- PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’078 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] 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). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,395,078 - Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentablePTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner
“Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43
Patent outcomesUS 9,865,135 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,865,135 - PTAB · Feb 6, 2025 · IPR2024-01212 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR of claims 1–27 on all petitioned grounds after finding a reasonable likelihood that claim 1 would be obvious over Racz, Fitz, and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314. 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). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a). After considering the evidence and arguments presented in the Petition, we determine that Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’664 patent is unpatentable. Accordingly, we institute an inter partes review as to all the challenged claims of the ’664 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, the relevant technical field is “‘thermal ablation systems and methods,’ which includes ‘methods for performing Radio Frequency (RF) neurotomy.”’ Pet. 11 (citing Ex. 1003, 1:24–27). Relying on the testimony of Dr. Tucker, Petitioner contends that the ordinarily skilled artisan in this field would have had at least (i) a bachelor’s degree in biomedical engineering, or a related field, such as mechanical engineering, biomechanical engineering, or bioengineering, who also has at least 3 years of experience with thermal ablation system and methods; or (ii) an advanced degree in the same areas of academic study with at least 1 years of experience with thermal ablation systems and methods. Id. (citing Ex. 1034 ¶ 105) (paragraphing added). Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears consistent with the prior art and is supported by the presently unopposed testimony of Dr. Tucker. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself). We note, however, that Petitioner’s open-ended language “at least” expands the ranges of education and experience indefinitely with no upper bound, thereby encompassing those of extraordinary skill. Therefore, we do not adopt this aspect of Petitioner’s formulation. B.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Claim Construction The Board interprets claim terms in an inter partes review using the same claim construction standard that is used to construe claims in a civil action in federal district court. See 37 C.F.R. § 42.100(b)). In construing claims, district courts give claims their ordinary and customary meaning, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). With respect to the challenged claims, Petitioner contends that no claim term requires express construction. Pet. 11 (citing Ex. 1034 ¶ 106 (Dr. Tucker’s testimony that “the terms in the Challenged Claims would be understood by a POSA to have their plain and ordinary meaning and do not require a special construction or definition”)). On the presents record, we agree with Petitioner that no term requires express construction. C.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“through [1e]. Pet. 28–30. Petitioner further relies on “Racz as modified in view of Fitz and Lee,” with respect to elements [1e] through [1h]. See generally, id. at 30–47. Supported by the testimony of Dr. Tucker, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Racz, Fitz, and Lee with a reasonable expectation of success of arriving at the claimed invention. Id. at 1–6, 21–27; Ex. 1034 ¶¶ 132–149. In short, Petitioner contends that “[m]ost of the recited RF needle features—including an elongate cannula, a removable RF probe, a conductive tip, and a monopolar configuration—are conventional features disclosed in . . . Racz,” whereas Fitz discloses that a single-tip device, such as disclosed in Racz, “would produce limited ablation volumes and would have motivated a POSA to solve this problem by adding deployable filaments,” as recited in claim elements [1e] and [1f]. Id. at 4–5, 21–22. In addition to its reliance on the multiple electrode tips disclosed in Fitz, Petitioner contends that Lee would have “motivate[ed] a POSA to implement deployable filaments on the tip of Racz’s device using channels within the cannula,” and “also shows how the filaments can extend outwardly around the needle’s tip to advantageously expand and control the ablation volume.” Id. at 5–6. Accordingly, Petitioner contends, one of ordinary skill in the art “would have found it obvious to modify Racz’s device to include the well-known deployable filaments described in Fitz and Lee,” and would have implemented this combination as “a matter of routine engineering.” Id. at 6, 27.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,925,664 - PTAB · Feb 6, 2025 · IPR2024-01211 · APJ John G New · IPR · Institution
The Board instituted IPR on claims 18–47 and 53–74 and all petition grounds, finding a reasonable likelihood that claims 18–25, 27, and 29–33 are obvious over Racz, Fitz, and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314. 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). Further, a decision to institute may not do so on fewer than all of the claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yesor-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears to be consistent with the level of skill of the prior art and is supported by the presently unopposed testimony of Dr. Tucker. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself). We note, however, that the open-ended language ‘at least’ expands the ranges of education and experience indefinitely with no upper bound, thereby also encompassing those of extraordinary skill as well. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to the challenged claims, Petitioner contends that no claim term requires express construction. Pet. 11 (citing Ex. 1033 ¶ 120 (Dr. Tucker’s testimony that “the terms in the Challenged Claims would be understood by a POSA to have their plain and ordinary meaning and do not require a special construction or definition”)). We agree with Petitioner that, on the record presently before us, no claim term requires express construction.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that, in view of these teachings in Racz and Lee, a skilled artisan would have found implementing Lee’s perimeter filaments (22/1622) on Racz’s distal tip (14/38) to be a routine engineering task. Pet. 39 (citing Ex. 1033 ¶ 179). According to Petitioner, a person of ordinary skill in the arts would have recognized that it would be appropriate to implement Lee’s perimeter filaments (22/1622) without including Lee’s central filament. Id. Petitioner asserts that Lee discloses that any number and arrangement of filaments may be implemented to provide a desired ablation volume. Id. at 38 (citing Ex. 1010 ¶¶ 103, 105, 106). Additionally, Petitioner argues, because Racz’s tip (14/38) is already active, a skilled artisan would have recognized that Lee’s central filament would not be necessary. Id. (citing Ex. 1009, col. 3, ll. 60–63, col. 4, ll. 18–23; Ex. 1033 ¶ 179). Petitioner therefore argues that a person of ordinary skill in the art a person of ordinary skill in the art would have been motivated to implement Lee’s perimeter deployable filaments (22/1622) on the distal tip (14/38) of Racz’s cannula (10/33) for the purpose of expanding and controlling the energy coverage area of Racz’s device. Pet. 40. Specifically, Petitioner asserts that a skilled artisan would have been motivated to implement Lee’s perimeter filaments (22/1622) around Racz’s tip (14/38) to provide a desired ablation volume (e.g., in a full or partial “cone” shape) and omit Lee’s central filament. Pet. 38 (citing Ex. 1033 ¶¶ 179, 73–75, 79–83). Petitioner contends that, as both Lee and Fitz confirm, this would improve Racz’s device by providing an expanded and controlled energy coverage area. Id. (citing Ex. 1011 ¶¶ 9–10, Abstr.; Ex. 1010 ¶¶ 12, 84, 123–131; Ex. 1033 ¶ 179). Petitioner argues further that, in implementing Lee’s perimeter filaments (22/1622) on Racz’s distal tip (14/38), a person of ordinary skill in the art would have found it obvious to modify Racz’s tip (14/38) to include internal deflection surfaces (12/1612) (e.g., channels and ramps as disclosed in Lee) to guide the perimeter filaments (22/1622) outwardly around Racz’s tip (14/38). Pet. 41 (citing Ex. 1010 ¶¶ 16, 18, 92, 102, claims 8, 10; Ex. 1033 ¶ 180). Petitioner asserts that it would have been obvious to provide openings in Racz’s distal tip (14/38) (e.g., in communication the internal deflection surfaces as disclosed in Lee) such that Lee’s perimeter filaments (22/1622) can, when deployed, exit Racz’s distal tip (14/38). Id. (citing Ex. 1010 ¶ 92, 102; Ex. 1033 ¶ 180). Furthermore, argues Petitioner, and to preserve the functionality of Racz’s removable electrical probe (22/52) and active tip (14/38) (and consistent with Lee’s teachings) a skilled artisan would have arranged the perimeter filaments, channels, and ramps around the internal perimeter of Racz’s cannula (10/33). Pet. 41 (citing Ex. 1010 ¶¶ 91, 92, 98, 102; Ex. 1033 ¶ 181). Petitioner recapitulates that Racz’s probe (22/52) is configured to extend the full length of the cannula’s shaft (12/34) to supply RF energy to the tip (14/38) and measure tissue temperature. Pet. 42. According to Petitioner, by omitting Lee’s central filament and arranging the perimeter filaments, channels, and ramps around the inner perimeter of Racz’s cannula (10/33), a skilled artisan could have implemented Lee’s perimeter filaments (22/1622) without obstructing Racz’s cannula (10/33). Id. at 40. Petitioner contends that this modification would preserve the functionality of Racz’s electrical probe (22/52), which is needed to transmit RF energy. Id. (citing Ex. 1033 ¶ 181–182).” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,736,688 - PTAB · Feb 6, 2025 · IPR2024-01210 · APJ John G New · IPR · Institution
The Board instituted IPR on claims 1–17 and 48–52 on all asserted grounds, finding a reasonable likelihood that at least one claim was obvious over Racz, Fitz, and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314. 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). Further, a decision to institute may not do so on fewer than all of the claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yesor-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears to be consistent with the level of skill of the prior art and is supported by the presently unopposed testimony of Dr. Tucker. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself). We note, however, that the open-ended language ‘at least’ expands the ranges of education and experience indefinitely with no upper bound, thereby also encompassing those of extraordinary skill as well. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to the challenged claims, Petitioner contends that no claim term requires express construction. Pet. 11 (citing Ex. 1032 ¶ 120 (Dr. Tucker’s testimony that “the terms in the Challenged Claims would be understood by a POSA to have their plain and ordinary meaning and do not require a special construction or definition”)). We agree with Petitioner that, on the record presently before us, no claim term requires express construction.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“person of ordinary skill in the art would have been motivated to implement Lee’s perimeter deployable filaments (22/1622) on the distal tip (14/38) of Racz’s cannula (10/33) for the purpose of expanding and controlling the energy coverage area of Racz’s device. Pet. 35. Specifically, Petitioner asserts that a skilled artisan would have been motivated to implement Lee’s perimeter filaments (22/1622) around Racz’s tip (14/38) to provide a desired ablation volume (e.g., in a full or partial “cone” shape) and omit Lee’s central filament. Pet. 38 (citing Ex. 1032 ¶¶ 179, 73–75, 79–83). Petitioner contends that, as both Lee and Fitz confirm, this would improve Racz’s device by providing an expanded and controlled energy coverage area. Id. (citing Ex. 1011 ¶¶ 9–10, Abstr.; Ex. 1010 ¶¶ 12, 84, 123–131; Ex. 1032 ¶ 179). Petitioner argues further that, in implementing Lee’s perimeter filaments (22/1622) on Racz’s distal tip (14/38), a person of ordinary skill in the art would have found it obvious to modify Racz’s tip (14/38) to include internal deflection surfaces (12/1612) (e.g., channels and ramps as disclosed in Lee) to guide the perimeter filaments (22/1622) outwardly around Racz’s tip (14/38). Pet. 39 (citing Ex. 1010 ¶¶ 16, 18, 92, 102, claims 8, 10; Ex. 1032 ¶ 180). Petitioner asserts that it would have been obvious to provide openings in Racz’s distal tip (14/38) (e.g., in communication the internal deflection surfaces as disclosed in Lee) such that Lee’s perimeter filaments (22/1622) can, when deployed, exit Racz’s distal tip (14/38). Id. (citing Ex. 1010 ¶ 92, 102; Ex. 1032 ¶ 180).” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,736,688 - PTAB · Feb 6, 2025 · IPR2024-01209 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–27 and all petition grounds, finding a reasonable likelihood that at least one claim is obvious over Racz, Fitz, and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“314. 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). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears consistent with the prior art and is supported by the presently unopposed testimony of Dr. Tucker. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself). We note, however, that Petitioner’s open-ended language “at least” expands the ranges of education and experience indefinitely with no upper bound, thereby encompassing those of extraordinary skill. Therefore, we do not adopt this aspect of Petitioner’s formulation. B.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“With respect to the challenged claims, Petitioner contends that no claim term requires express construction. Pet. 11 (citing Ex. 1031 ¶ 106 (Dr. Tucker’s testimony that “the terms in the Challenged Claims would be understood by a POSA to have their plain and ordinary meaning and do not require a special construction or definition”)). On the presents record, we agree with Petitioner that no term requires express construction.” slip op. at 12
Claim constructioncites Phillips · KSRPatents in suitUS 10,966,782 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Cerence Operating CompanyInstitutedPTAB · Jan 31, 2025 · IPR2024-01267 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Arai and Fenwick.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation in Exhibit 1020 satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor before determining that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation. In light of Petitioner’s stipulation, Patent Owner’s request is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“any evidence of objective indicia of nonobviousness. We conclude that on balance, considering the record presently before us, Petitioner has established a reasonable likelihood of showing that the differences between the subject matter of claim 1 and the teachings of Arai and Fenwick are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. e. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Arai and Fenwick teaches or suggests each element of claim 1 of the ’428 patent. See 35 U.S.C. § 314(a).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’428 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Relying on the Declaration of Jean Renard Ward, Petitioner contends that “[a] POSITA would have been motivated to incorporate[] Fenwick’s teachings regarding automatically sending recognized words to an application into Arai because this would have furthered Arai’s purpose of having a natural, uninterrupted flow in entering characters without having to press extra keys.” Pet. 31–32 (citing Ex. 1002 ¶ 139). Petitioner concludes that the combination would have been obvious in that it would apply Fenwick’s known technique for recognizing words without additional user confirmation to Arai’s known method of performing handwriting recognition, ready for improvement, to yield the predictable result of the Arai/Fenwick combination: “recognition results are sent to an application without further user confirmation—e.g., pressing the Enter Key—and handwritten character recognition results are removed from the temporary memory such as RAM when the recognition results are sent to the application.” Id. at 32 (citing Ex. 1002 ¶ 140).” slip op. at 18
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,026,428 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’993 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993 - PTAB · Jan 29, 2025 · PGR2024-00043 · APJ John G New · PGR · Institution
The Board instituted PGR on all challenged claims, finding a sufficient likelihood that claims are anticipated or obvious under Grounds 1–10; it found Ground 11’s enablement challenge insufficient.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324, the Board “may not authorize a post-grant review to be instituted unless … the information presented in the petition … if such information is not rebutted would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” For the reasons we explain below, we institute post-grant review of the ’943 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“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 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“priority benefit of the ’720 provisional application (at top center). See Ex. 1001, code (60) (listing “provisional application No. 5,995,873, filed on Oct. 2, 2006”). However, simply to claim the priority benefit of an earlier application is not necessarily to receive it. See In re NTP, Inc., 654 F.3d 1268, 1276 (Fed. Cir. 2011) (holding that “a patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority.… Rather, for a patent’s claims to be entitled to an earlier priority date, the patentee must demonstrate that the claims meet the requirements of 35 U.S.C. § 120.”). As the diagram shows (and as we have verified), the ’529 application was a continuation-in-part of the preceding ’329 application. See Ex. 1001, code (63). However, the ’529 application was abandoned on February 10, 2016 (See Ex. 1052), and the succeeding application, U.S. Patent Application Ser. No. 15,474,875 (the “’875 application”) which is listed in the ’943 patent as being a continuation-in-part of the ’529 application, was not filed until March 30, 2017. See Ex. 1001, code (63) (stating that “said application No. 15/474,875 is a continuation-in-part of application No. 12/508,529”). Put simply, the ’875 application was not filed until over a year after the ’529 application was abandoned. As 35 U.S.C. § 120 states, in relevant part: An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385, which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. (emphasis added). In other words, if there is a “break in the chain” of priority caused by the abandonment or termination of an application claiming priority prior to filing of a subsequent application, the subsequent application loses the priority benefit of the abandoned or terminated application, as well as the priority benefit of all applications that antedate that abandoned or terminated application. Such is the case presently before us. Based on the current record, we are persuaded that the abandonment of the ’529 application prior to filing of the continuation-in-part ’875 application broke the priority chain leading to the ’720 provisional application, and the ’943 patent cannot, therefore, claim the priority benefit of the ’720 provisional application’s October 2, 2006 filing date. Consequently, the earliest date of which the ’943 patent could possibly claim the priority benefit is that of U.S. Patent Provisional Application Ser. No. 61/403,680 (the “’680 provisional application”) (located at the top of the left branch of the “family tree” depicted above), which has a filing date of September 20, 2010. See Ex. 1001, code (60). Burnett (i.e., the ’329 application) was filed on October 2, 2007 and thus antedates the ’680 provisional application. Consequently, Patent Owner’s argument fails based on the current record, and Burnett is prior art to the ’943 patent.” slip op. at 55
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner’s request that we exercise our discretion under § 325(d) is not tenable. In deciding whether to exercise our discretion under § 325(d) in situations where only some of the challenges fall within its scope, we evaluate the challenges and determine whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting on all challenges. If so, the panel will evaluate whether the entire petition should be denied.” See USPTO, SAS Q&As (June 5, 2018) at D1, available at: https://www.uspto.gov/sites/default/files/ documents/ sas_qas_20180605.pdf; see also Kansas State Univ. Res. Found., PGR2022- 00021, Paper 11 at 7–8 & n.3 (Vidal Feb. 24, 2023) (holding that “the Board will further evaluate … whether § 325(d) is sufficiently implicated that its statutory purpose would be undermined by instituting review on all challenges presented in the Petition”). We having instituted post grant review based at least upon claim 1 of Ground 1 of the Petition. Even if the panel agreed with Patent Owner that Grounds 5–8 present “the same or substantially the same prior art or arguments” previously presented to the Office, § 325(d) would not be “sufficiently implicated” due to the 7 other asserted grounds. We therefore do not proceed with the § 325(d) analysis established in Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) and decline to exercise our discretion to deny the petition on that basis.” slip op. at 41
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites Phillips · KSRPatents in suitUS 11,844,943 - PTAB · Jan 29, 2025 · IPR2024-01174 · APJ Susan L C Mitchell · IPR · Institution
The Board instituted IPR on claims 1–8 and 10–23, finding a reasonable likelihood that claims 1, 3, 4, and 8 are unpatentable, including over Lesniak-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We determine that the first part of the Advanced Bionics framework is satisfied. Although the Examiner did not specifically apply Lesniak, Phinney, or Sturgis to the grounds of rejection for ’706 patent application, the Examiner considered these references as evidenced on the face of the ’706 patent indicating these were cited references, as well as by the Information Disclosure Statement that listed these three references. See Ex. 1001, code (56); Ex. 2001, 287, 297, 304. Various combinations of these references are asserted in six of the nine grounds before us in this proceeding. Therefore, we determine that same or substantially the same art previously was presented to the Office.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“summarized above, we determine that the information presented in the Petition establishes that Petitioner has shown sufficiently a reasonable likelihood of succeeding with respect to at least claims 1, 3, 4, and 8 challenged in Grounds I through IV.2 We are persuaded, based on the current record, that persons of ordinary skill in the art would have been motivated to make the different combinations of Lesniak, Phinney, Lamb, Bianchi ’518, Bianchi ’254 and Anconi for Grounds I through IV to arrive at the deodorant stick of at least claims 1, 3, 4, and 8 with a reasonable expectation of success. Below, we discuss how Petitioner has shown a reasonable likelihood of success that the teachings of Lesniak for claim 1 and the various combinations of Grounds II through IV would render obvious claims 3, 4, and 8, representative claims for these grounds.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“rational motivation to combine, supported by Dr. Michniak-Kohn’s testimony, stating that Lesniak and Phinney are in the same field of endeavor as the ’706 patent—personal care compositions, including deodorant and/or antiperspirant sticks, that contain known antimicrobials and focus on the use of natural ingredients. Pet. 25 (citing Ex. 1001, Abstract, 1:26–44, 14:32– 60; 17:58–12, 18:65–26:36; Ex. 1003, Abstract, Title, 1:16–35, 3:39, 4:22, 4:61–67; 5:5–31, 8:43–46, 9:45, 10:27–33; Ex. 1004, Abstract, Title, 1:5–9, 5:52–60, 6:1–34, 8:40–44; Ex. 1002 ¶ 80). Petitioner points to Phinney’s teaching that that “’a mixture of the hydroxides of zinc and magnesium could provide long lasting protection against odour due to perspiration,’” versus using zinc oxide alone, which was less effective “due to insolubility and low hydrolysis rate to a hydroxide form that could show some activity.” Pet. 25–26 (citing Ex. 1004, 1:12–22, 2:33–37; 5:64–66, 5:48–49; Ex. 1002 ¶ 82); see Ex. 1002 ¶ 77.” slip op. at 32
- Expert testimonyPetitioner expert creditedOther
“Dr. Michniak-Kohn testifies that “a POSA would have been motivated to incorporate magnesium hydroxide into Lesniak’s composition following Phinney’s guidance, as this combination would improve odor protection while maintaining the ‘natural’ composition intended by Lesniak.” Ex. 1002 ¶ 77. Dr. Michniak-Kohn also testifies that “a POSA would have appreciated that deodorant compositions could be formed through various combinations of known ingredients, such as antimicrobials, as simple design choices.” Id. ¶ 79. We credit Dr. Michniak-Kohn’s testimony here as supported by the record before us at this stage of the proceeding. On the record before us, we determine that Petitioner has shown sufficiently a reason to combine the teachings of Lesniak and Phinney to arrive at claim 3.” slip op. at 33
§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,497,706
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.