- PTAB · Nov 19, 2025 · IPR2025-00945 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted IPR on claims 1–25 after finding a reasonable likelihood that claim 19 would have been obvious over MASCC and Hoffmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have the authority to determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. §42.4(a). We may not institute an inter partes review “unless . . . 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 and the Preliminary Response, and for the reasons explained below, we determine that there is a reasonable likelihood that Petitioner would prevail with respect to at least one claim. Accordingly, we grant the Petition” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityOther
“Each party identifies itself as the sole real party in interest (RPI). Pet. 69; Paper 4, at 1. There is no dispute over RPIs in this proceeding. B. Related Matters” slip op. at 2
- Skill levelOther
“At this stage, we need not resolve the parties’ dispute with regard to the requisite level of skill in the art, as our analysis would be the same under either party’s definition of a POSA. We note, however, that Petitioner’s definition seems to be overly broad insofar as it would only require the POSA to be skilled in one of several broad fields, including “statistics” and “medical policy and decision making,” that do not directly relate to the claimed subject matter. At the same time, we do not agree with Patent Owner that the POSA needs specific clinical experience in the field of oncology. The claimed subject matter relates to the treatment of a side-effect associated with cancer therapy (CINV), and not the cancer itself. We also recognize that the prior art and the ’826 patent itself reflect the level of skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”). We further find, based on the present record, that both parties’ experts are qualified to testify from the perspective of a POSA in this proceeding. See Ex. 1009 ¶¶ 1–7 (Dr. Peroutka’s qualifications); Ex. 2067 ¶¶ 8–15 (Dr. Navari’s qualifications); Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm'n, 22 F.4th 1369, 1377 (Fed. Cir. 2022) (“[T]o be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case, an expert must at a minimum possess ordinary skill in the art.”). Even if some specific experience with regard to the treatment of CINV is required, Dr. Peroutka appears to have published in that field. See, e.g., Ex. 1020 at 10, (publication 16: article on “Combination antiemetics” in Cancer Treatment Reports); id. at 11 (publication 37: article on “Neurotransmitter receptor binding studies predict antiemetic efficacy and side effects” in Cancer Treatment Reports); id. at 13 (publication 51: article on “Chemotherapeutic agents do not interact with neurotransmitter receptors” in Cancer Chemotherapy and Pharmacology). B. Claim Construction” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“First, Petitioner proposes that “therapeutically effective amount” (recited in both independent claims) means: an amount sufficient to elicit the desired biological response. Pet. 9 (citing Ex. 1001, 7:55–57). The cited portion of the Specification clearly supports such a construction. Ex. 1001, 7:55–57 (“As used herein, ‘therapeutically effective amount’ refers to an amount sufficient to elicit the desired biological response.”). We adopt it. Second, Petitioner proposes a construction for “minimum effective dose of dexamethasone.” Pet. 9. That term appears nowhere in the challenged claims. Accordingly, we do not interpret the term. Finally, Petitioner proposes construing the following language appearing in claim 1: “administering to said patient on day one netupitant or a pharmaceutically acceptable salt thereof, in a therapeutically effective amount which enters the systemic circulation, crosses the blood brain barrier and occupies at least 70% of neurokinin-1 (NK1) receptors in the striatum seventy-two hours after said administration.” Pet. 9–10 (emphasis added). Specifically, Petitioner proposes that the italicized language, as introduced by the word “which,” denotes inherent properties (and not further limitations) resulting from the administering of the drug in a therapeutically effective amount. Id. On the instant record, with no argument to the contrary by Patent Owner, we agree with Petitioner. However, we do not explicitly address claim 1 below. Instead, the focus of our institution analysis is independent claim 19. We do not perceive a need to construe expressly any other claim term of the ’826 patent for purposes of determining whether to institute trial. C. Summary of Asserted References” slip op. at 13
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,623,826 - PTAB · Nov 19, 2025 · IPR2025-00947 · APJ Christopher G Paulraj · IPR · Institution
The Board instituted review of all challenged claims and grounds, finding a reasonable likelihood that claim 1 would have been obvious over Herrstedt and Bös.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialDenied
“II. DISCUSSION A. Discretionary Denial Patent Owner filed a request for discretionary denial of institution. Paper 8. Petitioner opposed. Paper 9. The Acting Director denied the discretionary denial request. Paper 12 (September 19, 2025). Accordingly, we proceed with our analysis of the merits of Petitioner’s patentability” slip op. at 8
- Skill levelOther
“At this stage, we need not resolve the parties’ dispute with regard to the requisite level of skill in the art, as our analysis would be the same under either party’s definition of a POSA. We note, however, that Petitioner’s definition seems to be overly broad insofar as it would only require the POSA to be skilled in one of several broad fields, including “statistics” and “medical policy and decision making,” that do not directly relate to the claimed subject matter. At the same time, we do not agree with Patent Owner that the POSA needs specific clinical experience in the field of oncology. The claimed subject matter relates to the treatment of a side-effect associated with cancer therapy (CINV), and not the cancer itself. We also recognize that the prior art and the ’357 patent itself reflect the level of skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). This standard requires that we construe claims “in accordance with the ordinary and customary meaning of such claim[s] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Petitioner contends no terms need to be construed to find the claims unpatentable in view of the prior art. Pet. 9. Patent Owner also contends that no claim construction is necessary to resolve the parties’ disputes. Prelim Resp. 14. At this stage, we do not perceive a need to construe expressly any claim terms of the ’357 patent for purposes of determining whether to institute trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Herrstedt taught the use of aprepitant as an NK1 receptor antagonist that could be combined with dexamethasone and palonosetron to treat emesis. Nonetheless, based on Bös’s identification of netupitant (compound Ib) as a “potent and selective” NK1 antagonist with “valuable therapeutic properties,” the present record supports Petitioner’s argument that the POSA would have been motivated to replace aprepitant with netupitant in the combination therapy. Ex, 1014, 14:31–34. Bös indicates that the compounds disclosed therein have utility in the treatment of emesis, and that neutpitant in particular “is a potent antagonist of NK1 induced behaviors in Gerbil and blocks emesis in Ferrets and suncus murinus with similar potency.” Id. at 19:26–30. Bös further indicates that netupitant has a high affinity for the NK1 receptor and a prolonged half-life. Id. at 18:44–48, 19:31–38. In view of these properties, we find a POSA would have had good reason to consider netupitant as a potential replacement for aprepitant in the treatment of CINV.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,186,357 - Inari Agriculture, Inc. v. Corteva Agriscience LLCNo claims unpatentablePTAB · Nov 18, 2025 · IPR2024-01014 · APJ Zhenyu Yang · IPR · Final written decision
Petitioner did not show claims 1–8 unpatentable because they are entitled to the 2004 priority date, making Barbour unavailable as prior art.
RulingsFinal written decision- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Entitled to earlier dateDecided for patent owner
“For a claim to a biological material, the enablement requirement of § 112, first paragraph, does not require such assured access to a microorganism deposit as of the filing date; what is required is assurance of access (to the microorganism culture by the public upon issuance of a patent on the application) prior to or during the pendency of the application, so that, upon issuance of a U. S. patent on the application, the public will, in fact, receive something in return for the patent grant. Feldman, 517 F.2d at 1355. Patent Owner has persuaded us that such exception not only applies to a deposit, but also extends to a biological material known and readily available. See 52 Fed. Reg. 34080, 34081. In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art. Because all of Petitioner’s challenges rely on Barbour (Pet. 6), all those challenges fail.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art. Because all of Petitioner’s challenges rely on Barbour (Pet. 6), all those challenges fail.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“would understand that the term “‘flanked by’ permits overlap between the expression cassette and the DNA sequence it is flanked by.” Pet. 24–26. Patent Owner does not propose any claim construction. PO Resp. 6–7. On this record and for purposes of this Decision, we see no need to expressly construe any claim term.” slip op. at 9
Patent outcomesUS 8,901,378 not shown unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 8,901,378 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2024-01399 · APJ Thu A Dang · IPR · Final written decision
Claims 1–6, 8–15, and 17–20 are unpatentable under § 103, based on Buer alone or in the combinations listed.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“1 Apple Inc. filed a motion for joinder and a petition in IPR2024-01399, which were granted, and, therefore, Apple Inc. has been joined as petitioner in this proceeding. We also granted a Joint Motion to Terminate Inter Partes Review Proceeding as to the other petitioner, leaving Apple Inc. as the sole petitioner.” slip op. at 1
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “[n]one of the elements of the Challenged Claims . . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 2–3; see also IPR2024-00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024-00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 17
- Prior constructionPrior construction adoptedDecided for patent owner
“invoke 35 U.S.C. § 112 ¶ 6. See PO Resp. 4; Pet. Reply 2; PO Sur-reply 8. However, we addressed similar arguments with respect to this issue in previous related proceedings. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. In fact, during Oral Argument in this proceeding, Patent Owner acknowledged that “this panel construed the claims at issue in [previous proceedings,] IPR2024-573 and 2024-407.” Tr. 20:3–5. In particular, Patent Owner acknowledged that “the Board would rely on and import the construction from those IPRs, . . . 2024-407 and ’573 for the sake of consistent office determination.” Id. at 20:9–11. That is, Patent Owner agreed that the Board should use the prior constructions for the same claim terms at issue in this proceeding. Id. at 26:12–16 (“JUDGE MCKONE: -- it sounds like everybody agrees, that we should use the prior claim constructions from [the] other proceedings . . . Do you agree? MR. HECHT: -- if the Board agrees, absolutely.”). Petitioner also agreed that the Board should use the prior constructions. See id. at 31:23–32:3 (“JUDGE MCKONE: And so I assume you want us to use the same claim construction in this case as the previous case[s]; is that correct? MR WOO: That is correct, Your Honor.”). We agree with the parties that, for the sake of consistency, we apply our claim constructions from the previous proceedings. Tr. 20:22–25. As set forth in the previous related proceedings, we determined that the claims do not invoke 35 U.S.C. § 112 ¶ 6. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. Thus, for consistency, and for the reasons given in the previous related proceedings, in this proceeding, we also determine that the claims do not invoke 35 U.S.C. § 112 ¶ 6, as discussed below.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32. Here, as Petitioner points out, Buer discloses an authentication component for providing credentials to a service provider to authenticate access to secured services, wherein the authentication component generates an RF signal providing the necessary authentication information to a service provider. Pet. 45; see Ex. 1005 ¶¶ 152, 174. Buer further discloses a mobile device with an RFID client to authenticate a user to another processing system, the mobile device transmitting an enablement signal to a computer with a point-of-sale device. Pet. 47; see Ex. 1005 ¶¶ 192–195. We find availing Petitioner’s contention that Buer’s authentication component “enables” a wide variety of applications, functions, or services. Pet. 56. Petitioner’s contention is supported by Dr. Wolfe’s testimony and is consistent with the teachings of Buer. See Ex. 1003 ¶ 229. Based on the complete record presented, we determine that Petitioner has persuasively shown that Buer teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 39
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2024-00782 · APJ Thu A Dang · IPR · Final written decision
Claims 1–6, 8–15, and 17–20 are unpatentable under § 103 over the stated prior-art grounds.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Here, as Petitioner points out, “[n]one of the elements of the Challenged Claims . . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 2–3; see also IPR2024-00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024-00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32.” slip op. at 39
- Skill levelOther
“B. Principles of Law A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness.10 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find Patent Owner’s arguments unavailing. In particular, we disagree with Patent Owner’s contention that the District Court provided a construction for “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabled.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabled” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that Buer does not disclose the “enabled” limitation because, in Buer, “no key is provided in exchange for the information.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32. Here, as Petitioner points out, Buer discloses an authentication component for providing credentials to a service provider to authenticate access to secured services, wherein the authentication component generates an RF signal providing the necessary authentication information to a service provider. Pet. 45; see Ex. 1005 ¶¶ 152, 174. Buer further discloses a mobile device with an RFID client to authenticate a user to another processing system, the mobile device transmitting an enablement signal to a computer with a point-of-sale device. Pet. 47; see Ex. 1005 ¶¶ 192–195. We find availing Petitioner’s contention that Buer’s authentication component “enables” a wide variety of applications, functions, or services. Pet. 56. Petitioner’s contention is supported by Dr. Wolfe’s testimony and is consistent with the teachings of Buer. See Ex. 1003 ¶ 229. Based on the complete record presented, we determine that Petitioner has persuasively shown that Buer teaches “one or more of the integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1. v. Claim 1 Conclusion Based on the complete record presented, Petitioner has shown that Buer teaches all limitations of claim 1. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over Buer.” slip op. at 39
Patent outcomesUS 8,646,042 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2025-00075 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over the asserted combinations of Dua, Giobbi ’157, Kotola, Buer, and Nishikawa.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Challenged Claims. . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 3; see also IPR2024- 00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024- 00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 18
- Prior constructionPrior construction adoptedDecided for patent owner
“invoke 35 U.S.C. § 112 ¶ 6. See PO Resp. 4; Pet. Reply 2; PO Sur-reply 10. However, we addressed similar arguments with respect to this issue in previous related proceedings. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. In fact, during Oral Argument in this proceeding, Patent Owner acknowledged that “this panel construed the claims at issue in [previous proceedings,] IPR2024-573 and 2024-407.” Tr. 20:3–5. In particular, Patent Owner acknowledged that “the Board would rely on and import the construction from those IPRs, . . . 2024-407 and ’573 for the sake of consistent office determination.” Id. at 20:9–11. That is, Patent Owner agreed that the Board should use the prior constructions for the same claim terms at issue in this proceeding. Id. at 26:12–16 (“JUDGE MCKONE: -- it sounds like everybody agrees, that we should use the prior claim constructions from the other proceedings . . . Do you agree? MR. HECHT: -- if the Board agrees, absolutely.”). Petitioner also agreed that the Board should use the prior constructions. See id. at 31:23–32:3 (“JUDGE MCKONE: And so I assume you want us to use the same claim construction in this case as the previous case[s]; is that correct? MR WOO: That is correct, Your Honor.”). We agree with the parties that, for the sake of consistency, we apply our claim constructions from the previous proceedings. Tr. 20:22–25. As set forth in the previous related proceedings, we determined that the claims do not invoke 35 U.S.C. § 112 ¶ 6. See IPR2024-00405, Paper 24 at 8–25; IPR2024-00407, Paper 25 at 8–26; IPR2024-00573, Paper 27 at 8–29. Thus, for consistency, and for the reasons given in the previous related proceedings, in this proceeding, we also determine that the claims do not invoke 35 U.S.C. § 112 ¶ 6, as discussed below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have found it obvious to combine the teachings of Dua and Giobbi ’157 (Pet. 31), citing Dr. Wolfe’s supporting testimony (Ex. 1003). In particular, Petitioner posits that POSITA would have been motivated and found it obvious to “securely store the financial information in its tamper-resistant tag ‘to prevent hackers from retrieving confidential information’” (Pet. 31 (citing Ex. 1003 ¶¶ 105, 109)), as disclosed by Giobbi ’157. As Petitioner points out, Giobbi ’157 teaches “credit/debit card information” that is stored in a “profile memory field 232” in the “physical access secured and tamperproof” memory (id.; see Ex. 1006 ¶¶ 36, 42, 63), and we find persuasive Petitioner’s contention that a POSITA would have reasonably expected to succeed in “storing the ‘credit card profile or other payment information’ in Dua’s tamper resistant tag memory,” wherein such combination “would have been no more than combining prior art elements according to known methods to yield predictable results.” Id. (citing Ex. 1003 ¶ 158).” slip op. at 40
- Skill levelOther
“Principles of Law B. A patent claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness.9 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).” slip op. at 25
Patent outcomesUS 9,679,289 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Google LLC / Apple Inc. v. Proxense, LLCAll claims unpatentablePTAB · Nov 12, 2025 · IPR2024-00783 · APJ Thu A Dang · IPR · Final written decision
Claims 1–20 are unpatentable under § 103 over the listed combinations of Dua, Giobbi ’157, Kotola, Buer, and Nishikawa.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“Challenged Claims. . . use the word ‘means,’” similar to the challenged claims in the previous related proceedings. Pet. Reply 3; see also IPR2024- 00405, Ex. 1001, 22:43–60; IPR2024-00407, Ex. 1001, 22:36–49; IPR2024- 00573, Ex. 1001, 21:51–65. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 18
- Prior constructionPrior construction not adoptedDecided for petitioner
“construction for “enabling one or more of an application, a function, and a service,” as recited in claim 1. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. at 32 (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabling,” as we determined in the Decision to Institute, this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Dec. Inst. 9. As we explained, a determination of whether a term is indefinite is not the same thing as construing a claim term. Id. Thus, as we previously explained, by determining that “hybrid device” is not indefinite, the District Court did not construe the term “enabling.” Id.; see also Ex. 2002, 26. Accordingly, nothing in the Memorandum provides a construction of “enabling” as Patent Owner contends. Id. Thus, we find unavailing Patent Owner’s contention that “nowhere does Dua teach or describe . . . providing an access key in exchange for information held locally in the PDK’s service blocks.” PO Resp. 33. That is, we decline to adopt Patent Owner’s proposed construction that an application, function or service is “enabled” by a PDK “when it receives information from a PDK in exchange for an access key.” Id. at 32.” slip op. at 39
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find Patent Owner’s arguments unavailing, as they rely on Patent Owner’s arguments that “the specification defines ‘local, secured information’ as information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” (PO Resp. 30), with which, as discussed above, we do not agree. Dua discloses an “RFID Tag-Reader Module” which includes “Tag Memory 322” that may be tamper resistant. See Ex. 1004 ¶¶ 105, 109. Thus, we find persuasive Petitioner’s reliance on Dua’s Tag Memory 322, which locally stores information in a tamper-resistant manner, for teaching an integrated, secure memory for storing information locally, wherein the information is secured. Id. Based on the complete record presented, we determine that Petitioner has persuasively shown that the proposed combination of Dua and Giobbi ’157 teaches “an integrated, secure memory storing local, secured information,” as recited in claim 1.” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“would have found it obvious to combine the teachings of Dua and Giobbi ’157 (Pet. 31), citing Dr. Wolfe’s supporting testimony (Ex. 1003). In particular, Petitioner posits that POSITA would have been motivated and found it obvious to “securely store the financial information in its tamper-resistant tag ‘to prevent hackers from retrieving confidential information’” (Pet. 31 (citing Ex. 1003 ¶¶ 105, 109)), as disclosed by Giobbi ’157. As Petitioner points out, Giobbi ’157 teaches “credit/debit card information” that is stored in a “profile memory field 232” in the “physical access secured and tamperproof” memory (id.; see Ex. 1006 ¶¶ 36, 42, 63), and we find persuasive Petitioner’s contention that a POSITA would have reasonably expected to succeed in “storing the ‘credit card profile or other payment information’ in Dua’s tamper resistant tag memory,” wherein such combination “would have been no more than combining prior art elements according to known methods to yield predictable results.” Id. (citing Ex. 1003 ¶ 158). Patent Owner does not address Petitioner’s positions on combining the teachings of Dua and Giobbi ’157 and thus Petitioner’s positions stand unopposed as a part of this trial. We have reviewed Petitioner’s explanations and supporting evidence regarding Petitioner’s proffered reasoning to combine the references, and we agree with and adopt them as our own. Based on the complete record presented, we determine that Petitioner has persuasively shown that a person of ordinary skill in the art would have combined Dua and Giobbi ’157 as proffered in the Petition.” slip op. at 40
Patent outcomesUS 9,679,289 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - PLR Worldwide Sales Ltd. v. Flip Phone Games Inc.All claims unpatentablePTAB · Nov 5, 2025 · IPR2024-00133 · APJ Scott B Howard · IPR · Final written decision
Claims 1–10 are unpatentable as obvious over Sturman and Ho; the Board found the Ho/Jiau/Choi grounds, with and without Ellis, insufficient.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We see very little difference between the parties’ respective proposals. We adopt Patent Owner’s marginally more specific proposal as it better reflects the ’089 patent. Additionally, because we would reach the same conclusions under Petitioner’s proposal, we agree with Patent Owner that this does not affect our analysis.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Consistent with Phillips, we begin with the “ordinary and customary meaning” of the words of the claims. Phillips, 415. F.3d at 1312–13 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The parties agree that the ordinary and customary meaning of the phrase “background object” is consistent with the dictionary definition and means an object that is “not in the foreground.” Tr. 8:10–16; PO Resp. 8–9; Ex. 2008 (AMERICAN HERITAGE DICTIONARY 2006); see also Ex. 2009 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM- WEBSTER DICTIONARY 2007); Ex. 2010 (“the part of a picture or pattern that is behind the main people or things in it” (MACMILLIAN ENGLISH DICTIONARY 2007); Ex. 2011 (“the ground or parts, as of a scene, situated in the rear (opposed to foreground)”) (RANDOM HOUSE WEBSTER’S COLLEGE DICTIONARY 2005). Having determined the ordinary and customary meaning, we need only look to see if there is some reason—such as the applicant acting as a lexicographer or the ordinary and customary meaning being improperly subjective—why the ordinary and customary meaning is not controlling.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We do not find that the prosecution history demonstrates that the applicant acted as a lexicographer by “clearly set forth a definition of the disputed claim term,” or “clearly express[ing] an intent to define the term” as required by Thorner, 669 F.3d at 1365. Instead, the language in the prosecution history is consistent with the ordinary and customary meaning. That is, the applicant focuses on the location of the object relative to the area of game play, i.e., the foreground. For example, the applicant distinguishes Chu’s object as not being “background objects” because they “are featured in the forefront of [the] game play as primary objects to be manipulated or used during game play (see Chu at ¶¶ [0063]–[0065]).” Ex. 1002, 85 (emphasis added).12 The applicant continued by arguing that Chu’s objects “exist in the background, outside of the primary focus of game play and as unexpectedly interactive components, and are not themselves needed or required in order to play the game.” Id. If anything, this demonstrates an intent of the applicant to use the customary and ordinary meaning—not in the foreground—and not act as a lexicographer.” slip op. at 17
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not agree with Patent Owner’s argument. Under our rules, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). We have reviewed Dr. Zagal’s testimony on this subject (see Ex. 1003 ¶¶ 156–160, 163, 166, 172, 177–178) and find that it complies with our requirements. Specifically, Dr. Zagal provides his opinion and identifies specific evidence in the record that supports it. We do not find MarkForged, a nonprecedential decision, persuasive. Although MarkForged cites 37 C.F.R. § 42.65(a) as support for the proposition that expert testimony “is entitled to little to no weight [if] it merely parrots the Petition,” the rule is silent on that point. Patent Owner has not directed us to any rule or precedential decision that says that non- 17 The decision was affirmed by the Director. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 (PTAB Aug. 24, 2022). conclusory testimony which cites underlying factual support, such as Dr. Zagal gives in this proceeding, is entitled to no weight.” slip op. at 49
Patent outcomesUS 8,688,089 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - Microsoft Corporation v. Proxense, LLCAll claims unpatentablePTAB · Oct 17, 2025 · IPR2024-00846 · APJ David C Mckone · IPR · Final written decision
Claims 1–29 are unpatentable: claims 1, 2, 4, 5, 7–13, 15, 16, 18–24, and 26–29 as obvious over Burger; claims 3, 14, and 17 over Burger and Robinson; claims 6 and 25 over Burger and …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“For the same reasons, and based on the same evidence, given in the ’233 FWD, we maintain our construction of “a third party that operates a trusted authority,” namely, “a trusted authority that is an entity separate from the parties to a transaction,” and make clear that such a transaction is not limited to those in which the principal parties are the user being allowed access and the application being accessed. Based on the complete record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner contends that “it would have been obvious to a [person of ordinary skill in the art] to incorporate the age verification method of Robinson in Burger so that Burger’s system can be used by businesses interested in conducting transactions that require age-verification.” Pet. 93. Petitioner argues that it would have been predictable to include Robinson’s age-verification feature in Burger’s system in light of Robinson’s explanation that merchants and their employees face penalties if they sell age-restricted goods (e.g., alcohol or tobacco) to underage individuals. Id. at 94–95 (citing Ex. 1006 ¶ 5; Ex. 1003 ¶¶ 79–80). Dr. Traynor testifies that there would have been “a reasonable expectation of success because it merely involves combining known elements in a manner that would have been easily implemented and obvious to” a skilled artisan. Ex. 1003 ¶ 80. We credit Dr. Traynor’s uncontroverted testimony and find that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Burger and Robinson. As to claims 3, 14, and 17, Robinson describes a user registering a biometric sample, identity-verifying information (SID), and age-verifying information with a database of an age-verification system. Pet. 95–96 (citing Ex. 1006 ¶¶ 14–15, 28, 43, 48; Ex. 1003 ¶¶ 175–178). We find that a skilled artisan would have combined the teachings of Burger and Robinson, such that Robinson’s age-verifying information would have been stored in the database of Burger’s network server 114. Id. at 95 (citing Ex. 1003 ¶ 176). Patent Owner does not provide separate arguments for claims 3, 14, and 17. PO Resp. 22. limitations of claims 3, 14, and 17, and that a skilled artisan would have had reasons, with rational underpinning, for combining Burger and Robinson. The record does not contain evidence of objective indicia of nonobviousness. Upon consideration of all the evidence, we conclude that Petitioner has proved by a preponderance of the evidence that claims 3, 14, and 17 would have been obvious over Burger and Robinson.” slip op. at 36
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find that, after Burger’s network server 114 authenticates a user’s pocket vault ID, the user is granted access to pocket vault 102 and can select a transaction from a displayed menu, including use of a credit card. subsequent access to that credit card information, either by displaying it or through token 102a, is because network server 114 sent a communication to pocket vault 102 indicating that it successfully authenticated the pocket vault. Ex. 1003 ¶ 115. This is the obvious inference a skilled artisan would have drawn from Burger’s description of authenticating the pocket vault and subsequently allowing credit card information to be used. Thus, we find that, in this example, the operator of network server 114 is a third party that operates a trusted authority, the principle parties to the transaction are the user of pocket vault 102 and the retailer, and a message from network server 114 to pocket vault 102 allowing the credit card to be used (displayed or encoded in the token) is an access message allowing the user access to the application (file with credit card information). Accordingly, we find that this example of Burger teaches claim limitations 1.4 and 1.5.” slip op. at 22
Patent outcomesUS 8,886,954 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,886,954 - Yealink (USA) Network Technology Co., Ltd. / Yealink Network Technology Co., Ltd. v. Barco NVInstitutedPTAB · Oct 7, 2025 · IPR2025-00597 · APJ David C Mckone · IPR · Institution
The Board instituted review of claims 1–22 on all asserted grounds after finding a reasonable likelihood that claims 1–22 would have been obvious over Beel and Dinka.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In sum, on the current record, Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over Beel and Dinka. f) Claims 2–22 The parties present their arguments for independent claim 11 along with those for claim 1. Pet. 44–45; Prelim. Resp. 19, 23. Claims 2–10 and 22 depend, directly or indirectly, from claim 1. Claims 12–21 depend, directly or indirectly, from claim 11. Patent Owner does not present separate arguments for claim 11 or the dependent claims. We have analyzed Petitioner’s arguments and evidence for claims 2–22 (Pet. 36–46) and, on the current record, conclude that Petitioner has shown sufficiently that claims 2–22 would have been obvious over Beel and Dinka.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner, relying on the testimony of Dr. Almeroth and alleged admissions by Patent Owner in litigation, contends that a person of ordinary skill in the art would have had “a Master of Science (M.S.) degree in electrical engineering or computer science, and five years of work experience in a related field” and that “[a]dditional educational experience could substitute for some of the work experience.” Pet. 8 (citing Ex. 1002 ¶¶ 36–37). “Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this time.” Prelim. Resp. 6. For purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’346 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“Patent Owner accepts the Petition’s claim construction for the purposes of” the Preliminary Response. Prelim. Resp. 5–6. In light of Patent Owner’s acceptance, and because the proposed constructions are, on this record, consistent with the evidence cited by Petitioner, we, too, accept Petitioner’s proposals for “providing simulations or translations, as required,” and “data transformations,” as recited in claim 1, for purposes of this Decision. Based on the record before us, we do not find it necessary to provide express claim constructions of any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 foundDecided for petitioner
“Patent Owner argues that Dr. Almeroth does not provide a reason why a skilled artisan would have been motivated to combine Beel and Dinka, and that, instead, he “summarily concludes that Skype’s status as ‘well-known’ somehow would have motivated the combination of Dinka with Beel.” Prelim. Resp. 16. We disagree. Dr. Almeroth testifies that Skype, as taught in Dinka, would have been an example of the type of application that would have run on Beel’s system and that applying Dinka’s teachings would have improved Beel’s similar system in the same manner as it improved Dinka’s, with predictable results. Ex. 1002 ¶¶ 117, 132. See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent ‘simply arranges old elements with each performing the same function it had been known to perform’ and yields no more than one would expect from such an arrangement, the combination is obvious.” (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976))). On the current record, including Dr. Almeroth’s testimony, Petitioner’s proposed reasons to combine the teachings of Beel and Dinka have rational underpinning.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,966,346
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.