- SAP America, Inc. v. Cyandia, Inc.Institution deniedPTAB · Apr 7, 2025 · IPR2024-01432 · APJ Jason W Melvin · IPR · Institution
The Board denied institution of review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 under § 314(a) based on the Fintiv factors and copending district-court litigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“overcome the other factors. That is not to say we view Petitioner’s case as marginal or close, rather we determine that the other factors are more persuasive here. Although Petitioner’s challenge is straightforward and definitely satisfies the institution standard, even when balanced against Patent Owner’s counterarguments, we do not find the challenge to be sufficiently strong to outweigh the evidence discussed above in connection with Fintiv factors 1–5. When reviewing all other circumstances, we find that factor 6 is neutral.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2021).” slip op. at 2
Discretionary denialPatents in suitUS 8,751,948 - Bote, LLC v. Steamboat Paddlesports, LLCAdverse judgmentPTAB · Mar 25, 2025 · IPR2024-00889 · APJ Cynthia L Murphy · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner, holding claims 1–15 unpatentable after Patent Owner abandoned the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“As noted in the Scheduling Order, “[i]f Patent Owner elects not to file a response to the Petition, Patent Owner must arrange a conference call with the parties and the Board.” [Paper 14, 9.] Thus, Patent Owner has three options: 1) file a response by February 18, 2025, 2) arrange a conference call in accordance with the Scheduling Order, or 3) stipulate a revised due date with Petitioner and file a response by the stipulated due date. Patent Owner must appoint counsel to proceed with any of these options, which Patent Owner should do without delay. Patent Owner’s failure to proceed with one of these options could be viewed as an abandonment of this proceeding. And such abandonment would be construed as Patent Owner’s request for adverse judgment against itself (see 37 C.F.R. § 42.73(b)(4)), resulting in cancellation of all of the claims challenged in the Petition.” slip op. at 2
NonePatents in suitUS 10,479,458 - Bote, LLC v. Steamboat Paddlesports, LLCAdverse judgmentPTAB · Mar 25, 2025 · IPR2024-00892 · APJ Cynthia L Murphy · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–20 after finding abandonment, resulting in cancellation of all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“As noted in the Scheduling Order, “[i]f Patent Owner elects not to file a response to the Petition, Patent Owner must arrange a conference call with the parties and the Board.” [Paper 15, 9.] Thus, Patent Owner has three options: 1) file a response by February 18, 2025, 2) arrange a conference call in accordance with the Scheduling Order, or 3) stipulate a revised due date with Petitioner and file a response by the stipulated due date. Patent Owner must appoint counsel to proceed with any of these options, which Patent Owner should do without delay. Patent Owner’s failure to proceed with one of these options could be viewed as an abandonment of this proceeding. And such abandonment would be construed as Patent Owner’s request for adverse judgment against itself (see 37 C.F.R. § 42.73(b)(4)), resulting in cancellation of all of the claims challenged in the Petition.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Not reached
“Accordingly, it is ORDERED that adverse judgment shall be entered against Patent Owner as to claims 1–20 of the ’466 patent under 37 C.F.R. § 42.73(b).4 FURTHER ORDERED that this paper constitutes a final written decision pursuant to 35 U.S.C. § 318(a) holding that claims 1–20 of the ’466 patent are unpatentable based on the adverse judgment; and “not made any attempt whatsoever to contact Petitioner regarding this IPR.” Ex. 1027 ¶ 7. 3 Patent Owner is reminded of the applicable estoppel provisions in 37 C.F.R. § 42.73(d)(3). 4 Petitioner filed a motion asking for a finding that Patent Owner had abandoned the proceedings and constructively requested adverse judgment against itself. See Paper 19; Ex. 3002. Petitioner’s motion is dismissed as moot in view of our entry of adverse judgment for the reasons expressed herein. The same applies to Petitioner’s request to submit supplemental evidence. See Ex. 3003.” slip op. at 3
NonePatents in suitUS 9,862,466 - Toast, Inc v. Gratuity, LLCAll claims unpatentablePTAB · Mar 24, 2025 · IPR2023-01408 · APJ Cynthia L Murphy · IPR · Final written decision
Claims 1–13 are unpatentable as obvious over Marshall, Marshall and Webb, Phillips and Marshall, or Phillips, Marshall, and Webb.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner’s proposed definition of a POSITA, to the extent that it aligns with the level of skill portrayed by the ’050 Patent. As discussed above, the ’050 Patent does not does not provide one with any technical direction for making and using a multi-restaurant embodiment that avoids or solves calculation/extraction problems due to disparate client (e.g., restaurant) systems. The ’050 Patent also does not provide one with any technical direction for scaling up and/or transitioning to a cloud-based system. We infer from this that a POSITA would have the education and the experience enabling him/her to effectively and economically handle these tasks without technical direction, despite the problems associated therewith. Put another way, the actual application of these technical endeavors would not be beyond his/her skill. Although Petitioner provides a slightly different expression for the level of ordinary skill in the art (see Pet. 9–10), it substantively agrees with Patent Owner’s proposed level of skill and adopting Petitioner’s precise level of ordinary skill would not change our decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Patent Owner presents several pages of argument about claim construction, but offers no proposed construction for any of the claim terms. See PO Resp. 11–18. “Petitioner maintains that no claim construction is necessary.” Pet. Resp. 4. We determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“with a restaurant’s timeclock programs, time and attendance systems, and/or payroll processing systems. See Ex. 1004 ¶¶ 69, 108. Webb discloses that, in a restaurant setting, a POS system can be communicatively coupled to a time and attendance server. See Ex. 1006, Abstract, 24:51–60, Figs. 1A, 1B. Thus, Marshall and Webb describe similar and compatible systems in the same field of art—systems for tracking employee and sales information in the hospitality business. And Petitioner provides evidence that it would have been obvious to a POSITA to combine these teachings in the claimed manner. See Ex. 1002 ¶¶ 207–212. Patent Owner argues that Webb “does not cure the deficiencies” of Marshall. PO Resp. 41. However, as discussed above, we disagree with Patent Owner regarding Marshall’s deficiencies. Thus, Webb need not cure these alleged deficiencies in Marshall.10 Patent Owner does not otherwise contest Petitioner’s contention with respect to this asserted ground of unpatentability. Consequently, we conclude that, on the record before us, Petitioner has proven that claims 4–7, 9, and 11–13 would have been would have been obvious over Marshall and Webb. 10 Patent Owner also mentions that there is “simply no motivation to combine Marshall and Webb.” PO Sur-Reply 7; see also PO Resp. 42. But Patent Owner does not address the arguments and evidence set forth by Petitioner.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner’s client-side-only arguments are overly focussed on the setup disclosed in Marshall’s Figure 3, and, in any event, do not coincide with Petitioner’s citations to Marshall. Petitioner points out in its Reply that Patent Owner (and its expert) fail to address Marshall’s multi-employer 8 The ’050 Patent lists a provisional application filed on September 4, 2012 as a related application. Ex. 1004, code (60). 9 Marshall discloses that “data transfer” can be “data transfer is performed via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Ex. 1004 ¶ 110. embodiment. See Pet. Reply 6. Petitioner also points out in its Reply that Patent Owner (and its expert) fail to address Marshall’s disclosure that the server executing the GrataSoft software can be separate (i.e., not co-located) with the POS server executing the Aloha software. Id. at 10. In Patent Owner’s Sur-Reply, these topics remained undiscussed. See PO Sur-Reply 1–6. Both aspects of Petitioner’s contentions support that Marshall’s system does disclose a gratuity management system that is separate and distinct from the client POS servers. Patent Owner argues that there would be problems “associated with calculations of gratuities based on client-specific information extracted from disparate, ad hoc client business systems.” PO Resp. 27–28; Ex. 2006 69–73. Patent Owner also argues that there would be “problems associated with scale-up and transitioning to a cloud-based system, and associated cost and security issue. PO Resp. 27; Ex. 2006 ¶¶ 87–91. However, as discussed above, the ’050 Patent portrays that a POSITA would have the education and experience enabling him/her to effectively handle the conversion of a singlerestaurant system to a multi-restaurant system; and to transition to a safe and secure cloud system in a cost/time effective manner. Thus, these problems would not detract from the obviousness of a multi-restaurant and/or cloud-based version of Marshall’s invention. Patent Owner does not otherwise contest Petitioner’s contention with respect to this asserted ground of unpatentability. Consequently, we conclude that, on the record before us, Petitioner has proven that claims 1–3, 8, and 10 would have been would have been obvious over Marshall.” slip op. at 16
Patent outcomesUS 9,741,050 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,741,050 - PTAB · Mar 18, 2025 · IPR2024-01378 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1–10 on all petitioned grounds, finding a reasonable likelihood that at least one claim is unpatentable.
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) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2021).” slip op. at 2
- BurdenInstituted
“In sum, Patent Owner asserts that the precise teachings of the asserted secondary references do not amount to detecting electrical conduction through the posterior tibial nerve. That argument does not consider that Petitioner relies on a combination in which Svihra’s approach is modified by the secondary references such that Svihra’s stimulation of the PTN is detected and used to automatically control the stimulation parameters. Pet. 21–28. As discussed, we view the references’ disclosures as supporting Petitioner’s contentions. f. Summary We conclude that Petitioner has identified sufficient reason that skilled artisans would have modified Svihra’s approach to incorporate the systems and techniques of Mann, DiLorenzo, Gerber, and Bourget, and that the asserted combination renders obvious claim 1’s limitations. Accordingly, this ground supports institution.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had an undergraduate degree in the field of biomedical engineering, or a related discipline, such as electrical engineering, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could substitute for a formal degree and vice versa.” Pet. 14 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute Petitioner’s proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no terms require construction for purposes of this Petition.” Pet. 14. Patent Owner does not contest Petitioner’s argument. See generally Prelim. Resp. We agree and do not expressly construe any terms at this stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Should either party believe that a position taken during trial depends on a particular claim construction, we encourage the party to explain that dependence and why its asserted construction is correct.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,002,477 - PTAB · Mar 18, 2025 · IPR2024-01375 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–13 based on both §103 grounds, finding a reasonable likelihood that the asserted combinations render at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“35 U.S.C. § 325(d) because Amarenco and Mann previously were presented to the Office during prosecution of the ’742 patent. See Prelim. Resp. 17–18. According to Patent Owner, Petitioner has identified additional references that “supposedly teach[] only some of what was missing—stimulation of a branch of the posterior tibial nerve but not to treat overactive bladder or incontinence.” Id. at 18. Patent Owner’s argument is flawed for two reasons. First, neither Svihra nor Ponsford were previously presented to the Office. Because Patent Owner does not argue that we should deny institution of Petitioner’s Svihra-based ground under § 325(d), and because that ground relies on a combination of art not previously presented, Patent Owner’s § 325(d) argument is unpersuasive. In that regard, we determine that even if we were to conclude the Amarenco-based ground warranted discretionary denial, the Svihra-based ground would not be subject to such denial and may alone justify institution. See USPTO, SAS Q&As (June 5, 2018) at D1.11 Additionally, for the Amarenco-based ground, Petitioner relies on a combination including prior art that was not previously presented, and Patent Owner does not show that additional prior art is cumulative to art presented during prosecution. We determine that Petitioner’s Amarenco-based ground 11 Available at: https://www.uspto.gov/sites/default/files/documents/ sas_qas_20180605.pdf is not substantially the same as one previously presented to the Office. Thus, we decline to discretionarily deny institution under § 325(d).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had an undergraduate degree in the field of biomedical engineering or a related discipline, such as electrical engineering, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could substitute for a formal degree and vice versa.” Pet. 21 (citing Ex. 1003 ¶¶ 20–21). Patent Owner does not dispute Petitioner’s proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it, and use “skilled artisans” to refer to people with such skill at the time the invention was filed.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no terms require construction for purposes of this Petition.” Pet. 22. Patent Owner does not contest Petitioner’s position. See generally Prelim. Resp. We agree and do not expressly construe any terms at this stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“It has long been recognized that the touchstone as to whether an asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,224,742 - Askeladden, L.L.C. v. Ohva, Inc.All claims unpatentablePTAB · Mar 10, 2025 · IPR2023-00921 · APJ Amee A Shah · IPR · Final written decision
Claims 1–4 are unpatentable as obvious: claim 1 over Cho, Aaron, and Carpenter; claim 2 over those references and de Geer; claim 3 over Cho and Aaron; and claim 4 over Cho, Aaron, and de …
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“application are similar, as indicated by the redline comparison of two provided as Exhibit 1015. Critically, however, the “Summary of the Invention” sections are completely different. Id. at 2–4. The question is whether one of ordinary skill in the art would have understood with reasonable clarity, without the benefit of the Summary added for the ’286 patent/’674 application, that the ՚030 application describes a smart telephone that executes coded instructions to “convert the analog variable voltage audio signal received at the microphone port to the transaction data as digital data.”” slip op. at 43
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Here, although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. The evidence indicates that the claimed “transaction data” is distinct from the “transaction data B1-Bn” described in connection with the Figure 11 embodiment.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As discussed above in Section II.C, we construe the term “transaction data” as encompassing any data involved in a transaction, including account data. Again, we emphasize that claim 1 requires that the transaction data is accepted by the card reader from an output interface of the transaction card. Cho provides that card reader 230 reads a digital signal that includes account information of card 130 whereby the account information “may include at least one of an account number, a card expiration data, etc.” Ex. 1005, 5:54–58. We further agree with Petitioner that to the extent “transaction data” is for the purpose of conducting banking transactions, Cho’s account data of a credit card number and expiration date can perform that purpose. Patent Owner’s arguments that the transaction data cannot be “static” and that claim 1 requires “processing actual transaction-specific data” are not commensurate with the scope of the claim 1. The claim does not recite any limitations that the transaction data be dynamic or “not static,” nor does it recite any processing of the transaction data outside of using it to “facilitate transactions.” Petitioner has shown that Cho teaches the claimed transaction data.” slip op. at 55
Patent outcomesUS 9,679,286 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,679,286 - Penumbra, Inc. v. Rapidpulse, Inc.InstitutedPTAB · Feb 21, 2025 · IPR2024-01261 · APJ Jamie T Wisz · IPR · Institution
Instituted IPR of claims 1–20 on all petitioned grounds after finding a reasonable likelihood that the challenged claims would have been obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board “may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–20 of the ’402 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Brown, contends that a person of ordinary skill in the art (“POSA” or “POSITA”) as of the relevant date would be either: (1) a person with a B.S. in engineering or an equivalent field, with two-four years of academic or industry experience in aspiration embolectomy and thrombectomy or comparable industry experience who would, where appropriate, work or consult with others, including a physician, to develop embolectomy or thrombectomy devices; or (2) an interventional neurosurgeon with at least three years of experience developing and/or using medical devices in embolectomy or thrombectomy procedures, and who would, where appropriate, work or consult with others, including an engineer, to develop such a medical device. Pet. 11 (citing Ex. 1005 ¶ 48). Petitioner also contends that, “[a] person with less education but more relevant practical experience, or more relevant education but less practical experience, may also meet this standard.” Id. Patent Owner states that for purposes of its Preliminary Response, it accepts Petitioner’s proposed definition of POSA, but “reserves the right to propose its own description of a POSA if the Board institutes review.” Prelim. Resp. 8 n.3. For purposes of this Decision, we adopt Petitioner’s characterization because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’402 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner provides a proposed construction for the term “[limited/limiting] to a positive amount of exit flow” recited in claims 3, 4, 13, and 15, as “the maximum permitted amount of positive exit flow in the distal direction, including no exit flow.” Pet. 15–16. Patent Owner asserts that “Petitioner’s proposed construction of ‘a positive amount of exit flow’ as ‘including no exit flow’ is plainly wrong.” Prelim. Resp. 9 (citing Pet. 15–16). Patent Owner also asserts that to the extent Petitioner “view[s] the claim term ‘flow in and out’ as encompassing only flow in or no flow at all, that would be plainly wrong too.” Id. Having evaluated the arguments and evidence before us on this record, we determine that construction of “[limited/limiting] to a positive amount of exit flow” is not necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). Turning to a different claim term, we note that neither party provided an explicit construction for the limitation in claim 1 of “control[ling] fluid address the proper claim construction for this term and to specifically discuss what is encompassed by “flow . . . out from the distal end.” We note that in the related cases (IPR2021-01466 and IPR2022-00608), we construed the term, “forward flow” to mean “an amount of liquid in the lumen that exits the distal end in the distal direction that is greater than 6 microliters of fluid.” Ex. 2007, 15; Ex. 2011, 13–14. Upon review of the parties’ arguments and the evidence of record, we determine that no terms require express construction for purposes of this Decision. See Nidec Motor Corp, 868 F.3d at 1017.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“c) Analysis On the current record, we are persuaded that Petitioner has demonstrated a reasonable likelihood that the subject matter of claim 1 would have been obvious over the combined disclosures of Yang and Mullins. First, Patent Owner asserts that Yang does not disclose the limitation of “a controller . . . to control fluid flow in and out from the distal end.” Prelim. Resp. 21– 32. On the current record, we agree with Patent Owner that introducing a positive pressure pulse such as through the water hammer effect does not necessarily mean that there will be an overall distal end. See Ex. 2001 ¶¶ 53–54; Ex. 2005 ¶ 60; Ex. 2007, 51 n.12. This is especially true if an overall vacuum state is maintained in the catheter. See Ex. 2001 ¶ 56; Ex. 2007, 43; Ex. 2010, 125:11–18. Further, on the current record, we credit the testimony of Patent Owner’s declarant, Mr. Culbert, that to have flow out of the catheter’s distal end when it is in a patient, the pressure in the catheter needs to exceed mean arterial pressure. See Ex. 2001 ¶ 59; Ex. 2010, 126:15–21. Therefore, on the current record, we agree with Patent Owner that Yang may not explicitly disclose flow out from the distal end of the catheter. Whether Yang alone renders this limitation obvious may be explored further on a full trial record; however, because this limitation appears to be taught by Mullins and Petitioner has shown on this record that a POSA would have been motivated to combine the disclosures of Yang and Mullins, we are sufficiently persuaded that Petitioner has met its burden to show a reasonable likelihood that this limitation is rendered obvious by the combined disclosures of Yang and Mullins.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,406,402 - Ewald Dörken AG v. Schaeffler Technology AG & Co. KG.Institution deniedPTAB · Feb 20, 2025 · IPR2024-01365 · APJ James J Mayberry · IPR · Institution
The Board denied institution on all three obviousness grounds because the Petition did not show a reasonable likelihood of prevailing on claims 1–7.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (permitting the Board to institute trial on behalf of the Director). 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). For the reasons set forth below, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that “[a] person having ordinary skill in the art (‘POSITA’) would have been a person having, as of 21 July 2017: (1) at least an undergraduate degree in engineering and/or material science, or similar education; and (2) two or more years of experience with coatings.” Pet. 7–8; see Ex. 1009 ¶ 25 (providing the same level of ordinary skill). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. We apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’756 patent, based on our review of the record.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther
“Petitioner submits that . . . the claims should be given their plain and ordinary meaning.” Pet. 11. Patent Owner does not propose any specific constructions. See Prelim. Resp. 4–5.8 We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” (emphasis added)) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any other claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Ex. 1003 ¶¶ 18–19. Petitioner provides no additional discussion on this disclosure, including how it satisfies the zinc flake coating limitation. See Pet. 15–17, 20. Petitioner’s sole citation to Dr. Haber’s declaration associated with this claim limitation is to paragraph 35, which provides the same claim chart as is in the Petition. See Pet. 17; Ex. 1009 ¶ 35.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,098,756 - 2985 LLC D/B/A Mountain Voyage Co. v. The Ridge Wallet, LLCInstitution deniedPTAB · Feb 18, 2025 · IPR2024-01264 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution of review of claims 1–24 as time-barred under § 315(b), and denied joinder as moot because the Shenzhen IPR had terminated.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barInstitution denied time barDenied
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” There is no dispute that Patent Owner served Petitioner with a complaint alleging infringement of the ’808 patent on March 15, 2023. See Mot. 2 (Mountain Voyage identifying March 15, 2023 as the date it was served with Patent Owner’s complaint in the United States District Court of Colorado). There is also no dispute that Mountain Voyage filed the instant Petition more than one year later on August 6, 2024. Pet. 91. Therefore, the evidence in this record shows that Mountain Voyage’s Petition was filed more than 1 year after the date on which Mountain Voyage was served with a complaint alleging infringement of the ’808 patent. Mountain Voyage relies on its request to join the Shenzhen IPR to avoid the time bar of 35 U.S.C. § 315(b). Mot. 1 (“This Motion for Joinder and the accompanying Instant Petition are timely being filed within one month of the decision to institute trial in the Shenzhen IPR.”). The Shenzhen IPR, however, has been terminated. Shenzhen IPR Termination 3–4. Thus, there no longer is a pending proceeding in the Shenzhen IPR for Petitioner to join. Accordingly, Petitioner’s request to join the Shenzhen IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b).” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Mountain Voyage relies on its request to join the Shenzhen IPR to avoid the time bar of 35 U.S.C. § 315(b). Mot. 1 (“This Motion for Joinder and the accompanying Instant Petition are timely being filed within one month of the decision to institute trial in the Shenzhen IPR.”). The Shenzhen IPR, however, has been terminated. Shenzhen IPR Termination 3–4. Thus, there no longer is a pending proceeding in the Shenzhen IPR for Petitioner to join. Accordingly, Petitioner’s request to join the Shenzhen IPR is moot, and the Petition is not timely under 35 U.S.C. § 315(b). III. CONCLUSION The Motion for Joinder is denied as moot because the Shenzhen IPR” slip op. at 8
Discretionary denialPatents in suitUS 10,791,808
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.