- PTAB · Jun 10, 2025 · IPR2025-00299 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–22 and all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Kircher and Krug.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it would prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims and on all grounds raised in the Petition. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s description is more restrictive than that of Petitioner because it requires the POSITA to have more experience or education in the relevant field. Based on the current record and for the purposes of this 6 The current record does not include allegations or evidence of objective indicia of nonobviousness. proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’271 Patent and the asserted prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). However, the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation. Although we adopt Petitioner’s definition of a person of ordinary skill in the art, our determination regarding Petitioner’s challenge does not turn on the differences between Petitioner’s and Patent Owner’s definitions, and our conclusions would be the same under either definition. To the extent the level of ordinary skill in the art is in dispute or makes a material difference in the obviousness analysis, the parties should brief their respective positions in this regard during trial.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Although the specification broadly defines “module,” the language of the claims better supports Patent Owner’s argument that the computer program module limitations connote structure in the form of software instructions or code. Prelim. Resp. 13–14 (citing Ex. 2001 ¶¶ 22–24; Ex. 2003 ¶¶ 15–28). Specifically, claim 1 recites a computer-readable storage medium storing computer program modules configured to execute on the computer processor, the computer program modules comprising. . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Ex. 1001, 47:30–32. And, claim 6 recites the computer-program product having a computer-readable storage medium having computer program instructions encoded thereon comprising . . . a monitoring module . . . a first relevance measurement module . . . a second relevance measurement module . . . and a relevance analysis module. Id. 48:19–51. That language suggests that the module limitations are software instructions or code because the modules are defined as “computer program modules” or “computer program instructions.” Id. at 47:32, 48:20– readable storage medium and are instructions to be executed by a processor, further suggesting the modules are software instructions or code. Id. at 47:30–32, 48:16–21. The testimony of Dr. Kahn, which we credit for institution purposes, supports that understanding; Dr. Kahn states a POSITA would understand that “‘computer program modules’ stored on a ‘computerreadable storage medium’ refers to software instructions or code.” Ex. 2001 ¶ 24. Furthermore, the computer program module limitations are” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“That is, Petitioner asserts that the claim requires only one of “a local importance,” “a global importance,” “a content relevance,” or “one or more actions on the piece of electronic content.” Id. We adopt Petitioner’s construction, which Patent Owner does not dispute at this stage in the proceeding. See Prelim. Resp. The claimed determination is “based at least in part on one or more measures derived from the group” members listed. As such, the claim language is clear that only one member of the group, i.e., one of limitations 1[g][i]–1[g][iv], is required to meet the claim. Independent claims 6 and 7 recite similar limitations as claim 1, and for purposes of institution, we adopt Petitioner’s claim construction for those similar limitations. See Ex. 1001, 48:35–46, 49:1–11.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 7,716,217 - Merck Sharp & Dohme LLC v. The Johns Hopkins UniversityAll claims unpatentablePTAB · Jun 9, 2025 · IPR2024-00240 · APJ Deborah Katz · IPR · Final written decision
Claims 1–42 are unpatentable: claims 1–42 are anticipated by the MSR, and the Board also finds the challenged claims obvious over the MSR and cited combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“claims a method of treating a human patient with colorectal cancer having certain characteristics using pembrolizumab and the main prior art reference cited by Petitioner discloses testing pembrolizumab to treat human patients. (See Ex. 1001, 25:40–50, Ex. 1005; see Decision 8–9.) Accordingly, the relevant field of Patent Owner’s claims is treating human patients, as well as testing existing compounds. Neither party directs us to evidence of the level of skill in the art beyond what we considered for institution of trial. In the Decision to institute trial, we determined that the level of skill in the art relevant to the claims of the ’393 patent is not limited to knowledge of and experience with conducting research relating to oncology or developing and conducting clinical trials. (See Dec. 8–9.) We determined that the level of skill also includes knowledge of and experience with treating colorectal cancer patients with immunotherapy compounds, identifying the conditions these patients may have, and understanding the literature regarding clinical trials for such colorectal cancers and the associated conditions and immunotherapy. (See id.) Because the parties do not present additional evidence or argument, we maintain that determination.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“what one of ordinary skill in the art would have known and understood at the relevant time. Specifically, Petitioner relies on the testimony of Alfred L. Neugut, M.D., Ph.D., M.P.H.3 (Ex. 1003) and Paul E. Oberstein, M.D. (Ex. 1150). Patent Owner relies on the testimony of Nils Lonberg, Ph.D. (Ex. 2001) and Richard Goldberg, M.D. (Ex. 2090).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“1 requires a causal relationship wherein the patient must be tested for MSI-H and, if he or she is determined to be MSI-H or dMMR, then the patient is treated with 10 mg/kg of pembrolizumab every 14 days. We further agree that this relationship is different than the use of the term “after” in claims 7, 20, and 27, wherein patients must be treated with a different cancer therapy, and wherein the cancer must have later progressed for the treatment to be within the scope of these claims. (Ex. 1001, 25:66–7, 26:44–46, 26:63–64.) In claim 1, a biological sample from the patient must be tested to determine if the cancer is MSI-H and, if so, the patient is treated with a therapeutically effective amount of pembrolizumab. For this reason, if the prior art teaches the limitations of 1) testing a biological sample obtained from a patient having colorectal cancer to determine that the patient’s colorectal cancer is microsatellite instability high or mismatch repair deficient, and 2) treating the patient with a therapeutically effective amount of pembrolizumab if the patient’s colorectal cancer is determined to be microsatellite instability high or DNA mismatch repair deficient, the art anticipates claim 1. We are not persuaded that claim 1 requires or excludes anything else because nothing else is recited in the claim.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Microsatellite Unstable (MSI) Tumors.” (Ex. 1005, 2.) The parties’ witnesses agree that MK-3475 is pembrolizumab, the compound recited in claim 1. (See Neugut Decl., Ex. 1003 ¶ 37; see Lonberg Decl., Ex. 2001, ¶ 65.) Patent Owner does not dispute Petitioner’s assertion that the MSR was published on a government web site on June 10, 2013, more than two years before the priority date of the ’393 patent on July 10, 2015. (See Pet. 7 (citing Ex. 1005, 3, Ex. 1003 ¶ 35).)” slip op. at 17
Patent outcomesUS 11,591,393 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,591,393 - PTAB · May 21, 2025 · IPR2025-00193 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, or 30 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’030 patent is unpatentable.” slip op. at 2
- BurdenNot shown unpatentable
“What is missing from Petitioner’s stated motivation for modifying the array of Cantor is a reason why a POSA would seek to correlate the identification sequence with a location on the array at all. Prelim. Resp. 72. Indeed, the location of a bead on the substrate is not pertinent to the analysis disclosed in Cantor. Ex. 2002 ¶ 172; see also id. at ¶ 31 (Cantor “does not relate to the [spatial] analysis of tissue samples . . . .”). “[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.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, and 30 would have been obvious over Cantor.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not argue that any claim term requires construction. Pet. 22–23. Likewise, Patent Owner takes the position that “no claim terms 2 Person of ordinary skill in the art. require explicit construction” for purposes of determining whether to institute inter partes review. Prelim. Resp. 19. Having considered the parties’ positions and evidence of record, 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. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“What is missing from Petitioner’s stated motivation for modifying the array of Cantor is a reason why a POSA would seek to correlate the identification sequence with a location on the array at all. Prelim. Resp. 72. Indeed, the location of a bead on the substrate is not pertinent to the analysis disclosed in Cantor. Ex. 2002 ¶ 172; see also id. at ¶ 31 (Cantor “does not relate to the [spatial] analysis of tissue samples . . . .”). “[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.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, and 30 would have been obvious over Cantor.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,761,030 - PTAB · May 21, 2025 · IPR2025-00192 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, 17, 20, 23, 28, or 29 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’138 patent is unpatentable.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“[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.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 5, 17, 20, 23, 28, and 29 would have been obvious over Cantor. slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claims 1 and 17 are supported by the ’124 provisional and/or whether the ’138 patent’s priority chain is intact. Pet. 52–60. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find (1) that the ’124 Provisional provides adequate written description support for each of the challenged claim elements; (2) that the ’138 patent’s priority chain is intact; and (3) that the ’138 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims.” slip op. at 28
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claims 1 and 17 are supported by the ’124 provisional and/or whether the ’138 patent’s priority chain is intact. Pet. 52–60. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find (1) that the ’124 Provisional provides adequate written description support for each of the challenged claim elements; (2) that the ’138 patent’s priority chain is intact; and (3) that the ’138 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,549,138 - SML Intelligent Inventory Solutions LLC / SML (USA) Inc. v. Adasa Inc.Institution deniedPTAB · May 20, 2025 · IPR2025-00125 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that at least one challenged claim is unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claims 1–20 of the ’967 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner adopts the following definition of a person of ordinarily skill in the art (hereafter, sometimes “POSITA”) of the ’967 patent proposed by Patent Owner in the Avery Dennison litigation: [A]t least a bachelor’s degree in electrical engineering, computer science, or computer engineering, or a related discipline, and at least five years of experience which would consist of, A, designing, developing, evaluating and/or using RFID or other AIDC [automatic identification and data capture] technologies in inventory management, unique object identification, and/or security; or B, studying and conducting research related to RFID technologies and using RFID and other AIDC technologies in inventory management, unique object identification, and/or security. Pet. 6 (citing Ex. 1030, 707:3–13). Patent Owner does not offer a definition of an ordinarily skilled artisan of the ’967 patent at this time. See generally Prelim. Resp. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references and the problems addressed in the ’967 patent.” slip op. at 17
- Prior constructionPrior construction adoptedDecided for patent owner
“Petitioner proposes the following claim constructions: “an allocated block of serial numbers” as “a pre-authorized range of binary serial numbers” and “uniquely corresponding” as the “term’s plain and ordinary meaning, consistent with the articulation of the plain and ordinary meaning” in the Avery Dennison litigation. Pet. 8–12. As to the remaining claim terms, Petitioner applies the district court’s constructions in the Avery Dennison litigation. Id. at 12 (citing Ex. 1028). Patent Owner applies the following constructions that were entered during in the Avery Dennison litigation: “object class information space” as “data field within the memory of the RFID integrated circuit chip for information identifying the class of an object, such as a company prefix, item reference code, partition value, and/or filter value,” “unique serial number space” as “data field within the memory of the RFID integrated circuit for information identifying a unique serial number,” “being assigned a limited number of most significant bits” as “includes a limited, predefined sequence at the leading end,” “remaining bits of lesser significance” as “the remaining lower order bits at the trailing end,” “is encoded with one serial number instance” as “has stored within it one serial number instance,” “an allocated block of serial numbers” as “a pre-authorized range of serial numbers,” and “uniquely corresponding” as its plain and ordinary meaning. Prelim. Resp. 32. For purposes of resolving whether to institute trial, we adopt and apply the interpretations stated in the district court’s claim construction order and applied by the Federal Circuit on appeal, Ex. 1028.11 See 55 F.4th 900, 908–909, 912–913 (Fed. Cir. 2022) (citing the district court’s claim construction order).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“IBM200 and Kuhno would have made it obvious for a POSITA to commission RFID tags with unique serial numbers partitioned into MSBs and bits of lesser significance. See Pet. 34–39; Ex. 1005 ¶¶ 167–176. However, on this record, Petitioner has not sufficiently shown that the POSITA, having read IBM200 and Kuhno, would have been led to create a serial number space in which the limited number of “most significant bits” uniquely corresponds to those bits assigned to an allocated block of serial numbers, as recited in limitation [f].” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,798,967 - Samsung Electronics Co., Ltd.All claims unpatentablePTAB · May 19, 2025 · IPR2024-00821 · APJ Scott A Daniels · IPR · Final written decision
Claim 23 is unpatentable as obvious over Spain-I, Hunzinger, and Nanda.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 3–4 (citing Ex. 1036 ¶¶ 31–32). Patent Owner waived entry of a Preliminary Response, did not enter a Patent Owner Response, and accordingly does not dispute the level of ordinary skill in the art. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’698 patent and prior art of record, and we apply it in our obviousness evaluations below. 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
“prosecution history of the ’698 patent for understanding the phrase “at least one number based on,” recited in claim 23. Pet. 6 (citing Ex. 1004, 165– 166). Petitioner proposes that the plain meaning of this phrase was expressly described during prosecution of the application that became the ’698 patent, where the Applicant argued that [a]s the specification explains, the “number based on []” is intended to refer to the output of any “formula,” including but not limited to a difference formula, that serves as a comparison “metric” (including “logical comparisons, arithmetically threshold (rounded) logical comparisons, arithmetic, probabilistic, fuzzy logic, neural network enabled, [or] heuristic” [¶00561], or “determinations that are based on derivatives, mathematical normalizations, correlation functions, functions” [¶0139]). Ex. 1004, 165–166. For purposes of this Decision we apply Petitioner’s proposed plain meaning for this phrase as it is reasonably based on the prosecution history of the ’698 patent and not disputed by Patent Owner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., 200 F.3d at 803). After reviewing the parties’ arguments and evidence, apart from the “at least one number based on” phrase, we determine that no claim terms require express construction for this Decision.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“advance arguments directed to claim 23. Accordingly, Patent Owner has forfeited any argument regarding Petitioner’s contentions for these claims. We have reviewed Petitioner’s arguments regarding claim 23, which Patent Owner does not contest, and find them persuasive. Accordingly, we adopt Petitioner’s contentions as our own. Based on Petitioner’s arguments and accompanying evidence, we determine that Petitioner has shown by a preponderance of the evidence that claim 23 would have been unpatentable over Spain-I, Hunzinger, and Nanda. 5. Conclusion on Obviousness For the reasons discussed above, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claim 23 is unpatentable over the combined teachings of Spain-I, Hunzinger, and Nanda.” slip op. at 22
Patent outcomesUS 8,594,698 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,594,698 - Samsung Electronics Co., Ltd. v. Broadphone LLCAll claims unpatentablePTAB · May 5, 2025 · IPR2024-00155 · APJ Lisa L Tsang · IPR · Final written decision
Claims 1, 4, 5, 8, 14, 15, 18, 19, 22, 24, 25, and 28 are unpatentable as obvious over the stated combinations of prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree that the language in the Specification of the ’811 patent does not indicate that the patentee intended to either act as its own lexicographer, or disavow the full scope of the claim term. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning” (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002))); Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (guiding that disavowal or disclaimer of claim scope “must ‘be both clear and unmistakable’ to one of ordinary skill in the art” (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir. 2003))). However, Dr. Cooklev’s opinion that “device-specific target location” means “a target location that is specific to a particular device” is not supported adequately. In particular, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365 (citing Phillips, 415 F.3d at 1313) (emphasis added). Importantly, Dr. Cooklev does not cite to any portions of the intrinsic evidence to support his claim construction. See Ex. 2003 ¶ 34; see also Phillips, 415 F.3d at 1318 (“conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court”). Given the conclusory nature of Dr. Cooklev’s testimony, and because the intrinsic evidence is sufficiently clear, we decline to adopt Patent Owner’s proffered construction of “device-specific target location.”” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art (“POSITA”) would have had at least a BS degree in computer science, electrical engineering, or similar discipline, and two or more years of experience with location determining-based systems and/or processes, such as for example systems/processes for determining mobile device location(s). . . . More education can supplement practical experience and vice versa. Pet. 3 (citing Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 4. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’811 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Patent Owner relies solely on the testimony of Dr. Cooklev to support its proffered claim construction. PO Resp. 5 (citing Ex. 2003 ¶ 34). Dr. Cooklev testifies, “[b]ased on my review of the patent and intrinsic record, [“device-specific target location”] has a plain and ordinary meaning and is used by the claims with that meaning, which requires a target location that is specific to a particular device.” Ex. 2003 ¶ 34. Other than further opining that “I see no lexicography or disclaimer in the intrinsic record indicating that ‘device-specific target [location]’ refers to a location that is generally applicable to numerous devices, or that the term otherwise has a meaning broader than its plain and ordinary meaning,” Dr. Cooklev provides no support for why the claimed “device-specific target location” “requires a target location that is specific to a particular device.” See id. We agree that the language in the Specification of the ’811 patent does not indicate that the patentee intended to either act as its own lexicographer, or disavow the full scope of the claim term. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (“To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning” (citing CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002))); Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007) (guiding that disavowal or disclaimer of claim scope “must ‘be both clear and unmistakable’ to one of ordinary skill in the art” (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir. 2003))). However, Dr. Cooklev’s opinion that “device-specific target location” means “a target location that is specific to a particular device” is not supported adequately. In particular, “[t]he words of a claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.” Thorner, 669 F.3d at 1365 (citing Phillips, 415 F.3d at 1313) (emphasis added). Importantly, Dr. Cooklev does not cite to any portions of the intrinsic evidence to support his claim construction. See Ex. 2003 ¶ 34; see also Phillips, 415 F.3d at 1318 (“conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court”). Given the conclusory nature of Dr. Cooklev’s testimony, and because the intrinsic evidence is sufficiently clear, we decline to adopt Patent Owner’s proffered construction of “device-specific target location.”” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“c) Analysis Patent Owner’s Response does not advance arguments directed to claims 1 and 15. See generally PO Resp. Accordingly, Patent Owner has forfeited any argument regarding Petitioner’s contentions for these claims. See In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner forfeits an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted). We have reviewed Petitioner’s arguments regarding claims 1 and 15, which Patent Owner does not contest, and find them persuasive. Accordingly, we adopt Petitioner’s contentions as our own. Based on Petitioner’s arguments and accompanying evidence, we determine that Petitioner has shown by a preponderance of the evidence that claims 1 and 15 would have been unpatentable over Spain-I, Hunzinger, and Nanda.” slip op. at 33
Patent outcomesUS 10,341,811 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,341,811 - Samsung Electronics Co., Ltd.All claims unpatentablePTAB · May 5, 2025 · IPR2024-00154 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–7, 9–10, 12–13, 15–16, and 21 are unpatentable as obvious over the stated combinations of Spain-I, Hunzinger, Nanda, and, for certain claims, additional references.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a BS degree in computer science, electrical engineering, or similar discipline, and two or more years of experience with location determining-based systems and/or processes, such as for example systems/processes for determining mobile device location(s). . . . More education can supplement practical experience and vice versa. Pet. 4 (citing Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 4. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the 9 The record does not include allegations or evidence of objective indicia of nonobviousness. technology and descriptions in the ’698 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“prosecution history of the ’698 patent for understanding the phrase “at least one number based on,” recited in claim 1. Pet. 6 (citing Ex. 1004, 166). Petitioner proposes that the plain meaning of this phrase was expressly described during prosecution of the application that became the ’698 patent, where the Applicant argued that [a]s the specification explains, the “number based on []” is intended to refer to the output of any “formula,” including but not limited to a difference formula, that serves as a comparison “metric” (including “logical comparisons, arithmetically threshold (rounded) logical comparisons, arithmetic, probabilistic, fuzzy logic, neural network enabled, [or] heuristic” [¶00561], or “determinations that are based on derivatives, mathematical normalizations, correlation functions, functions” [¶0139]). Ex. 1004, 166. Patent Owner does not dispute this interpretation. See generally, PO Resp. 2. For purposes of this Decision, and to the extent necessary for institution, we apply Petitioner’s proposed plain meaning for this phrase as it is reasonably based on the prosecution history of the ’698 patent. Apart from this, where neither party proposes any particular construction or indicates disagreement as to the meaning of any claim language, we need not explicitly construe any claim terms at this stage of the proceeding. Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). After reviewing the parties’ arguments and evidence, apart from the “at least one number based on” phrase, we determine that no claim terms require express construction for this decision.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“remotely storing the fingerprint database, as does Nanda. Pet. 47–49. Dr. Almeroth testifies persuasively in support that “Spain-I describes configurations where the fingerprint database may be stored remotely from the MU,” and “Nanda also discloses similar features where the mobile device creates a fingerprint and transmits it for storage in a remote database for subsequent analysis.” Ex. 1002 ¶ 194 (citing Ex. 1005, Fig. 3, 4:28–58; Ex. 1006, 12:14–31; Ex. 1009, 5:22–42; Ex. 1010, 5:20–41; Ex. 1011, Fig. 3, 6:9–14, 6:15–30). As discussed above, claims 1, 2, from which claim 4 depends, and claim 5, from which claim 6 depends, are not contested by Patent Owner. Dr. Almeroth’s testimony as to the prior art teachings and disclosure with respect to claims 1, 2, 4, 5, and 6 is credible, supported by the record, and essentially unrebutted in this proceeding. Ex. 1002 ¶¶ 93–182, 191–201. Accordingly, based on the complete record, we are persuaded that Petitioner has shown a preponderance of evidence that claims 4 and 6 would have been obvious over Spain-I in view of Hunzinger and Nanda.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“argument as to claim 1, Patent Owner does not expressly dispute that Spain-I and Nanda fail to disclose “wherein the chosen location signal strengths were measured by a second portable RF communication device.” PO Resp. 5–13. Dr. Almeroth testifies persuasively, for example, that “Nanda explains ‘receiv[ing] fingerprints from multiple mobiles devices’ allows for a ‘much larger database of available access points than would be found in a single mobile device.’” Ex. 1002 ¶ 185 (quoting Ex. 1006, 12:14–31). With respect to a motivation to combine, Dr. Almeroth testifies further that a person of ordinary skill in the art would have considered “multiple MUs to create/maintain a larger database of antenna station fingerprint information, like that suggested by Nanda (Ex-1006, 12:26-29), thus beneficially expanding applications of Spain-I’s disclosed features.” Id. ¶ 187. For claim 6, as discussed above, Petitioner argues that Spain-I teaches remotely storing the fingerprint database, as does Nanda. Pet. 47–49. Dr. Almeroth testifies persuasively in support that “Spain-I describes configurations where the fingerprint database may be stored remotely from the MU,” and “Nanda also discloses similar features where the mobile device creates a fingerprint and transmits it for storage in a remote database for subsequent analysis.” Ex. 1002 ¶ 194 (citing Ex. 1005, Fig. 3, 4:28–58; Ex. 1006, 12:14–31; Ex. 1009, 5:22–42; Ex. 1010, 5:20–41; Ex. 1011, Fig. 3, 6:9–14, 6:15–30). As discussed above, claims 1, 2, from which claim 4 depends, and claim 5, from which claim 6 depends, are not contested by Patent Owner. Dr. Almeroth’s testimony as to the prior art teachings and disclosure with respect to claims 1, 2, 4, 5, and 6 is credible, supported by the record, and essentially unrebutted in this proceeding. Ex. 1002 ¶¶ 93–182, 191–201. Accordingly, based on the complete record, we are persuaded that Petitioner has shown a preponderance of evidence that claims 4 and 6 would have been obvious over Spain-I in view of Hunzinger and Nanda.” slip op. at 28
Patent outcomesUS 8,594,698 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,594,698 - Samsung Electronics Co., Ltd. v. Broadphone LLCAll claims unpatentablePTAB · May 5, 2025 · IPR2024-00153 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–10, 17–20, and 24–26 are unpatentable as obvious over the asserted combinations; the Board did not reach the additional Damarla and Houri grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a BS degree in computer science, electrical engineering, or similar discipline, and two or more years of experience with location determining-based systems and/or processes, such as for example systems/processes for determining mobile device location(s). . . . More education can supplement practical experience and vice versa. Pet. 3 (citing Ex. 1002 ¶¶ 31–32). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 4. Accordingly, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with our review and understanding of the technology and descriptions in the ’583 patent and prior art of record, and we apply it in our obviousness evaluations below. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Petition, Petitioner submits that “no special constructions are necessary” beyond the plain meaning of the claims. Pet. 4. Patent Owner states in its Patent Owner Response that it “agrees that no formal claim construction is necessary.” PO Resp. 5. Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). After reviewing the parties’ arguments and evidence, we determine that no claim terms require express construction for this decision.” slip op. at 10
- BurdenFwd all claims unpatentableUnpatentable
“Petitioner’s arguments regarding claim 1, which Patent Owner does not contest, and find them persuasive. Pet. 5–41. We adopt Petitioner’s contentions as our own. Based on Petitioner’s arguments and accompanying evidence, we determine that Petitioner has shown by a preponderance of the evidence that claim 1 would have been unpatentable over Spain-I, Hunzinger, and Nanda.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“argument as to claim 1, Patent Owner does not expressly dispute that Spain-I and Nanda fail to disclose “wherein the chosen location signal strengths were measured by a second portable RF communication device.” PO Resp. 5–13. Dr. Almeroth testifies persuasively, for example, that “Nanda explains ‘receiv[ing] fingerprints from multiple mobiles devices’ allows for a ‘much larger database of available access points than would be found in a single mobile device.’” Ex. 1002 ¶ 186 (quoting Ex. 1006, 12:14–31). With respect to a motivation to combine, Dr. Almeroth testifies further that a person of ordinary skill in the art would have considered “multiple MUs to create/maintain a larger database of antenna station fingerprint information, like that suggested by Nanda (Ex-1006, 12:26-29), thus beneficially expanding applications of Spain-I’s disclosed features.” Id. ¶ 188.” slip op. at 27
Patent outcomesUS 8,170,583 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,170,583 - Aardevo North America, LLC v. Agventure B.V.Institution deniedPTAB · May 1, 2025 · IPR2025-00136 · APJ Jeffrey N Fredman · IPR · Institution
Institution of inter partes review was denied for claims 1–10 because Petitioner did not establish a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we find that on the current record Petitioner has not shown that it has a reasonable likelihood that it would prevail on these obviousness grounds. XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5. XIII. CONCLUSION After reviewing the information presented in the Petition and the Preliminary Response, we determine that, based on the evidence of record, Petitioner has not established a reasonable likelihood that claims 1–10 of the ’841 patent are unpatentable. XIV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), institution of an inter partes review of all challenged claims on all grounds presented in the Petition is denied.” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“However, neither Petitioner nor Dr. Jansky provide specific data on the record before us showing the actual measured homozygosity of either of the inbred lines, US-W 5309 and US-W 5315. And Phumichai experimentally demonstrates that Dr. Jansky’s assumption that theoretical heterozygosity reduction of 50% per generation is not necessarily accurate, stating the “observed average percentage of reduction of heterozygosity per generation (38.4% or 38.5%) was lower than the theoretically expected value of 50%.” Ex. 1005, 982. Indeed, Phumichai disclosed that the “SOPH [Section-based observed percentage of heterozygosity] decreased steadily from the original 100% in 99H2–1 (S0) to the family means of 62.4% in 3H2 (S1), 37.9% in 3H3 (S2).” Id. at 981. That is, Phumichai experimentally shows that in an S2 generation of a potato line, the heterozygosity was 37.9%, resulting in homozygosity of about 62.1%, below the 75% theoretically expected and the 75% required by claim 1 of the ’841 patent. Therefore, the evidence of record does not show that the S2 generation of potato lines in Jong necessarily satisfies the homozygosity recitation in claim 1 of the ’841 patent, and so cannot establish on the record before us that Jong inherently teaches this limitation.” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedNot shown unpatentableNot shown unpatentable
“Owner is telling. Petitioner does not refute Patent Owner’s evidence of objective indicia. On the current record, the objective indicia evidence is compelling. As to long felt need, Patent Owner cited evidence on record before the Examiner that showed a persistent need recognized by ordinarily skilled artisans. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). For example, Dr. Huang states “This research is the breakthrough we have been waiting for since nearly a century . . . This is crucial for the potato breeding worldwide.” Ex. 2009, 687. There is no evidence that this long-felt need was satisfied by another before Appellant’s invention. See Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved . . . .”). Lastly, Dr. Lindhout explains that this invention satisfies the long-felt need, stating “I have discovered, and disclosed in the present application for patent, how a fertile homozygote in” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,140,841
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.