• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00712 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 were not shown unpatentable because Walker was not prior art and Kelly did not teach limitations 1[d.i] and 1[d.ii].

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 5–10. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–9. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “evidence that Kelly teaches limitations 1[d.i] and 1[d.ii]. As Patent Owner persuasively argues, “the recorded information regarding particular game play events” of limitations 1[d.i] and 1[d.ii] refers to “memory to . . . record game play information regarding particular game play events” in limitation 1[b.ii], but Petitioner does not map “the game play events” identified in limitation 1[b.ii] to limitations 1[d.i] and 1[d.ii]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but largely reiterates its arguments from the Petition. However, none of these arguments or evidence demonstrates that the “game play events” in limitations 1[d.i] and 1[d.ii] are same the “game play events” that are allegedly stored in limitation 1[b.ii]. Even if we accept Petitioner’s contention that it was not identifying button presses or the “game identifier,” but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitations 1[d.i] and 1[d.ii]. See Pet. 29–33 (citing Ex. 1005, 25:23–24, 26:59–27:1, 32:27–33, 37:1–10, 38:66–39:7 40:33–45, 56:49–51, 57:27–33). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitations 1[d.i] and 1[d.ii]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 all depend (either directly or indirectly) from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 would have been obvious over Kelly.” slip op. at 44

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “programmable variable parameter sets to achieve the mandated parameters,” we find that Patent Owner sufficiently explained “the notes from the 12/4/02 meeting reflect that the inventors proposed that their invention could raise the global payout percentage ‘to 75%’ – a mandated parameter – by ‘increas[ing] % of wins by the level 2,’ i.e., a secondary game level – a variable parameter.” See PO Resp. 28–32, 37, 38; Ex. 2016; Ex. 2017 ¶¶ 23–24, 41–42; Ex. 2012 ¶ 90, 63–64. Indeed, Mr. Crevelt confirmed that that a POSITA would unequivocally regard disclosure of “win rate[s]” and “global payout percentage[s]” as disclosing the claimed “mandated parameters” that are achieved by utilizing variable parameters. See Ex. 2020, 15:7–18:4, 19:14–21:16, 24:25–25:15 (global payout percentages), 21:18– 24:24 (win rates).” slip op. at 33

  Patent outcomesUS 11,393,279 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,393,279
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00708 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 were not shown unpatentable over Kelly or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (“POSITA”). In assessing 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) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 14 (citing Ex. 1003 ¶¶ 62–65). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’336 patent Specification and the asserted prior art references, based on our review of the record. Patent Owner states that “[f]or the purposes of this response, Patent Owner does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue,” and “this POR and supporting declarations apply Petitioner’s proposed level of skill.” PO Resp. 8. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’336 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no terms require express construction to resolve the parties’ disputes in this case. See id. slip op. at 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 6–12. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–8. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We find that Petitioner has failed to show by a preponderance of the evidence that Kelly teaches limitation 1[f]. As Patent Owner persuasively argues, “the game play events” of limitation 1[f] refers to “game play events” in limitation 1[d], but Petitioner does not map “the game play events” identified in limitation 1[d] to limitation 1[f]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but merely reiterates its arguments from the Petition. See Reply 23–24, 26. However, none of these arguments or evidence demonstrates that the “game play events” in limitation 1[f] are same the “game play events” that are allegedly stored in limitation 1[d]. Even if we accept Petitioner’s contention that it was not identifying button presses, but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitation 1[f]. See Pet. 25–26 (citing Ex. 1005, 25:23–24, 32:27–33, 40:33–45, 56:49–51). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitation 1[f]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 all depend from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 would have been obvious over Kelly.” slip op. at 40

  Patent outcomesUS 8,529,336 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,529,336
• Clearwater Paper Corporation v. Graphic Packaging International LLCAll claims unpatentable
  PTAB · Sep 23, 2026 · IPR2025-00878 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–3 and 11 are unpatentable as anticipated by Cleveland and obvious over Nakagawa and over Nakagawa combined with Tanner.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have at least a bachelor’s degree in mechanical or chemical engineering, materials science, polymer science, or equivalent coursework, at least a year of experience developing paper-based laminates involving the application of polymer coatings to a substrate, and the appropriate industry familiarity with biodegradability standards and degradability techniques [and] . . . [l]ess work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa. Pet. 16 (citing Ex. 1003 ¶ 50). Clearwater’s definition is uncontested, and we apply that definition here, as it accords with the level of skill reflected in the asserted prior art and the problems addressed in the specification of the ’126 patent. C. Claim Construction” slip op. at 6

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We have reviewed the cited testimony of Clearwater’s expert, including their calculations for arriving at a coat weight in Nakagawa that falls within the claimed range. See Ex. 1003 ¶¶ 132–33. We find that testimony, which is unrebutted, both credible and supported by the evidence of record. Thus, in light of Clearwater’s contentions, the cited portions of Nakagawa, and the unrebutted testimony of Clearwater’s expert, we are persuaded that Nakagawa discloses or otherwise suggests each and every element of claim 1. See Pet. 45–54, 60–64. Clearwater also persuades us that Cleveland discloses the additional subject matter of dependent claims 2, 3, and 11. See Pet. 64–66. Thus, we determine that Clearwater demonstrates that claims 1–3 and 11 are unpatentable as obvious over Nakagawa. F. Ground 3—Obviousness Over Nakagawa and Tanner” slip op. at 17

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner

    “qualifies as prior art under 35 U.S.C. § 102(e)(1) “based on both its provisional and non-provisional filing dates.” Inst. Dec. 4 n.5. We were persuaded by Clearwater’s proof that Cleveland’s provisional (Ex. 1006) is “virtually identical” to Cleveland itself (Ex. 1005) and that the provisional provides written description support for at least claim 1 of Cleveland. See Pet. 18–21 (citing Ex. 1006, 2–6, 9). We were also persuaded by Clearwater’s showing that the provisional provides written support for the subject matter relied upon in Cleveland. Id. at 21–40 (citing Ex. 1006, 1–9). We are still persuaded by Clearwater’s showing. Thus, we see no reason to disturb our earlier finding that Cleveland is prior art to the ’126 patent.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “protectant layers has “a coat weight of from 5 to 30 lbs/3000 ft2.” As noted by Clearwater, Cleveland discloses a total coat weight for layers 14 and 16 as falling within the claimed range. Pet. 32–34 (citing Ex. 1005 ¶ 32). In particular, Cleveland discloses that “the coextruded layer of copolyester (irrespective of which side of the substrate the layer is disposed) is of a total coat weight of between about 10 and about 40 lb/3000 ft2 in any combination of between about 80/20 to 20/80 parts by weight of Ecoflex to Biomax,” of which “a total coat weight of 25 lb/3000 ft2 is preferred.” Ex. 1005 ¶ 32. As disclosed, Cleveland’s total coat weight range of 10–40 lb/3000 ft2 falls almost entirely within the claimed range, and the preferred total coat weight of 25 lb/3000 ft2 falls squarely within the claimed range. Thus, Cleveland satisfies claim elements [1.3.2] and [1.5.2]. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (“[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is anticipated if one of them is in the prior art.”) (citation omitted). As such, we find that Clearwater adequately demonstrates that Cleveland discloses all the elements of claim 1. 4. Dependent Claims” slip op. at 12

  Patent outcomesUS 8,637,126 unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,637,126
• Innoscience America, Inc. v. Infineon Technologies Americas Corp.No claims unpatentable
  PTAB · Jun 30, 2026 · IPR2025-00175 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–17 were not shown unpatentable because Petitioner failed to establish that Usui’s interconnect structure or Yu’s metal gate stacks satisfy the construed “electrode stack” limitation.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA” or “POSA”) would have had “at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 80–82). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 1–76. Neither party explains why the outcome of this case would be affected by the adoption of the proffered definition of a person of ordinary skill in the art. In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 6–7. Because Petitioner’s definition of the level of skill in the art is consistent with the ’562 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “comprises the recited metals and has the recited thickness, which forms an electrical contact for use on a semiconductor device generally or a group III- V semiconductor in particular. This is consistent with our determination that “electrode stack” is a conductor that provides a path for current entering or leaving a medium such as a semiconductor device We disagree with Patent Owner that “electrode stack” as used in the challenged claims should be limited to the specific electrodes shown in the embodiments described in the Specification. See PO Resp. 4–9. Although the Specification describes embodiments using source, drain, and Schottky gate electrodes as electrical contacts, we see no reason to construe the term “electrode stack” itself to be limited to these components as Patent Owner proposes. Claims 1 and 13 expressly recite that electrode stacks comprise the claimed “electrical contact,” without expressly including or precluding any specific type of electrode. Ex. 1001, 5:54–63, 6:37–47. The Federal Circuit advises that the Specification “is not a substitute for, nor can it be used to rewrite, the chosen claim language. ‘Specifications teach. Claims claim.’” SuperGuide, 358 F.3d at 875 (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 n.14 (Fed. Cir. 1985) (en banc)). The Specification does teach electrical contacts that include source, drain, and Schottky gate electrodes, but claims 1 and 13 are directed to electrical contacts that are not expressly so limited. Patent Owner’s proposed construction would effectively rewrite the claim by adding limitations, which we decline to do under the guise of claim construction. See id. (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). In view of the foregoing, we construe the claim term “electrode stack” to mean “a conductor that provides a path for current entering or leaving a medium such as a semiconductor device.”” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “that the identified layers in Usui’s interconnect metallurgy structure form an “electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. See Pet. 11–12 (citing Ex. 1002 ¶¶ 89–91). Neither Petitioner nor Dr. Zhao, however, provide adequate explanation or evidence as to why Usui’s interconnect metallurgy structure forms an “electrode stack,” i.e., a conductor that provides a path for current entering or leaving a medium such as a semiconductor device. Dr. Zhao’s testimony merely repeats the disclosures in Usui and concludes, without further technical detail, explanation, or reference to objective evidence, that Usui’s Figure 8 discloses an electrode stack. Ex. 1002 ¶¶ 89–91. Dr. Zhao’s testimony sets forth Petitioner’s conclusory assertions as though they are facts, rather than setting forth facts and evidence in support of those assertions. Compare id. with Pet. 11–12. Absent underlying facts or evidence to support Dr. Zhao’s opinion, the cited testimony “adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In contrast, Patent Owner’s declarant Dr. Piner testifies, with evidentiary support, that interconnects (such as Usui’s interconnect metallurgy structure) and electrical contacts (such as that claimed in the ’562 patent) are not the same thing. See Ex. 2024 ¶¶ 63–70. For example, Dr. Piner explains: In other words, not all metals in a semiconductor device have the same purpose and could not be said to be interchangeable. By August 2009 it was well known to a POSA how to discern if a metal component in a transistor is an interconnect or serves as an electrical contact such as a gate contact or ohmic contact, based on the structure and functionality of the metal component. For example, interconnects are made up of metal strips and are deposited on insulators. EX-1011 (Mishra) at 216. Interconnects are low resistance conductors that can carry very high current densities. Id., 216, 217. Unlike Schottky contacts and ohmic contacts, interconnects do not provide non-linear IV response like Schottky contacts nor inject electrons and holes into semiconductors like ohmic contacts. Id., 218. As many of the references cited by Dr. Zhao illustrate, electrical contacts had their own highly complex design challenges. EX-1008 (Pearton), 41-59 (Pages 53-71 of 383) (discussing electrical contacts); EX-1017 (Kramer), 11-126 (Pages 18-130 of 151) (same). And while Dr. Zhao cites these as supporting a POSA’s knowledge of an electrical contact, none of these references describe electrical contacts as interconnects. Id. ¶ 71. Dr. Piner further testifies that Usui’s interconnect metallurgy structure is an interconnect, and not an electrical contact, because “Usui states that ‘[t]he structures fabricated by the process of the present invention are especially useful for forming electrical connections or wiring such as between active and/or passive devices of an integrated circuit structure.’” Id. ¶ 148 (citing Ex. 1004, 1:11–14) (alteration in original); see also id. ¶¶ 150– 151 (Dr. Piner testifying that Usui’s interconnect metallization structure is not an “electrode stack” under a broad definition of electrode). Dr. Piner’s testimony in this regard rebuts Petitioner’s and Dr. Zhao’s conclusory assertions to the contrary.” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “conductor that provides a path for current entering or leaving a medium such as a semiconductor device.” Thus, Petitioner must show that Usui’s layers 13–15, 18, and 19 provide a path for current entering or leaving a medium such as a semiconductor device. After reviewing the complete trial record, we are not persuaded that Petitioner has done so. Petitioner relies on the testimony of Dr. Zhao to support its contention that the identified layers in Usui’s interconnect metallurgy structure form an “electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. See Pet. 11–12 (citing Ex. 1002 ¶¶ 89–91). Neither Petitioner nor Dr. Zhao, however, provide adequate explanation or evidence as to why Usui’s interconnect metallurgy structure forms an “electrode stack,” i.e., a conductor that provides a path for current entering or leaving a medium such as a semiconductor device. Dr. Zhao’s testimony merely repeats the disclosures in Usui and concludes, without further technical detail, explanation, or reference to objective evidence, that Usui’s Figure 8 discloses an electrode stack. Ex. 1002 ¶¶ 89–91. Dr. Zhao’s testimony sets forth Petitioner’s conclusory assertions as though they are facts, rather than setting forth facts and evidence in support of those assertions. Compare id. with Pet. 11–12. Absent underlying facts or evidence to support Dr. Zhao’s opinion, the cited testimony “adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 21

  Patent outcomesUS 8,686,562 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,686,562
• Innoscience America, Inc. v. Infineon Technologies Americas Corp.No claims unpatentable
  PTAB · Jun 12, 2026 · IPR2025-00094 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1–16 were not shown unpatentable under any asserted obviousness ground because Petitioner failed to establish the proposed modifications and combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that one of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design.” Pet. 5 (citing Ex. 1003 ¶¶ 67–69). Petitioner also argues that “[a]dditional education could substitute for professional experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 1–76. Neither party explains why the outcome of this case would be affected by the adoption of the proffered definition of a person of ordinary skill in the art. Accordingly, and because it appears to be consistent with the ’003 patent and the asserted prior art, we adopt Petitioner’s assessment of the level of ordinary skill in the 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)No construction neededOther

    “Neither party proposes construing any claim terms. Pet. 6; Prelim. Resp. 1–76. In addition, as discussed below, we are able to determine the outcome of this proceeding without expressly construing any terms. Thus, we do not construe any terms for the purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–419. On the other hand, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). However, a petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified the prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). In arguing for the obviousness of claim 1 over the combination of Bonn and Mizuta, Petitioner argues that a person of ordinary skill in the art would have modified Bonn to perform high-frequency signal amplification. Pet. 19–25. In particular, Petitioner argues that a person of ordinary skill in the art “would have found it obvious to modify the circuit of Figure 1 [of Bonn] and use Figure 7’s structure for high frequency signal amplification in place of mixer 40,” followed by additional modifications to the circuit of Figure 1. Id. at 22–25. These additional modifications include removing LO port 55, removing FET 20 (along with voltage source 80, capacitors 16, 26, and 34, resistor 18, and inductors 22 and 24), removing capacitor 34 and shorting gate structure 324 to ground, and removing resistors 46 and 48 and shorting terminal 51 to ground. Id. According to Petitioner, the motivation for these modifications was that “Bonn . . . teaches using its dual gate structures for signal amplification without signal mixing.” Id. at 22 (citing Ex. 1006, 11:26–37). On the record developed at trial, we disagree. Bonn does, as Petitioner argues, teach that “the dual gate FET structure of the present invention can be tailored to provide superior performance over the prior art dual gate FET structures in high frequency signal mixing as well as other applications such as high frequency signal amplification.” Ex. 1006, 11:33–37. But the tailoring that Bonn refers to relates to changes to the structure of the field-effect transistor itself, not to the circuitry surrounding that transistor. Id. (teaching that the reason that “the dual gate FET structure of the present invention can be tailored” is that “the parameters such as gate width, dopant concentration, and channel depth, under each gate of the dual gate FET are individually adjusted for optimum performance”). Thus, although Bonn might have motivated a person of ordinary skill in the art to have made changes to the dual-gate FET itself, we are not persuaded that it would have motivated the additional changes to the circuit of Bonn’s Figure 1.” slip op. at 11

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Mishra’s Figure 5 is a second gate in favor of a new position. Petitioner’s new argument is that a person of ordinary skill in the art would have found it obvious to connect the field plate of Mishra’s Figure 5 to the source instead of the gate, converting the field plate into a second gate. Compare Pet. 83 (equating “drain side gate” with “field plate 66, Figure 5”), 86–88 (identifying field plate 66 as a “second gate”), with Reply 21–22 (identifying only the embodiment of Mishra’s Figure 10 as a source-connected field plate), 22–23 (arguing that Mishra teaches that the Figure 5 embodiment “could be arranged as ‘a single transistor with a dual gate structure’”). Although “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings,” Genzyme Therapeutic Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016), the shifting of arguments is not, Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). Accordingly, Petitioner’s change of arguments here is inappropriate. Moreover, even if we were to consider Petitioner’s inappropriate new argument, we would conclude that Petitioner does not support the argument with sufficient evidence. “Whether [an obviousness ground] is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). Petitioner’s new argument relies on a person of ordinary skill in the art modifying the Figure 5 embodiment of Mishra to connect the field plate to the source rather than the gate. Reply 21–24. Petitioner does not, however, show that a person of ordinary skill in the art would have had a motivation to make this modification or a reasonable expectation that this combination would be successful. Id. Petitioner argues instead that “[n]o ‘reason’ is needed.” Id. at 24. Thus, Petitioner does not show by a preponderance of the evidence that claim 1 would have been obvious over the combination of Mishra and Ren.” slip op. at 19

  Patent outcomesUS 8,264,003 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,264,003
• Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.No claims unpatentable
  PTAB · Jun 9, 2026 · IPR2025-00321 · APJ Christopher M Kaiser · IPR · Final written decision

  The Board held claims 1, 2, 5–7, 9, 16, and 17 not unpatentable because the asserted combinations did not establish the required purge-tower teachings or prior-art status.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that one of ordinary skill in the art “would have had (1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶¶ 14–16). Petitioner also argues that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. Patent Owner proposes a slightly different level of skill, arguing that a person of ordinary skill in the art “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 24. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. We adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’324 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “According to the ’713 patent, “[p]urge tower 24 itself may be . . . recycled or otherwise discarded as desired.” Ex. 1001, 8:27–28. This description provides some support for Patent Owner’s view, because a purge tower too intimately integrated with the part would be difficult or impossible to recycle or discard. This is further supported by the ’713 patent’s statement that “purge tower 24 may be printed at any suitable location on build substrate 44 (i.e., at any location in the x-y build plane not occupied by 3D part 20 or support structure 22).” Id. at 8:30–34. It also is supported by Dr. Hickner’s testimony that the ’713 patent “clearly shows . . . the 24 purge tower separated from the part” and that “the purge tower is a separate physical object.” Ex. 2016, 28:8–10, 64:1–9. On the other hand, there is evidence supporting Petitioner’s view that, as long as the purge tower is generally separate from the part and the support structure, it may still make contact with those portions of the print. As noted above, “purge tower 24 may be printed at any suitable location on build substrate 44 (i.e., at any location in the x-y build plane not occupied by 3D part 20 or support structure 22).” Ex. 1001, 8:30–34. This language does not exclude locations adjacent to or in contact with the part or the support structure. Thus, determine that a “purge tower,” as that term is used in the context of the ’713 patent, may not be an integrated portion of a printed part or support structure but need not be free of all contact with the printed part or support structure.” slip op. at 9

  • BurdenNot shown unpatentable

    “There is evidence of record to support both Petitioner’s view and Patent Owner’s view. On the record developed at trial, however, we cannot say that the preponderance of the evidence favors Petitioner, who bears the burden of proof. See 35 U.S.C. § 316(e). Accordingly, Petitioner has not shown by a preponderance of the evidence that KISSlicer teaches printing a layer of a purge tower each time the printer switches one extruder to the operating mode. Because proving the obviousness of claims 1 and 16 requires such a showing, Petitioner has not shown by a preponderance of the evidence that claims 1 and 16 would have been obvious over the combination of Priedeman and KISSlicer. 5. Analysis of Remaining Claims Claims 2, 6, 7, 9, and 17 all depend, directly or indirectly, from claim 1 or claim 16. Accordingly, they all include the limitations of either claim 1 or claim 16. Because, as discussed above, Petitioner has not shown that the combination of Priedeman and KISSlicer teaches or suggests all the limitations of claims 1 and 16, Petitioner also has not proven by a preponderance of the evidence that claims 2, 6, 7, 9, and 17 would have been obvious over that combination of references.” slip op. at 21

  • Obviousness (§103) › Analogous artAnalogous artOther

    “On the record developed at trial, we agree with Petitioner. According to several industry forum posts, people interested in three-dimensional printing located the website where KISSlicer was posted between February 2012 and April 2012. Ex. 1028, 1 (post discussing and directing others to KISSlicer on April 11, 2012); Ex. 1031, 1 (two posts discussing KISSlicer on March 16, 2012, and March 21, 2012); Ex. 1032, 1 (two posts discussing KISSlicer on February 11, 2012, and February 14, 2012). Thus, not only was it possible for people of ordinary skill in the art to locate KISSlicer; people of ordinary skill in the art actually did locate it. Accordingly, Petitioner has shown by a preponderance of the evidence that KISSlicer was publicly accessible.” slip op. at 19

  Patent outcomesUS 9,421,713 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,421,713
• Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.All claims unpatentable
  PTAB · Jun 9, 2026 · IPR2025-00311 · APJ Christopher M Kaiser · IPR · Final written decision

  Claims 1, 3–11, and 17–22 are unpatentable as obvious over grounds using Mazumder and Mori; grounds relying on Henke fail because Henke is not analogous art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Electrical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printers including remote control of rapid fabrication systems.” Pet. 6 (citing Ex. 1003 ¶¶ 40–42). Petitioner also argues that “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Id. Patent Owner proposes a slightly different level of skill, arguing that a person of ordinary skill in the art “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Electrical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” PO Resp. 11–12. Neither party explains why the outcome of this case would be affected by the adoption of either of the proffered definitions of a person of ordinary skill in the art. We adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’324 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “There is also evidence that supports Petitioner’s proposed construction, under which a user interface may display both the image and the projection if it displays them at different times. This evidence includes statements in the specification that describe displaying an image “instead” of “a rendering of a three-dimensional model” and that describe displaying a “video image and/or model projection” rather than merely a video image and a model projection. Ex. 1001, 22:43–53, 24:52–55, Figs. 5, 7. It also includes arguments in the prosecution history distinguishing Taminger on the basis of failure of disclose any display of both an image and a projection at all, rather than on the basis of failure to disclose simultaneous display of both visualizations. Ex. 1002, 160, 161. Based on our review of all the probative evidence, we find that the preponderance of the evidence supports Petitioner’s view, so we construe the challenged claims as not requiring simultaneous display of the image and the projection.” slip op. at 15

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “With the problem solved by the ’324 patent defined as monitoring automated three-dimensional fabrication processes, we find that Mori is at least reasonably pertinent to the problem. Mori discloses “[a] machining status monitoring apparatus.” Ex. 1005, code (57), ¶ 43. That apparatus uses “actual CCD cameras . . . to image the workpiece.” Id. ¶ 49. It also has a “virtual image generating section” with “virtual CCD cameras” having “view points” that “match the view points of the actual CCD cameras.” Id. ¶¶ 59, 61, 62. This disclosure relates quite closely to monitoring an automated three-dimensional fabrication process and thus is at least reasonably pertinent to solving that problem. d) Conclusion For the reasons discussed above, Mori is both in the same field as the ’324 patent and at least reasonably pertinent to the problem solved by the ’324 patent. Accordingly, it is analogous art to the ’324 patent.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Regarding combining the teachings of Mazumder with those of Mori, the evidence of record shows that the print head of Mazumder’s three-dimensional printer could obscure portions of the actual camera’s view of the object being printed and that displaying Mori’s virtual image of the object in addition to Mazumder’s actual image of the object “would have allowed the user to of the remote computer to monitor the progress of the object even when the actual view of the object is partially or totally obscured.” Ex. 1003 ¶ 86. c) Conclusion Regarding Claim 1 For the reasons discussed above, the preponderance of the evidence shows that claim 1 would have been obvious over the combination of Mazumder and Mori.” slip op. at 26

  Patent outcomesUS 8,562,324 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,562,324
• Rocket Media, LLC D/B/A Launch Labs v. Fullthrottle Technologies, LLCAll claims unpatentable
  PTAB · Jun 9, 2026 · IPR2025-00148 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Doughty and Van Boucq, and over Doughty, Van Boucq, and Maginnis.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art in June 2021 would have had “(1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent field plus at least one year of experience working on computer networking, or (2) at least 3 years of experience working on computer networking, even without a formal degree.” Pet. 14 (citing Ex. 1007 ¶¶ 44–47). Patent Owner does not contest Petitioner’s proffered definition. PO Resp. 23. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’947 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no terms require express construction to resolve the parties’ disputes in this case, but address certain claim construction arguments made by the parties in the analysis below. See id.; Inst. Dec. 11 (determining that “no express claim construction is necessary for any claim terms”); PO Resp. 23 (agreeing that “no express constructions are necessary to resolve this IPR”). slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “We find that Petitioner has shown that the combination of Doughty and Van Boucq accounts for these limitations. We are not persuaded by Patent Owner’s arguments that claim 1 somehow excludes, what Patent Owner calls, the “Unique Identifier/Tracker Embodiment.” See PO Resp. 27, 31. Beginning with the language of the claims, the claims are silent as to where the “location data” recited in limitation 1[c] is stored. See Tr. 21:7– 16 (Patent Owner agreeing that “the stored location data does not actually have a required location at all” in the claim, and need not be stored in a database). Nor does Patent Owner direct us to any claim language that would specifically exclude “location data” stored on the user’s device. See Sur-reply 2–3. “The patentee is free to choose a broad term and expect to obtain the full scope of its plain and ordinary meaning unless the patentee clearly redefines the term (lexicography) or disavows claim scope (claim disavowal).” Aortic Innovations LLC v. Edwards Lifesciences Corp., 159 F.4th 1, 8 (Fed. Cir. 2025) (citing Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012)). Patent Owner directs us to statements in the Specification, stating “[f]or example, the computing device may access a database or other storage location that maintains a mapping of unique identifier to a browser session, a user computing device, and/or location data.” Ex. 1001, 9:52–55; see also id. at 39:26–30 (same), 43:55– 59 (same). But none of those passages amounts to lexicography or disavowal of claim scope. Indeed, when read in their full context, these passages support a broad reading, not a narrow reading, of the claims. The full passage of the Specification states: The computing device may determine, at 406, whether there is a unique identifier that is associated with the user (e.g., the user computing device, the browser, and/or the browser session) stored on the computing device. For example, the script may inform the computing device that there is no unique identifier for the user computing device. The computing device may determine that there is no unique identifier associated with the user computing device when there is no location data stored for the user computing device. For example, the computing device may access a database or other storage location that maintains a mapping of unique identifier to a browser session, a user computing device, and/or location data. Additionally or alternatively, the computing device may determine whether there is a unique identifier for associated with the user based on presence of a location tracker (e.g., cookie) installed in the browser application on the user computing device. Ex. 1001, 9:43–59. The passage above is full of language that indicates that the patentee did not intend to limit the claims to a single embodiment. Indeed, the specific portion of the passage cited by Patent Owner begins with “[f]or example” and further states “[a]dditionally or alternatively, the computing device may determine whether there is a unique identifier for associated with the user based on presence of a location tracker (e.g., cookie) installed in the browser application on the user computing device.” Id. at 9:52–59 (emphasis added). Moreover, the Specification states “[a]dditionally or alternatively, the computing device may determine the location data using the tracker installed in the browser application on the user computing device.” Id. at 10:2–5. The Specification also explains that the tracker may “maintain data related to the user and/or user computing device.” Id. at 12:62–63. Based on these disclosures, we find that the Specification supports a reading where the location data are stored in the user computing” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find persuasive Petitioner’s reasoning that a POSITA would have been motivated to modify Doughty, based on Doughty’s own teachings regarding cookies and similar files, and would have recognized that the techniques of Van Boucq would have offered an efficient and commonly used way to determine whether the user already has been assigned a unique identifier. See Ex. 1007 ¶ 153. Patent Owner’s arguments about the precise contents of Van Boucq’s connection cookie attack Van Boucq individually and ignore the combination and modifications that Petitioner proposes. In the combination, Petitioner proposes incorporating the unique identifier from Doughty into Van Boucq’s connection cookie. See Pet. 26 (citing Ex. 1008, 16:59–17:33; Ex. 1007 ¶ 153). As for Patent Owner’s contention that “[n]othing in the record suggests that Van Boucq’s connection cookie could contain any information about either Doughty’s table 105 Profile ID or Doughty’s hashed email address,” PO Resp. 33, as Dr. Gottesman testifies, “[a] cookie is a small piece of data (text file).” Ex. 2012 ¶ 55. We fail to see why a skilled artisan at the time of the invention would have any difficulty incorporating Doughty’s alphanumeric unique identifier into a text file. See Ex. 1007 ¶¶ 153, 166. Thus, we find that Petitioner has shown a motivation to combine Doughty and Van Boucq for these limitations.” slip op. at 30

  Patent outcomesUS 11,556,947 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,556,947
• Boe Technology Group Co., Ltd. v. Optronic Sciences LLCAll claims unpatentable
  PTAB · Feb 17, 2026 · IPR2024-01132 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–7 are unpatentable: claims 1–3 and 5 are anticipated by Anzai, claim 4 is obvious over Anzai and Yamazaki, and claims 1–7 are obvious over Yamazaki and Anzai.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) at the time of the invention as having “a Bachelors’ degree in electrical engineering or a comparable field of study, plus approximately two to three years of professional experience with electronic and optoelectronic device design” and notes that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 5–6 (citing Ex. 1002, Neikirk Decl., ¶ 23). Patent Owner’s expert, Dr. Bretschneider testifies that In my opinion, the field of “electronic and optoelectronic device design” is too broad. A POSITA of the ’121, had at least a Bachelors’ degree in a field of engineering or physics and at least two to three years of professional experience related to the design and manufacture of the relevant aspects of flat panel displays. Additional relevant graduate education related [sic] could reduce but not eliminate the time requirement for professional experience. While Dr. Neikirk proposes a different definition of a POSITA, the differences do not have material effect on my opinions rendered below. Regardless of which definition of a POSITA were used, my conclusions would remain the same Ex. 2005, Bretschneider Decl., ¶ 39. We agree with and will apply Petitioner’s statement of the level of ordinary skill in the art. This level of ordinary skill is reflective of the education and experience that would have been required to understand the problems and solutions identified in the ’121 patent and the prior art. Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001). We note that our conclusions would be the same even if we applied Patent Owner’s slightly narrower definition of a POSITA.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We find these definitions to be of some help in construing this term. We find that the common thread is that a “passivation layer” is an insulating layer that provides protection from the environment to the layers below it. See Ex. 1012, 140; Ex. 1013, 542, Ex. 1014, 798; Ex. 2010, 3; Ex. 2013, 1. We find this construction to be most consistent with the broad claim language and the disclosure in the Specification. Although “tying up dangling bonds,” may be a mechanism by which some materials provide such protection, nothing in the Specification or the extrinsic evidence provided appears to require that. Also, while chemical protection may be one kind of protection none of the evidence suggests that is the only protection that is provided. Moreover, nothing in the Specification supports reading a chemical protection requirement into the construction. Thus, we decline to adopt that portion of Patent Owner’s construction. Instead, we construe passivation layer as “an insulating layer that provides protection from the environment to the layers below it.” We need not construe the term any further to resolve the parties’ dispute over this claim language. See Realtime, 912 F.3d at 1375.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “constructions for “passivation layer” and “capping layer.” We find that Petitioner has presented sufficient evidence to show that Anzai discloses both a “passivation layer” and a “capping layer.” As we explained above, we have construed “passivation layer” to mean “an insulating layer that provides protection from the environment to the layers below it.” Petitioner has shown that “first planarization film 17” is an insulating layer. See Ex. 1002 ¶¶ 62–65. We further find that Petitioner has shown sufficiently that “first planarization film 17” is “formed over the entire surface for flattening, which will protect the semiconductor surface from the surrounding environment.” Id. ¶ 63. We have rejected Patent Owner’s contentions that the film must tie up “dangling bonds,” and instead determined that protecting the surface from the environment is sufficient. Thus, we find that Petitioner has shown by a preponderance of the evidence that Anzai discloses the “passivation layer” of claim 3. As we explained above, we have construed “capping layer” to be “an insulation layer covering (i.e., capping) an underlying layer or structure.” Here, Petitioner has shown that Anzai’s planarization film 19 meets the claimed “capping layer.” See Pet. 20. We find that Petitioner has shown that it is more likely than not that “planarization film 19” is made of insulating material. As Dr. Neikirk persuasively testifies, Anzai discloses that planarization layer 17 may be made of an organic resin for flattening the surface. EX1003, 4:20-24. While Anzai does not disclose the material for planarization layer 19, it must be made of an insulation material because in the embodiment of Fig. 3A, it is the sole layer between electrode layer 71 and cathode layer 65 forming the second capacitor. Id., 6:3–8; Fig. 3A. Moreover, Anzai discloses that the first planarization film 17 and the second planarization film 19 for the first embodiment “function as the capacitance insulating film for this configuration.” Id., 5:62–67. Ex. 1002, Neikirk Decl., ¶ 62. We find this testimony well-reasoned and entitled to substantial weight. We further agree with Dr. Neikirk that a “POSITA would further understand that the second planarization film 19 is then further disposed on the first planarization film 17 (capping the passivation layer).” Id. ¶ 63 (citing Ex. 1003, 5:3–13; Figs. 2A–B, 3A–B). Thus, we find that Petitioner has shown by a preponderance of the evidence that Anzai discloses the claimed “capping layer.” Accordingly, we find that Petitioner has shown by a preponderance of” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “motivation to combine Anzai and Yamazaki. See Pet. 25–27; Ex. 1002, Neikirk Decl., ¶¶ 78–79. First, Patent Owner argues that essentially silicon nitride is an inferior material to use for Anzai’s planarization layer 17 compared with organic resin. PO Resp. 13–15. However, “[i]t’s not necessary to show that a combination is the best option, only that it be a suitable option.” Intel Corp. v. Qualcomm Inc., 21 F.4th 797, 800 (Fed. Cir. 2021) (emphasis in original). Patent Owner does not argue that silicon nitride would not work, but rather that it would be more difficult and more expensive to use. See PO Resp. 14. But “the fact that the two disclosed apparatus[es] would not be combined by businessmen for economic reasons is not the same as saying that it could not be done because skilled persons in the art felt that there was some technological incompatibility that prevented their combination. Only the latter is telling on the issue of nonobviousness.” Grit Energy Solutions LLC v. Oren Techs., LLC, 957 F.3d 1309, 1323 (Fed. Cir. 2020) (quoting Orthopedic Equip. Co., Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983)). “Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Here, Petitioner explains that “a POSITA would have known that organic materials usually have lower dielectric constants than inorganic materials, such as SiN, and a higher dielectric constant is desirable for the insulator in a capacitor since that leads to higher capacitance per unit area.” Pet. 26 (citing Ex. 1002, Neikirk Decl., ¶ 78). Petitioner further explains that this “then allows a reduced area storage capacitance element, one of the objectives of Anzai.” Id. (citing Ex. 1003, code (57)). Patent Owner’s focus mainly on planarization (PO Sur-reply 16–17) ignores that the Anzai’s planarization layers 17 and 19 also “function as the capacitance insulating film.” Ex. 1003, 5:65–67. Thus, although there are tradeoffs, Petitioner has shown sufficiently that a POSITA would have been motivated to incorporate the teachings of Yamazaki regarding potential materials for planarization layers 17 and 19. Second, Patent Owner argues that a Petitioner has failed to provide an adequate reason to select silicon nitride from Yamazaki’s list of potential materials. We disagree. Petitioner has explained the benefits of selecting a high dielectric inorganic material. Pet. 26. Yamazaki provides only three potential options—silicon oxide, silicon nitride, and silicon oxynitride. See Ex. 1004, 11:45–50. Moreover, Dr. Neikirk testified, supported by multiple references, that using silicon nitride was well known in the prior art at the time of the invention. See Ex. 1002, Neikirk Decl., ¶ 75 (citing Ex. 1007; Ex. 1008; Ex. 1009). “When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421. Indeed, “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. This is the case here. Petitioner has shown that a person of ordinary skill seeking to improve the capacitance of Anzai’s planarization layers 17 and 19, without increasing the size of the capacitor, would have looked at the inorganic materials identified in Yamazaki as suitable for the purpose, and it would have been would obvious to choose silicon nitride, a well-known, and predictable material for the application. Thus, we disagree with Patent Owner that Petitioner has failed to show a sufficient reason for selecting silicon nitride from Yamazaki’s list of suitable materials. Third, Patent Owner argues that Petitioner’s contentions only support” slip op. at 37

  Patent outcomesUS 7,586,121 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,586,121
• Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentable
  PTAB · Jan 28, 2026 · IPR2024-01174 · APJ Susan L C Mitchell · IPR · Final written decision

  Claims 1–8 and 10–23 are unpatentable: the Board found claims 1–15 anticipated or obvious over the asserted grounds and claims 16–23 obvious over the Native combination.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedOther

    “argument that the prior art fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Reply 6–7 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that Lesniak teaches how to make stable compositions by including a secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Id. Ex. 1086 ¶ 7; see also Reply 6 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32).” slip op. at 22

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 17 (citing Ex. 1002 ¶¶ 27–29). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications at this stage of the proceeding. PO Resp. 10. For this Decision, we adopt and apply Petitioner’s proposal above, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Patent Owner asserts that the preamble of independent claim 1, 16, and 20 reciting “a deodorant stick” is limiting” as it provides antecedent basis for the recitation of “said deodorant stick being free of an aluminum salt” for each independent claim. PO Resp. 7–10. Patent Owner also points to dependent claims 6–9 as relying on the preamble reciting “a deodorant stick” as antecedent basis for claim elements. Id. at 9. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 19 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick). We determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We find that the evidence of record fails to support Patent Owner’s argument that the prior art fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Reply 6–7 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that Lesniak teaches how to make stable compositions by including a secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Id. Ex. 1086 ¶ 7; see also Reply 6 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32). Having considered the parties’ positions and evidence of record, summarized above, we determine that Lesniak provides sufficient disclosure to enable a person of ordinary skill in the art to formulate deodorant stick within the parameters of claim 1. Therefore, for the reasons discussed above, we conclude that Petitioner has proved by a preponderance of evidence that Lesniak anticipates claim 1.” slip op. at 22

  Patent outcomesUS 11,497,706 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 11,497,706

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.