- Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.No claims unpatentablePTAB · Jun 10, 2025 · IPR2024-00231 · APJ Avelyn M Ross · IPR · Final written decision
Claims 14–16, 18, 27–29, 31, and 32 were not proven unpatentable because the asserted references failed to establish the claimed airflow path or a reason to make the proposed combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposed levels of skill are similar and differ in that Petitioner’s relevant degrees and corresponding two years of experience additionally includes “industrial design” and “product design” and familiarity with “electrically powered vaporizing articles, their components or the underlying technologies” where Patent Owner requires two years of experience “designing electro-mechanical consumer products or an advanced degree.” Compare Pet. 7, with PO Resp. 2. Patent Owner alleges that “Petitioner has failed to establish unpatentability under either standard,” indicating that the level of skill in the art is not a dispositive issue. PO Resp. 3. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’123 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’123 patent and the prior art. We note that the outcome of this Decision would be the same under Patent Owner’s proposed definition.” slip op. at 11
- Expert testimonyPetitioner expert creditedOther
“In this case, Mr. McAlexander meets both Petitioner’s and Patent Owner’s proposed level of skill in the art. As a result, we are persuaded Mr. McAlexander has the requisite skill and relevant expertise to offer testimony in this matter. For example, Mr. McAlexander has a Bachelor’s Degree in Electrical Engineering and far more than 2 years of experience in the electrical engineering field. Ex. 1027, 3–6, 7. In addition, Mr. McAlexander has provided expert consulting services in a wide range of technology areas involving the process and design of electro-mechanical consumer products. Ex. 1003 ¶ 5. Through one of Mr. McAlexander’s business ventures, his laboratory has “performed detailed airflow analyses, designing and constructing specialized apparatuses to emulate human breath, allowing for precise activation testing of ENDS devices.” Ex. 1043 ¶ 16. That said, a declarant’s expertise, even clothed as a skilled artisan, does not entitle a naked opinion persuasive weight. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985). Here, Patent Owner had the opportunity to, and in fact did, thoroughly cross examine Mr. McAlexander about the purported deficiencies in his testimony. See, e.g., Exs. 2052, 2054; Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 595 (1993) (“Vigorous cross examination [and] presentation of contrary evidence . . . are the traditional and appropriate means of attacking shaky but admissible evidence.”). Therefore, to the extent Patent Owner credibly identifies deficiencies in Mr. McAlexander’s testimony or that testimony lacks factual support or is based on broad, conclusory assertions, we will assign appropriate weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (explaining that it is within the Board’s discretion, as the trier of fact, to accord appropriate weight to the evidence presented).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the parties proposed a construction for “pressure valve,” a limitation appearing in claims 18 and 31, during the ITC investigation. Pet. 7 (citing Ex. 1001, 41:58–65). Patent Owner contends that the terms of the ’123 patent should be given their plain and ordinary meaning. PO Resp. 4. Because resolution of the issues presented in this case do not require construction of the term “pressure valve,” we do not expressly construe this claim term. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. To anticipate a claim, a reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369. “The requirement that the prior art elements themselves be arranged as in the claim means that the claims cannot be treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Indeed, the prior art reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Net MoneyIN, 545 F.3d at 1371 (citation omitted). “[D]ifferences between the prior art reference and the claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id.” slip op. at 20
Patent outcomesUS 10,130,123 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,130,123 - PTAB · Jun 4, 2025 · IPR2025-00117 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood of success on the asserted obviousness grounds and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’711 patent. We also determine that the arguments and evidence of record do not support discretionary denial of the Petition under 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of claims 1–19 of the ’711 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the critical time “would have had a bachelor of science degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND flash memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 27 (citing Ex. 1003 ¶ 42). Petitioner further asserts that a POSITA “would have been aware of” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any express claim construction at this stage of the proceeding. Pet. 26; Prelim. Resp. 8. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Petitioner’s assertions as to claim 1. Patent Owner contests Petitioner’s assertion that Kim in view of the knowledge of the prior art teaches “wherein each step comprises a gate stack disposed over a dielectric layer,” Prelim. Resp. 9. We first focus on this disputed limitation.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,672,711 - Juul Labs, Inc. v. Njoy, LLCNo claims unpatentablePTAB · May 21, 2025 · IPR2024-00160 · APJ Kimberly Mcgraw · IPR · Final written decision
The Board held claims 1–48 not shown unpatentable on any of six § 103 grounds because the asserted references did not teach the required housing aperture and the proposed combinations lacked adequate support.
RulingsFinal written decision- Skill levelDecided for patent owner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of invention. Graham, 383 U.S. at 17. Petitioner does not provide its own definition of the level of ordinary skill in the art. Instead, Petitioner asserts: In previous litigation involving the ’881 patent – the parent patent to the ’864 patent (Fuma International LLC v. R.J. Reynolds Vapor Company, Case No. 1:19-cv-260 (M.D.N.C. 2019)) with an identical specification – Patent Owner’s predecessor-in-interest asserted that a person of ordinary skill in the art (“POSITA”) at the time of the purported invention would have had a mechanical or electrical engineering degree, industrial design degree, or a similar technical degree, or equivalent work experience, and 5 to 10 years of experience in electromechanical devices. Ex. 1007, ¶¶14-17. Pet. 11–12; see also Ex. 1007 ¶ 16 (Mr. Sturges testifying that he meets “that qualification” without affirmatively providing a definition for a POSITA). Before institution, Patent Owner stated it did not challenge this definition (Prelim. Resp. 9), and we adopted Petitioner’s proposed definition in our Decision granting institution. During trial, Patent Owner also adopted this definition. PO Resp. 10–11. Upon a complete record, we see no reason to change and we maintain the agreed upon definition of a POSITA.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues, and Petitioner does not dispute, that an aperture is a “hole” or an “opening.” See, e.g., id. at 21; see generally Reply. Patent Owner asserts that, in the proper context, the plain and ordinary meaning of a housing having an aperture is that the aperture is a hole, or an opening, on the housing structure itself. Id. at 21–22. We agree. In order for an object to have an “aperture” or an “opening,” the aperture or opening must be on the structure itself and not on a separate object that is located in the structure. This construction is in accord with the Specification of the ’864 patent, which refers to apertures in context of the structure on which they are located. See, e.g., Ex. 1001, 6:12–18 (referring to a first end comprising a first aperture), 7:11–12, 7:65–67 (stating that the wall of an airflow passageway may have apertures).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“large obstructions that force the air flow to near the peripheral surface of the housing, render the passageway non-central. During prosecution of the ’864 patent, the Examiner rejected certain claims (i.e., dependent claims 49, 63, and 75) over Han. To overcome this rejection, the applicant argued that Han cannot meet the limitation “wherein the airflow passageway extends centrally and axially from the first aperture to the second aperture.” Ex. 1002, 273. The applicant explained that Han does not meet this limitation because Han’s shell (b) does not include a central airflow passageway and instead places the perforated component for liquid storage (9) in the middle of shell (b), thereby forcing the airflow around the peripheral surface of the perforated component for liquid storage (9). Id. at 273–274. The examiner relied on this argument in determining that the applicant had overcome an earlier rejection. Id. at 195. Thus, some obstructions of a passageway render the passageway non-central; in particular those obstructions that force air to flow near the peripheral surface of the housing are large enough to render the passageway non-central.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“lacks motivation and is plagued by improper hindsight.” Sur-reply 15–17. On the record developed during trial, we agree with Patent Owner that Petitioner has not shown by a preponderance of the evidence that a person of ordinary skill in the art would have had a reason to combine the teachings of Xia with those of Wang to arrive at the claimed limitations. Relying on the testimony of Patent Owner’s declarant Dr. Singhose, Petitioner argues that a person of ordinary skill in the art “would have known a central straight path has less airflow resistance than a circuitous one.” Reply 22 (citing Ex. 1035, 127:15–128:9). But the same witness also testified that higher airflow resistance might be desirable and explained that providing more resistance to airflow might result in improved mixing. Ex. 1035, 21:21–22:12, 127:20–24, 170:10–14. In addition, Dr. Singhose testifies that the complicated design of the airflow passageway in Xia “serves important functions,” including “allow[ing] large droplets to be reabsorbed by the liquid-guiding mechanism,” allowing “excessive liquid in the airflow [to] condense,” and “prevent[ing] the chemical liquid from being sucked into the mouth.” Ex. 2022 ¶ 190 (citing Ex. 1004, 11, 13–14, 16). Although Petitioner’s declarant Dr. Sturges testifies that a straight airflow passageway “would provide improved, smoother air flow,” he does not provide any evidence supporting the view that the air flow would be improved. Ex. 1007 ¶ 144. We credit the testimony of Dr. Singhose that using a straight passageway in Xia would have been detrimental rather than beneficial. Ex. 2022 ¶ 190. slip op. at 40
Patent outcomesUS 11,497,864 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,497,864 - Juul Labs, Inc. v. Njoy, LLCNo claims unpatentablePTAB · May 21, 2025 · IPR2024-00161 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 1–27 were not shown unpatentable because the asserted obviousness grounds failed to establish the claimed central airflow passageway or a reason to combine the references.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Relying on the testimony of Patent Owner’s declarant Dr. Singhose, Petitioner argues that a person of ordinary skill in the art “would have known a central straight path has less airflow resistance than a circuitous one.” Reply 22–23 (citing Ex. 1035, 127:15–128:9). But the same witness also testified that higher airflow resistance might be desirable and explained that providing more resistance to airflow might result in improved mixing. Ex. 1035, 21:21–22:12, 127:20–24, 170:10–14. In addition, Dr. Singhose testifies that the complicated design of the airflow passageway in Xia “serves important functions,” including “allow[ing] large droplets to be reabsorbed by the liquid-guiding mechanism,” allowing “excessive liquid in the airflow [to] condense,” and “prevent[ing] the chemical liquid from being sucked into the mouth.” Ex. 2022 ¶ 183 (citing Ex. 1004, 11, 13–14, 16). Although Petitioner’s declarant Dr. Sturges testifies that a straight airflow passageway “would provide improved, smoother air flow,” he does not provide any evidence supporting the view that the air flow would be improved. Ex. 1007 ¶ 118. We credit the testimony of Dr. Singhose that using a straight passageway in Xia would have been detrimental rather than beneficial. Ex. 2022 ¶ 183. Petitioner also argues that the inventors’ use of a straight path is evidence that the use of a straight passageway was “merely common-sense obviousness.” Reply 22–23. This is hindsight. Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (“The inventor’s own path itself never leads to a conclusion of obviousness; that is hindsight.”). Moreover, it does not address the testimony of Dr. Singhose that the use of a complicated passageway like that in Xia had benefits not present in a straight central passageway.” slip op. at 29
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had a mechanical or electrical engineering degree, industrial design degree, or a similar technical degree, or equivalent work experience, and 5 to 10 years of experience in electromechanical devices.” Pet. 10 (citing Ex. 1007 ¶ 16). Prior to institution, Patent Owner stated that, for “the limited purpose of this Preliminary Response,” it “does not challenge the definition of a POSITA set forth in the Petition.” Prelim. Resp. 9. We adopted Petitioner’s proposed definition in our Decision granting institution. During trial, neither party disputed this definition. Upon a complete record, we see no reason to change the adopted definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues, however, that this presumption is overcome in the present case, and we agree. PO Resp. 28–32. We note that, although the claims require the first aperture to be “on the first end,” the claims still require that the “housing hav[e] a first aperture.” Thus, the issue is whether the aperture must be on the housing itself or part of the housing, as well as whether the aperture is on the first end of the housing. Although “having” and “includes” are used with respect to the solution holding medium to refer to elements located inside the housing, the specification of the ’881 patent suggests that the ends of the housing are part of the housing itself, rather than located inside the housing. First, “the first end . . . can be integrated into a single assembly as part of the housing.” Ex. 1001, 6:16–17. Second, “the housing . . . may comprise the cylindrical wall and two end-caps,” or “the housing . . . may comprise the cartridge wall and a single end-cap.” Id. at 3:55–59. The only figures of the ’881 patent that depict first end 206 show it at the end of the housing rather than located within the interior of housing 202. Id. at Figs. 2, 3. Moreover, there is no requirement to construe a claim term uniformly across multiple uses in the claims when doing so would be nonsensical. Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). Here, construing a first element that is recited as “having” or “includ[ing]” a second element always as encompassing not only second elements that are part of the first element, but also second elements that are located within the interior of the first element, would lead to nonsensical results. Claim 2 recites an airflow passageway “having a length having a circular cross section.” Ex. 1001, 17:59–60. It would be nonsensical to interpret this claim as encompassing an airflow passageway of non-circular cross section that contains another object that has a circular cross section, and neither party argues in favor of such a reading. Similarly, claim 16 recites an “airflow passageway having an interior having a uniform cross-sectional area,” and there is no reason to interpret this claim as encompassing an airflow passageway of non-uniform cross-sectional area that contains another object that itself has uniform cross-sectional area. Id. at 19:47–48. Thus, the claims do not use “having” or “includes” consistently to refer to elements located within the interior of an object; instead, they sometimes use these terms to refer to elements that are a part of an object. See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1030–31 (Fed. Cir. 2002) (terms should be construed based on the context of how the terms are used in the claims).” slip op. at 13
- Prior constructionPrior construction not adoptedDecided for patent owner
“When we instituted trial, we preliminarily construed this phrase to encompass apertures that are located within the first end of the housing, determining on the record available at that time that “[t]he term does not require that the first aperture be located in the housing itself.” Inst. Dec. 16. We invited the parties to “address [the] construction of this term during trial,” id., and, on the full record developed during trial, we reach a different conclusion.” slip op. at 10
Patent outcomesUS 10,334,881 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,334,881 - PTAB · May 16, 2025 · IPR2025-00034 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 2–4, 7–15, 17, 18, and 20 under §103 over Nakajima; it found a reasonable likelihood of success for claims 3, 4, 9, 10, 18, and 20.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“exists that one may be granted if a proceeding is instituted. Fintiv, Paper 11 at 6–7. Petitioner asserts that factor 1 is neutral. Pet. 10. Patent Owner contends that factor 1 favors denial because, although an opposed motion to stay has been filed in the parallel litigation, it is unlikely to be granted. Prelim. Resp. 31. However, subsequent to filing its Preliminary Response, Patent Owner notified the Board that the parallel court proceeding has been stayed pending the outcome of the inter partes review. Paper 13, 1. The granting of a stay pending inter partes review “has weighed strongly against exercising discretion to deny institution.” Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 at 9 (P.T.A.B. October 16, 2019) (precedential). The stay of the parallel proceeding results in factor 1 weighing strongly against exercising discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine that Petitioner has not shown a reasonable likelihood of success of proving its obviousness assertions for claim 2 because of insufficiently explained and inadequately supported reasons to combine the knowledge in the art with Nakajima to teach or suggest claim 2’s “dummy channel” limitation. The deficiencies in Petitioner’s showing extend to claim 11, which recites a “dummy channel” limitation, and its dependent claims 12–15 and 17. Ex. 1001, 21:35–22:19, 22:22–26. Consequently, Petitioner has not shown it is likely to succeed on its obviousness challenges to claims 2, 11–15, and 17.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had a bachelor of science degree in electrical engineering or a similar discipline, along with 2–3 years of professional experience working with (e.g., researching, designing, or teaching) monolithic 3D structures and NAND flash memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 25 (citing Ex. 1003 ¶¶ 34–38). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, how it is manufactured, and its component parts.” Id. Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’254 patent and the prior art of record.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Claim Construction Neither party proposes any express claim construction. Pet. 35 (stating claims should receive their “plain and ordinary meaning”); Prelim. Resp. 8 (stating that Petitioner’s challenges fail “under any reasonable construction”). In an inter partes review, we construe a patent claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). We determine no terms require express construction for purposes of this Decision.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,879,254 - Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.Institution deniedPTAB · May 8, 2025 · IPR2025-00035 · APJ Michael T Cygan · IPR · Institution
The Board denied institution because Micron did not show a reasonable likelihood that claims 1–5, 8–13, or 15 were obvious over either asserted reference combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–5, 8–13, and 15 of the ’604 patent. Accordingly, we do not institute an inter partes review of the ’604 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree that Petitioner has not shown that a person having ordinary skill in the art at the critical time would have been motivated to replace the wordlines in the staircase region with dielectric material if the result is that one of the memory cell arrays becomes unavailable. Petitioner relies upon two usable arrays for its combination, emphasizing Thimmegowda as desirably enabling “a single conductive contact (e.g., 334a) to bidirectionally drive memory cells in the memory arrays on either side of the bridge”; i.e., both the left and right memory cell blocks. Pet. 26 (citing Ex. 1003 ¶¶ 81– 83; Ex. 1005, 9:49–51; 7:61–64), 41 (stating that in the combination, “there Similarly, Thimmegowda emphasizes that the purpose of its bridge is to connect first and second blocks, which desirably replaces prior connection methods that consumed silicon real estate and interfered with the goal of shrinking the sizes or increasing the densities of memory arrays. Ex. 1005, 1:11–25, 3:20–28; Ex. 1003 ¶¶ 79–80 (“allowing a single staircase to access both memory arrays”), 83 (“a stairstep electrically couples to a respective gate layer (wordline) in both of the blocks on the right and left”). Dr. Banerjee also underscores the importance of using both arrays, stating that the combination relies on “Thimmegowda’s bridge and array architecture (to drive two memory arrays with one wordline via)” as part of the reasonable expectation of success in such a combination Ex. 1003 ¶¶ 102, 113. Petitioner and Dr. Banerjee rely upon the motivation of reducing punch-through, because punch-through causes “yield loss”; i.e., loss of the usability of the wordlines connected by the punch-through. Ex. 1003 ¶ 103; Pet. 35. However, such advantage is premised on retaining both arrays, and neither Petitioner nor Dr. Banerjee explains how the advantages of reducing punch-through should be weighed against a disadvantage of losing access to one of the two arrays. Nor do Petitioner and Dr. Banerjee discuss how the advantages of metal gate replacement should be weighed against losing access to one of the two arrays.4 Patent Owner’s declarant, Dr. Giapis, attests to the undesirability of such a combination, in which one array 4 Additionally, the claims of the ’604 patent do not require a metal conductor portion; Petitioner does not explain why gate replacement to a metal conductor from a polysilicon conductor, described as used in Lee’s “memory device at large,” (Pet. 40) is a benefit associated with Lee’s finger teaching relevant to the claims. Ex. 2007 ¶¶ 50–54. We agree with Patent Owner that the advantage of preventing individual wordlines from becoming unusable because of punchthrough would be outweighed by the loss of half of the wordlines if one of the memory arrays were to become unavailable because its connections were removed.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III. DISCRETION UNDER 35 U.S.C. § 314(a) Patent Owner argues that the Board should exercise its discretion to deny institution under 35 U.S.C. § 314(a) based on the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (Mar. 20, 2020) additional briefing. Papers 12, 14. Because we determine that Petitioner has not shown a reasonable likelihood of success on the merits of its obviousness contentions, we need not resolve whether Fintiv would require discretionary denial of the Petition.6” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“at the critical time “would have had a bachelor of science degree in electrical engineering or a similar discipline, along with 2-3 years of professional experience working with (e.g., researching, designing, or teaching) 2 We apply AIA 35 U.S.C. § 103 to the ’604 patent because it was filed after, and never claimed the benefit of an effective filing date before, March 16, 2013. Ex. 1001, codes (22), (63); Pet. 6. 3 Neither party presents evidence or arguments regarding objective evidence of non-obviousness. Pet. 89; Prelim. Resp. level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 34 (citing Ex. 1003 ¶¶ 40–43). Petitioner further asserts that a POSITA “would have been aware of and generally knowledgeable about 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 10. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’604 patent and the prior art of record.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,450,604 - Cargill, Incorporated v. Bunge Loders Croklaan USA, LLCRehearing deniedPTAB · Apr 29, 2025 · IPR2024-01360 · APJ Debra L Dennett · IPR · Rehearing
The Board denied Cargill’s rehearing request, leaving institution denied for claims 1, 6–9, and 11–24 because the petition did not show a reason to combine the selected prior-art data without hindsight.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Upon request for rehearing, we assess a decision on institution “for an abuse of discretion” (37 C.F.R. § 42.71(c) (2020)), which occurs when a “decision was based on an erroneous conclusion of law,” “clearly erroneous factual findings,” or “a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The burden of showing a decision should be modified lies with the party challenging the decision. 37 C.F.R. § 42.71(c) (2020). The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Id. Thus, a request for rehearing is not an opportunity merely to disagree with the Board’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. We have reviewed Petitioner’s Rehearing Request and carefully considered all the arguments presented. For the following reasons, we are not persuaded that we misapprehended or overlooked any arguments or evidence.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As discussed in the Decision, “obviousness 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.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“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.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (citing InTouch Technologies, Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). No matter the result of combining the allegedly “readily available and well-known” information taken from particular examples from the “documentary evidence” with Petrauskaite’s disclosure, a POSITA had to have been motivated to do so at the time the invention was made.1 What is missing from the Petition is the “why.” The only motivating force in this case appears to be hindsight spurring Petitioner on to choose particular examples of palm stearin disclosed in Deffense and the soybean oil in Neff in order to justify its assertion that Petrauskaite discloses the claimed wt% ranges of triglyceride classes.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“Petitioner’s. We find no instance in the Petition in which “motivation” and “iodine value” are discussed together or linked in any way. The same can be said of Dr. Marangoni’s declaration. And, as noted in the Decision, it was not until the Preliminary Reply that Petitioner argued that specific data on fatty acid wt% used for the conversion calculations were selected to represent “knowledge generally available to one of ordinary skill in the art” due to similarity of the iodine value (“IV”) of the palm stearin (and soybean oil) disclosed in Petrauskaite. See Prelim. Reply 2–3. New evidence or argument in the Preliminary Reply that could have presented earlier is not permitted. On this record, we find Petitioner relies its Rehearing Request on arguments about a motivation to combine, stemming from the significance of iodine values, that were not raised in the Petition. Accordingly, Petitioner fails to support that the Decision misapprehended or overlooked arguments in the Petition about the significance of iodine values.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,645,473 - Arashi Vision (U.S.) LLC D/B/A Insta360 v. Gopro, Inc.Institution deniedPTAB · Apr 28, 2025 · IPR2025-00017 · APJ Nabeel U Khan · IPR · Institution
The Board denied institution under Fintiv because the parallel ITC investigation was advanced and overlapped sufficiently with the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board, however, has discretion to deny institution even when a petition meets that threshold. Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273 (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Having considered the arguments and record before us, we determine it is appropriate to exercise our discretion and decline to institute an inter partes review in this case.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“trial allays concerns about inefficiency and duplication of efforts.” Fintiv, 6. However, when there is a parallel district court litigation and an ITC investigation, “district court litigation is often stayed under 28 U.S.C. § 1659 pending resolution of the ITC investigation.” Id. at 7. The fact that the parallel district court litigation is stayed is, therefore, not the focus of this Fintiv factor under these circumstances. Instead, Fintiv counsels that “the parties should indicate whether the patentability disputes before the ITC will resolve all or substantially all of the patentability disputes between the parties, regardless of the stay.” Id. at 9. Here, the parallel ITC investigation is not stayed and, as we explain below in our analysis of Factor 4, there is some overlap between the patentability disputes presented here and those presented at the ITC. Petitioner argues that the district court is “not bound to any ITC decision” (Pet. Reply 2), but as Fintiv reminds us, “even though the Office and the district court would not be bound by the ITC’s decision, an earlier ITC trial date may favor exercising authority to deny institution under NHK if the ITC is going to decide the same or substantially similar issues to those presented in the petition.” Fintiv, 8.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“While Petitioner addresses all limitations of the challenged claims in its Petition, Patent Owner presents arguments under all three grounds raising issues with Petitioner’s challenges. For example, regarding the first ground, Patent Owner argues Okubo’s image cutout “does not represent a portion of a larger input image, but rather is the size of the image that is ‘picked up’ and recorded in the first instance.” Prelim. Resp. 12. Thus, according to Patent Owner, Okubo does not disclose “selecting sub-frames” as recited by limitation 1[D] of claim 1. Id. Regarding the second ground, Patent Owner argues that Okubo’s two-stage lens distortion correction process is limited to still images while Sokeila’s teachings relate to video images. Id. at 18–19. Regarding the third ground, Patent Owner argues that “Eder does not disclose selecting sub-frames representing portions of the input images, where the input images include fields of view captured through a lens of the camera.” Id. at 21. Even if we were to determine that Petitioner has demonstrated a reasonable likelihood of prevailing, the arguments presented 5 Sokeila is relied upon as a secondary reference to challenge claim 12 of U.S. Patent No. 10,958,840 B2 in IPR2024-01164 and IPR2024-01165. if trial were to be instituted. Accordingly, at this stage of the proceeding, based on the arguments and evidence set forth, we disagree that the merits of the Petition are compelling or particularly strong.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,529,052 - PTAB · Apr 25, 2025 · IPR2024-00793 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing requests, finding no misapprehension or overlooked matter in its denial of institution based on the failure to show the challenged claims obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Petitioner’s own formulations of the grounds based on either Seo or Nam in combination with Choi posit the alternative theories that either Seo or Nam alone disclose Limitation [1.D], or the combination of either Seo or Nam with Choi teaches this limitation. Although Petitioner did not invoke inherency by name for the theories based on Seo or Nam alone, this is, in effect, the nature of Petitioner’s assertions, namely, voltage differentials in Seo and Nam would inherently remove fast charges. For example, with respect to Seo, Petitioner argues that “Seo teaches having a higher voltage on unselected WLs (e.g., adjacent WLs to the selected WL) during the first time period,” and “the ’342 patent recognizes [that] this voltage differential removes fast charges.” Pet. 35–36 (citing Ex. 1001, 12:24–34; Ex. 1003 ¶¶ 129–131) (emphasis omitted); see also id. at 82–83 (relying on the ’342 patent to support the contention that Nam teaches Limitation [1.D] because Nam “teaches having a higher voltage on unselected WLs (including WLs adjacent to the selected WL) relative to the selected WL during the first time period” (citing Ex. 1001, 12:24–34) (emphasis omitted)). Petitioner does not argue that Seo and Nam expressly disclose removing fast charges or sufficiently explain how a POSITA would have understood that the procedures used in Seo and Nam would have removed fast charges; instead, Petitioner effectively argues that removing fast charges is the inherent result of applying the voltage differential. See, e.g., Pet. 36 (stating Seo would have been understood to disclose “performing its read operation on chargetrap memories, which removes fast charges”).” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s reliance on Choi does not cure the deficiencies set forth above. Petitioner asserts that “Choi explains the primary mechanism and unwanted impact of fast-charge loss on verification,” which provides the motivation “to use Seo’s and Nam’s methods to achieve fast charge removal to improve verification.” Req. 7 n.1. But again, Petitioner does not sufficiently explain how a POSITA, looking at Choi, would have understood that either Seo’s or Nam’s techniques result in fast charge removal. In other words, even if Choi teaches the impact of fast-charge loss on verification, Petitioner fails to sufficiently show that a POSITA would have understood that either Seo or Nam teach or suggest fast charge removal. It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner’s reliance on Choi does not cure the deficiencies set forth above. Petitioner asserts that “Choi explains the primary mechanism and unwanted impact of fast-charge loss on verification,” which provides the motivation “to use Seo’s and Nam’s methods to achieve fast charge removal to improve verification.” Req. 7 n.1. But again, Petitioner does not sufficiently explain how a POSITA, looking at Choi, would have understood that either Seo’s or Nam’s techniques result in fast charge removal. In other words, even if Choi teaches the impact of fast-charge loss on verification, Petitioner fails to sufficiently show that a POSITA would have understood that either Seo or Nam teach or suggest fast charge removal.” slip op. at 7
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,600,342 - PTAB · Apr 25, 2025 · IPR2024-00912 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Micron’s rehearing requests, leaving institution denied because the petitions did not show that the prior-art combinations disclose or render obvious fast-charge removal.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000)). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“It was Petitioner’s burden to establish that Seo and Nam, alone or in combination with Choi, disclose Limitation [1.D]. We are not persuaded that we misapprehended the nature of Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“determined that the combinations of Seo or Nam with Choi were not persuasive. Dec. 14–15, 19–20. For example, we determined that “Dr. Liu’s statement that ‘[a] POSITA would have recognized that the lateral-electrical-field-inducing voltage differential, as Seo discloses, is what Choi describes as driving the lateral fast-charge loss,’ is not supported by objective evidence or sufficient explanation as to why a POSITA would have come to that understanding” and was therefore insufficient to support Petitioner’s asserted motivation to combine Seo with Choi. Id. at 14–15. In particular, we were not persuaded that “Seo creates a large lateral electric field like the one described in Choi,” and, in any case, we disagreed that “Choi teaches that a large lateral electric field removes fast charges.” Id. at 15. Accordingly, regardless of the duration of the voltage application described in Seo, Petitioner failed to show that the combination of Seo and Choi would result in removal of fast charges. We further determined that Petitioner’s combination of Nam with Choi was problematic for similar reasons, given Petitioner’s reliance on similar arguments. See id. at 20.” slip op. at 10
- Expert testimonyPetitioner expert discountedOther
“the knowledge of one of ordinary skill in the art relating to charge-trap memory devices demonstrates fast charge removal. See Pet. 36, 81–82. And although Petitioner cites its declarant, Dr. Liu, for the proposition that “Seo discloses, and would have been understood to disclose, performing its read operation on charge-trap memories, which removes fast charges,” Dr. Liu does not cite objective evidence to support this assertion, aside from the ’342 patent itself. Id. at 36 (citing Ex. 1003 ¶ 136). Moreover, Dr. Liu’s testimony simply circles back to logic similar to that relied on with respect to the inherency theory, namely that, given certain similarities between Seo and the ’342 patent, Seo removes fast charges because the ’342 patent teaches removing fast charges, even though Seo does not explicitly teach doing so. See Ex. 1003 ¶ 136 (“[A] POSITA would have immediately understood from reading Seo that Seo is disclosing its read operation as applicable to Flash memories, including Flash charge-trap memories. And as the ’342 states, Seo’s operation would remove fast charges in a charge-trap memory.” (citing Ex. 1001, Abstract)). As already discussed, we disagree with this logic based on the lack of sufficient evidence to support its conclusion. See Dec. 13 (“Petitioner and Dr. Liu do not provide any objective evidence or explanation as to how or why a POSITA would have understood that Seo’s voltage amounts applied during Seo’s time periods operate the same way [as in the ’342 patent] on Seo’s memory device to generate fields with sufficient magnitude and duration to remove fast charges.”). Petitioner’s assertions regarding Nam suffer from the same shortcomings. See Dec. 19–20; Pet 82 (“[A] POSITA would have found that Nam’s teachings are applicable to charge-trap devices”); Ex. 1003 ¶¶ 293–298.” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,600,342
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.