferromagnetic layers 5, 7 are made of an FeCoB[11] . . . material containing B so as to have 9 Dexin Wang et al., 70% TMR at room temperature for SDT sandwich junctions with CoFeB as free and reference layers, 40 IEEE Trans. Magn. 2269–71 (July 2004). 10 US 2004/0136232 A1, published July 15, 2004. 11 We are persuaded by Dr. Bokor’s testimony that “a skilled artisan [would have] understood that CoFeB and FeCoB refer to the same alloy.” Ex. 1024 ¶ 121. ratio.”); Ex. 1024 ¶ 129. Moreover, as Petitioner explains, “[r]esearchers were . . . interested in optimizing MTJs to improve MRAM performance,” and “[h]igher TMRs long promised improved performance for MRAM.” Pet. 6 (citing Ex. 1026, 1655; Ex. 1045,12 1; Ex. 1049,13 186; Ex. 1024 ¶¶ 31, 36–44) (emphasis omitted). In addition, on this record we agree with Petitioner that Bowen and Sunai teach forming an MgO barrier layer and ferromagnetic alloy electrodes. Pet. 25–26 (citing Ex. 1026, 1655, Abstract; Ex. 1030 ¶¶ 24, 35; Ex. 1024 ¶ 126). And we also agree that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Bowen as forming electrodes with CoFeB alloys was known. Id. at 26.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,680,167 - PTAB · Apr 30, 2025 · IPR2024-01494 · APJ Justin T Arbes · IPR · Institution
The Board instituted review of claims 5, 6, and 9–20 on all asserted grounds after finding a reasonable likelihood that claim 5 would have been obvious over Bowen and Soukup.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 5, 6, and 9–20 of the ’909 patent on all grounds of unpatentability asserted with respect to those claims in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments based on the current record. Dr. Bokor testifies that “as is evident from the TMR equation, . . . lowering the resistance (barrier height) for parallel spin electrons [(i.e., Rp)] compared to antiparallel [(i.e., Rap)] improved TMRs.” Ex. 1024 ¶ 169 (citing Ex. 1035, 3273) (emphasis added). Dr. Bokor’s testimony is consistent with the TMR equation above, which has Rp as the only term in the denominator, and reflects that Rp would be lowered disproportionally, or otherwise the TMR would not have “improved.” Id. It also appears to be supported by other evidence of record. See Ex. 1035, 3273 (noting the” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Finally, we note that, although Petitioner has made a sufficient showing with respect to obviousness, we are not persuaded by Petitioner’s inherency argument. See Pet. 36. Specifically, Petitioner has not established that a barrier height of 0.1–0.85 eV is necessarily present in, or the natural result of, a tunnel barrier layer having some amount of oxygen vacancy defects. See Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329 (Fed. Cir. 2020) (“When the prior art does not expressly disclose a claim limitation, ‘inherency may supply a missing claim limitation in an obviousness analysis.’ . . . Inherency is established in the context of obviousness when ‘the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.’”). Petitioner points to the ’909 patent’s statement that “[w]hen there are oxygen vacancy defects, the potential barrier height of the MgO tunnel barrier is thought to decrease (such as in the range of 0.10 to 0.85 eV; more specifically, 0.2 to 0.5 eV), which is thought to result in an increase in the tunneling current.” Ex. 1017, col. 7, ll. 19–23; see Pet. 36. Bowen, however, has “oxygen vacancy defects” in its MgO layer and “[o]xygen vacancies are naturally present in every oxide” according to Petitioner, but Bowen discloses a barrier height of 0.9 eV, which is outside the claimed range (albeit only slightly). Pet. 13, 23–24. Thus, Bowen contradicts Petitioner’s assertion that a barrier height within the claimed range of 0.1–0.85 eV is inherent when there are oxygen vacancy defects.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,968,909 - PTAB · Apr 21, 2025 · IPR2024-01447 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–4, finding a reasonable likelihood that claims 1–4 are obvious over at least Bowen and Sunai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’134 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 of the ’134 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) 5 Nagahama, EP 1391942 A1, published February 25, 2004 (Ex. 1027, “Nagahama”). (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’134 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See 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))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Bowen and Sunai teaches limitation 1[e]. Petitioner asserts, as an initial matter, that a person of ordinary skill would have been motivated to combine Bowen with Sunai because “CoFeB was known to increase TMR compared to CoFe.” Pet. 35. Dr. Bokor provides supporting testimony relying, in part, on reported research publications. Ex. 1024 ¶ 135. For instance, Dr. Bokor refers to Cardoso, which reports that the use of CoFeB-based junctures had improved TMRs compared to CoFe-based junctions. See Ex. 1061, Abstract (“CoFe-based junctions (R x A ~ 500 Ω.μm2) have lower TMR (~35%) and larger Hf (~5–6 Oe) and Hc (~12–14 Oe) [compared to CoFeB-based junctions].”). Wang also discloses that the use of CoFeB offered benefits including “a higher TMR value.” Ex. 1055, 2269–70. Additionally, Hosomi discloses that when a “ferromagnetic layer” is “comprised of a CoFeB alloy,” it “exhibits a larger TMR ratio.” Ex. 1056 ¶ 39. At this juncture, because of this evidentiary support, we find persuasive Dr. Bokor’s testimony that one of ordinary skill in the art would have been motivated to use an CoFeB alloy as disclosed in Sunai in Bowen. Patent Owner argues the motivation to combine Sunai and Bowen is flawed because Sunai, Wang, and Hosomi disclose the use of amorphous CoFeB only and not CoFeB in a crystalline form. See Prelim. Resp. 25–26, 28–29. While Sunai, Wang, and Hosomi disclose the use of amorphous CoFeB, Petitioner relies on these references to only provide support that one of ordinary skill in the art would be motivated to use a CoFeB alloy because of enhanced TMR performance due to the alloy. See Pet. 35–37; Ex. 1024 ¶¶ 135–137. We find that, on this preliminary record, the evidence provides sufficient support for Petitioner’s assertion that one of ordinary skill in the art would have been motivated to use CoFeB as taught in Sunai in Bowen because Sunai, Wang, and Hosomi, as well as Cardoso, provide support that the use of CoFeB improved electrode performance. Petitioner separately asserts that it would have been obvious to one of ordinary skill in the art to then crystallize the CoFeB electrode of the combination, which we discuss in more detail below.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,405,134 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 26, 2025 · IPR2024-01448 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because claims 1–8 were statutorily disclaimed, and declined to enter adverse judgment against the Patent Owner.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDecided for patent owner
“reissue, or motions to amend” in the related proceedings. Prelim. Reply 1–2. According to Petitioner, we have authority to enter adverse judgment under Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018), where the Court held that “37 C.F.R. § 42.73(b) permits the Board to enter an adverse judgment when a patent owner cancels all claims at issue after an IPR petition has been filed, but before an institution decision.” Prelim. Reply 1. Patent Owner disputes whether we have authority to enter adverse judgment, as disclaimed claims are treated as if they never existed and the Court in Arthrex only addressed whether “the Board’s interpretation [of 37 C.F.R. § 42.73(b)] is consistent with the language of the regulation” and expressly declined to “reach the questions of whether the regulation is authorized by the statute or whether, if so, it was properly promulgated.” See Arthrex, 880 F.3d at 1350–51; Prelim. Sur-Reply 1–2. Regardless, though, Patent Owner argues that we should deny institution and not enter adverse judgment based on the Board’s precedential decision in General Electric Company v. United Technologies Corporation, IPR2017-00491, Paper 9 at 2–3 (PTAB July 6, 2017) (designated precedential on Sept. 9, 2019). Prelim. Sur-Reply 2–3.” slip op. at 3
NonePatents in suitUS 11,737,372 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Mar 14, 2025 · IPR2024-01449 · APJ Justin T Arbes · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1 and 2 were unpatentable under any of the four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“inter partes review unless the information in the petition and preliminary 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 29 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’463 patent and the types of problems and solutions described in the ’463 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 25–26. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Further, because Bowen’s disclosed barrier height is outside the claimed range, Petitioner relies on Soukup’s purported teaching of a barrier height of “about 0.33 eV” and contends that a person of ordinary skill in the art would have been motivated to “achieve” that barrier height for the MgO barrier of Bowen’s device. Id. at 34–36. The data that Petitioner relies on from Soukup for the “about 0.33 eV” barrier height, though, was determined using the slope of an Arrhenius plot, not Simmons’ formula. Ex. 1028, 3229 (Abstract), 3231–33, Table I. In Soukup, apparent barrier heights for the samples were determined using (1) the slope of an Arrhenius plot, and (2) the zero-field intercept of the straight line logI versus V1/2 plot. Id. at 3229 (Abstract), 3230–32, Fig. 3, Table I. Reproduced below is Table I of Soukup, as annotated by Patent Owner (Prelim. Resp. 39): Annotated Table I of Soukup includes the results of analyses of sample test data, with the column highlighted in yellow showing the barrier heights obtained by a zero-field intercept method and the column highlighted in blue showing barrier heights obtained from the slope of an Arrhenius plot. See Ex. 1028, 3233; Prelim. Resp. 38–39. Dr. Bokor testifies that “Soukup disclosed that Simmons’ formula was used to approximate tunnel barrier height” and “[o]ne of skill would have understood the ‘height and the bias dependence of the insulator potential-energy barrier’ [referenced in Soukup] included the tunnel barrier height.” Ex. 1024 ¶¶ 145–147 (quoting Ex. 1028, 3229; citing Ex. 1024 ¶¶ 45–49). We do not find this testimony persuasive. Although Soukup refers to “Simmons’ model” and the Simmons 1963 paper in its “Introduction,” it does not teach any calculation using Simmons’ formula to obtain a barrier height within the claimed range. See Ex. 1028, 3229, 3236 n.1; Prelim. Resp. 63. Soukup plainly recognizes that there are methods of calculating barrier height other than Simmons’ formula, and discusses at length its calculations using two such methods: the Arrhenius plot method and the zero-field intercept method. See, e.g., Ex. 1028, 3229 (Abstract) (“These results . . . indicate a potential barrier height of about 0.72 eV when determined from the zero-field intercept of the straight line logI vs V1/2 plot and about 0.33 eV when obtained from an Arrhenius plot.”), 3232–33. Petitioner does not address whether the 0.33 eV barrier height it relies on from Soukup (determined using the Arrhenius plot method) would still be within the claimed range if calculated using Simmons’ formula. See Prelim. Resp. 63. Nor does Petitioner rely on any values from Soukup’s disclosure that would be used as the variables in Simmons’ formula—Petitioner relies solely on Bowen. See Pet. 39–42. Thus, Petitioner’s argument that Bowen and Soukup teach a barrier height within the claimed range, obtained using equation (1), is not persuasive. See id. at 34–42.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,123,463
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.