- Meta Platforms, Inc. v. Sitnet LLCAll claims unpatentablePTAB · Sep 8, 2025 · IPR2024-00529 · APJ Neil T Powell · IPR · Final written decision
Claims 1–9 and 20 are unpatentable as obvious; claims 10–19 are cancelled by adverse judgment after Patent Owner’s request.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in Computer or Electrical Engineering or equivalent discipline, and approximately two years’ experience in telecommunications or computer networking,” adding that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 9 (citing Ex. 1003 ¶¶ 45–46).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“proposed constructions, and determined that “event node” does not need construction. Ex. 2007, 5. In the Institution Decision, we agreed with the District Court that “event node” does not need construction, and we continue to do so here. See Inst. Dec. 8. Independent claim 1 recites “creating, by an event node server, an event node in a multi-dimensional personal information network, the event node corresponding to a situation,” “transmitting an invitation to establish a link with the event node server to the devices corresponding to each node in the projection formed in step (b),” “receiving a response from at least one of the devices from step (c) accepting the invitation to establish a link with the event node server,” and “establishing a link with each device accepting the invitation.” Ex. 1001, 33:21–35; see also PO Resp. 3 (emphasizing claim 1’s recitations that the “event node” is “in a multi-dimensional personal information network” and “correspond[s] to a situation.”). Claim 20 includes similar recitations related to the “event node.” Ex. 1001, 34:45–64. In view of this, we determine that the claim language itself provides sufficient meaning for the term “event node” and further construction is not necessary.9” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“event node.” Petitioner persuades us that Amidon’s architecture provides a social network (the recited “situational network”) and the social network conference within the social network is the event node. In particular, the evidence demonstrates that Amidon separately teaches a social network and a social network conference. For example, as Petitioner notes, Amidon suggests that a conference may include a subset of the users in its social network, such as “all users currently listening to the same song” or “a subset of a social network circuit related to a game when the subset includes three or more people.” Ex. 1005, 13:6514:3, 14:22–27; Pet. 20–22; see also Ex. 1005, 13:57–14:29. Therefore, Patent Owner’s argument that the social network conference is the social network (see Sur-reply 6–8), rather than the event node, does not persuasively address Petitioner’s contentions.10 Patent Owner’s argument that Amidon’s social network conference merely comprises a group of individuals communicating with each other so it cannot be an event node does not take into account that Amidon’s social network conference is also defined by a data structure, such as the data structure shown in Figure 3. See PO Resp. 7–10; Pet. 19–20; Reply 7–8. The parties do not dispute that Amidon’s social network conference is defined by a data structure. PO Resp. 11–13 (e.g., “Fig. 3 shows a database entry for a conference.”); Reply 7. We find persuasive Petitioner’s argument that “the conference itself (as defined by the stored data and accessible via window 200) is the claimed event node.” Reply 7. slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Weighing the Parties’ arguments and evidence, Petitioner persuades us that a person of ordinary skill in the art would have had motivation to configure Wong’s social network with an ad-hoc communication network like Gogic’s, as well as a reasonable expectation of success. As Petitioner argues, Gogic’s disclosure that the ad-hoc communication network “may allow emergency services to be more efficiently or more appropriately deployed” would have motivated adding such an ad-hoc communication network to Wong’s system. Pet. 48; Ex. 1007, 4:20–24. Additionally, contrary to Patent Owner’s arguments, Petitioner’s evidence demonstrates technical compatibility of the references’ disclosures. As Petitioner notes, Gogic discloses using its approach with a wide range of technologies, including “portable or desktop computers.” Ex. 1007, 4:46– 49; Pet. 48. Wong likewise discloses implementing its social network with a wide range of technologies, such as “laptops, desktops, handheld, personal digital assistants, personal digital assistants, [or] mobile telephones.” Ex. 1006 ¶ 17; Pet. 49. These disclosures show that a person of ordinary skill in the art would have had a reasonable expectation of success implementing Gogic’s method in Wong’s social network using, for example, desktop computers.11 Patent Owner recognizes that Gogic discloses implementing its system with desktop computers. PO Resp. 22. But Patent Owner contends that a person of ordinary skill in the art would not have known how to implement Gogic’s invention, such as its location determination, using desktop computers. Id. This argument does not recognize that, as a prior art patent, Gogic is presumed enabled, including its disclosure of using desktop computers to implement its system. Apple Inc. v. Corephotonics, Ltd., 861 F. App’x 443, 450 (Fed. Cir. 2021) (nonprecedential; inter partes review context); Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003). Patent Owner’s arguments and evidence do not rebut this presumption. For example, Dr. Rubin’s testimony that “from the descriptions and figures provided in Gogic it would suggest that location is determined via technologies specific to wireless networks and telecommunications” does not persuade us that Gogic fails to enable 11 Accordingly, Patent Owner’s argument about the difficulties of modifying Gogic to use Wong’s social network are inapposite. PO Resp. 24. implementing its approach with desktop computers, such as those used in Wong. Ex. 2009 ¶ 87 (emphasis added). To the extent Gogic suggested wireless technologies as a way to determine location, that does not detract from Gogic’s disclosure of using other technologies, including desktop computers, to implement its invention.” slip op. at 35
Patent outcomesUS 8,332,454 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,332,454 - Meta Platforms, Inc. v. Sitnet, LLCAll claims unpatentablePTAB · Sep 8, 2025 · IPR2024-00612 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 12–21 are unpatentable: claims 12, 14–19, and 21 as obvious over Amidon and Walsh; claim 13 with Shahine; and claim 20 with Shahine and Jones.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“proposed constructions, and determined that “event node” does not need construction. Ex. 2007, 5. In the Institution Decision, we agreed with the District Court that “event node” does not need construction, and we continue to do so here. See Inst. Dec. 11–12. As Patent Owner acknowledges, independent claim 12 recites “establishing an event node for the situation in a multi-dimensional personal information network.” PO Resp. 1. Claim 12 further recites “automatically connecting personal information aggregators corresponding to a plurality of individuals to the event node” and “aggregating information related to the situation received from the personal information aggregators connected through the situational network.” Ex. 1001, 33:54–56, 34:1–3 (emphasis added). In other words, the claim language itself provides sufficient meaning for the term “event node” and further construction is not necessary.9” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Patent Owner’s argument that Amidon’s social network conference merely comprises a group of individuals communicating with each other so it cannot be an event node does not take into account that Amidon’s social network conference is also defined by a data structure, such as the data structure shown in Figure 3. See PO Resp. 4–7; Pet. 16; Reply 7–8. The parties do not dispute that Amidon’s social network conference is defined by a data structure. PO Resp. 8–10 (e.g., “Fig. 3 shows a database entry for a conference.”); Reply 13. We find persuasive Petitioner’s argument that the social network conference “is an element created in Amidon’s network that facilitates communication between a group of individuals, defined by data.” Reply 8–9; see also id. at 13–14.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not challenge Petitioner’s definition. See generally PO Resp. In our Institution Decision, we adopted Petitioner’s proposed definition, finding it to be reasonable and commensurate with the problems and solutions disclosed in the prior art. Inst. Dec. 8–9. We continue to do so here.” slip op. at 10
Patent outcomesUS 8,249,932 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,249,932 - Ford Motor Company / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentablePTAB · Sep 3, 2025 · IPR2023-00763 · APJ Kristen L Droesch · IPR · Final written decision
Claims 7 and 11 were not shown unpatentable as obvious over Park and IEEE 802.16-2004 because the combination did not teach a claimed mobile device.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In summary, the extrinsic record shows that, in the context of wireless network communications using the IEEE 802.16 standard, a “mobile device” is distinct from and excludes a device that is “fixed” or “portable,” where a “mobile” device is described as a device that is mobile during wireless network communications, and a “fixed” or “portable” device is described as a device that is fixed or slowly moving during wireless network communications. See Ex. 1005 ¶ 11; Ex. 1025, 24, 34, 38, 45; Ex. 2025, 71. This understanding of a “mobile device” from the extrinsic record is consistent with the language of claim 7 which recites a mobile device configured for wireless network communications (e.g., receiving an identifier and a signal from a base station), and consistent with the ’450 Patent disclosure that repeatedly and consistently utilizes the term “mobile device.” Accordingly, based on the record, we construe “mobile device” as a device that is mobile during wireless network communications, and is not fixed or slowly moving during wireless network communications.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We do not agree with Petitioner’s arguments because, as explained above in Section III.B., we construe “mobile device” as a device that is mobile during wireless network communications, and is not fixed or slowly moving during wireless network communications. Thus, after having considered both parties’ arguments and the cited supporting evidence, we are not persuaded that the combination of Park and IEEE 802.16-2004, including the application of Park to WiBro’s teaching of stationary or slowly moving devices communicating using band AMC, teaches or suggests a “mobile device,” as properly construed, that is configured to perform the limitations recited in the body of claim 7.” slip op. at 36
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 37 C.F.R. § 42.123(a), a party may file a motion to submit supplemental information if the following requirements are met: (1) a request for authorization to file such motion must be made within one month of the date the trial was instituted; and (2) the supplemental information must be relevant to a claim for which trial has been instituted. In addition to these requirements, the Board considers the motion in light of its mandate under 37 C.F.R. § 42.1(b), i.e., “to secure the just, speedy, and inexpensive resolution of every proceeding.”” slip op. at 41
Patent outcomesUS 10,447,450 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - Ford Motor Company / General Motors LLC et al. v. Neo Wireless LLCNo claims unpatentablePTAB · Sep 3, 2025 · IPR2023-00962 · APJ Kristen L Droesch · IPR · Final written decision
Claims 7 and 11 were not shown unpatentable as obvious over Park and IEEE 802.16-2004 because the combination did not teach a mobile device as construed.
RulingsFinal written decision- Director reviewDirector review, grantedGranted
“Ford requested Director Review of the Institution Denial Decision, which was granted. Papers 18, 19. On March 22, 2024, the Director issued a Decision Vacating the Ford Institution Denial Decision as an improper extension of the “significant relationship,” as set forth in General Plastic and Valve, and remanding to the Board to issue a decision on institution that addresses the merits of the Petition. Paper 28 (“Director’s Decision”). In addition, the Director sua sponte granted Director Review of the GM and Nissan Institution Denial Decision and, on March 22, 2024, vacated and remanded the GM and Nissan Institution Denial Decision for the same reasons as those set forth in the Director’s Decision. GM and Nissan IPR, Papers 12, 16.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“On November 9, 2023, we denied institution under § 314(a), after considering the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential only as to Section II.B.4.i) (“General Plastic”), and expanded upon in Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve”). Paper 17 (“Ford Institution Denial Decision”). General Motors LLC and Nissan North America Inc. (“GM and Nissan”) filed a petition requesting inter partes review of claims 7 and 11 of the ’450 Patent and a motion for joinder with this proceeding. IPR2023- 00962 (“GM and Nissan IPR”), Papers 3, 4. On December 6, 2023, we denied institution under § 314(a) based on the petition filed in the GM and Nissan IPR after consideration of the factors set forth in General Plastic and Valve and denied the Motion for Joinder as moot on the basis of the Ford Institution Denial Decision. See GM and Nissan IPR, Paper 11 (“GM and Nissan Institution Denial Decision”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Subsequently, pursuant to 35 U.S.C. § 314, we instituted trial on September 11, 2024, as to all of the challenged claims and all of the grounds raised in the Petition. Paper 30 (“Institution Decision,” “Dec. on Inst.”). We also instituted trial and granted the Motion for Joinder in IPR2023- 00962. See GM and Nissan IPR, Paper 18.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Subsequently, pursuant to 35 U.S.C. § 314, we instituted trial on September 11, 2024, as to all of the challenged claims and all of the grounds raised in the Petition. Paper 30 (“Institution Decision,” “Dec. on Inst.”). We also instituted trial and granted the Motion for Joinder in IPR2023- 00962. See GM and Nissan IPR, Paper 18.” slip op. at 3
Patent outcomesUS 10,447,450 not shown unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - PTAB · Jul 29, 2025 · IPR2025-00404 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–17, 19, 26, 28–41, and 43–46 on both obviousness grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated 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 on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art at the time of the alleged invention “would have been someone with at least (1) a bachelor’s degree in electrical engineering, computer engineering/science, or a related scientific field, and (2) either (a) a master’s degree in electrical engineering, computer engineering/science, or a related field, or (b) two or more years of work or research experience in wireless networking and/or computing.” Pet. 13” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b) (2020). Petitioner identifies the term “client side modem functionality” in claim 5 for construction. Pet. 14. Patent Owner does not address the construction of this term. See Prelim. Resp. 4–6. We determine that we do not need to construe the term “client side modem functionality” for purposes of this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues that the terms “first communication technology,” “second communication technology,” and “third communication technology” should “be understood to have their plain meaning wherein each of these recited communication technologies is a different communication technology.” Prelim. Resp. 5. For purposes of this decision, we will apply Patent Owner’s understanding of these terms. However, we note that Patent Owner does not explain what it means by a “different” communication technology, or how to determine whether two communication technologies qualify as “different.” Id. at 5–6. The parties may wish to explore the meaning of this term further during the trial.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,413,502 - Google LLC v. Brodti Inc.InstitutedPTAB · Jul 24, 2025 · IPR2025-00472 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims 1, 10, and 19 are obvious over Nicholas, Laidlaw, Mayadas, and Error.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). 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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Considering the subject matter of the ’898 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1002 ¶¶ 9–12), we apply the level of skill set forth above.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner submits that all terms in the Challenged Claims should be given their plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required to resolve this case. Pet. 6 (“Petitioner does not believe express claim construction is necessary to resolve this Petition.”). Patent Owner has not submitted a preliminary response, and thus does not propose any terms for construction at this stage. In determining that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one Challenged Claim, we need not and do not construe expressly any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues the skilled artisan would have had various rational reasons for combining the teachings of these four references, and would have had a reasonable expectation of success in doing so. See, e.g., Pet. 18–21 (discussing reasons to combine Nicholas and Laidlaw and expectation of success in doing so), 33–37 (discussing reasons to combine Nicholas and Mayadas and expectation of success in doing so), 44–45 (discussing reasons to combine Nicholas, Laidlaw, Mayadas, and Error and expectation of success in doing so). Based on the record before us, we find Petitioner sufficiently shows that the combination of Nicholas, Laidlaw, Mayadas, and Error would have taught or at least fairly suggested to the skilled artisan the limitations of claim 1.4 Thus, for the reasons stated in the Petition (Pet. 8–51), we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that independent claim 1 would have been unpatentable as obvious over the combination of Nicholas, Laidlaw, Mayadas, and Error.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,416,898 - 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 · Jun 6, 2025 · IPR2024-01457 · APJ Stephen E Belisle · IPR · Institution
The Board instituted review of claims 1–11 on all petition grounds because Petitioner showed a reasonable likelihood of prevailing on obviousness over Huang for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). 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). Applying those standards, and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the Challenged Claims is unpatentable. Accordingly, we institute an inter partes review as to all Challenged Claims of the ’194 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Considering the subject matter of the ’194 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan (Ex. 1003 ¶ 48), we apply the level of skill set forth above.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner states that it “proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required because the prior art relied on in this Petition meets each of the claim terms under any reasonable construction.” Pet. 13. Patent Owner has not submitted a preliminary response, and thus does not propose any terms for construction at this stage. In determining that Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one Challenged Claim, we need not and do not construe expressly any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Pet. 34; see Ex. 1005, Fig. 2. Based on the record before us, we find Petitioner sufficiently shows that Huang teaches or at least fairly suggests to the skilled artisan each of remaining limitations [1.1] through [1.6.2] for the reasons set forth by Petitioner, as outlined below with reference to annotated Figure 2.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,148,194 - PTAB · Jun 6, 2025 · IPR2024-01456 · APJ Amber L Hagy · IPR · Institution
The Board instituted inter partes review of claims 1–3, 7–9, and 13–15 on all grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable over the cited art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’579 patent. We institute 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 proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not filed a preliminary response, and therefore Petitioner’s assessment is unchallenged at this stage. For purposes of this institution decision, and based on the present record including the disclosure in the ʼ579 patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 18). We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ579 patent and the prior art of record. 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).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states that it “proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required because the prior art relied on in this Petition meets each of the claim terms under any reasonable construction.” Pet. 17. As noted, Patent Owner has not submitted a preliminary response, and hence also does not propose any terms for construction at this stage. At this stage, and for purposes of this Decision, we determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We have reviewed the arguments and evidence submitted by Petitioner. At this stage, and on this record, we determine that Petitioner has shown sufficiently for institution that the prior art teaches or suggests these limitations.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,450,579 - Lululemon USA Inc. v. Nike, Inc.Some claims unpatentablePTAB · May 21, 2025 · IPR2024-00159 · APJ Carl M Defranco · IPR · Final written decision
Claims 8, 9, 14, 15, and 19 are unpatentable over Minami; claims 1–3, 7, 16–18, and 20 were not shown unpatentable over Good or Munsing.
RulingsFinal written decision- Skill levelSkill level board ownOther
“lululemon contends, and Nike does not dispute, that a person skilled in the art in the relevant time frame would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear” and such person’s “additional experience compensates for any differences in that person’s education as stated above.” Pet. 13–14 (citing Ex.1003 ¶¶ 33–35); see also PO Resp. 14 (“For purposes of this proceeding, Nike applies lululemon’s proposed level of skill in the art.”). We find that lululemon’s proposed definition is consistent with the problems and solutions described in the ’046 patent and the prior art of record. Thus, we adopt the parties’ agreed-upon definition of the level of skill in the art.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We are not persuaded by lululemon’s attempt to equate the term “channel” in that passage with an open-periphery configuration. Nowhere does that passage indicate that the “channel” has an open-periphery. Instead, lululemon merely presumes, without support, that channels are open-periphery structures. More accurately, the terms “tunnel” and “channel” in the passage cited by lululemon are used synonymously. That is made clear by the overall context of the ’046 patent at issue, which is directed to how tubular rib structures 126 are formed by “first” and “second” curved portions 416 and 418 that are “knitted together” to define “hollow tube 112.” See Ex. 1001, 10:16–11:14, Figs. 4, 5 (emphasis added). In particular, the sentence cited by lululemon describes hollow tube 112 as being “disposed between” first and second curved portions 416 and 418, which Figures 4 and 5 of the ’046 patent clearly depict in a closed-periphery configuration. See id. at 10:66–11:3, Figs. 4, 5. Moreover, the very next sentence expressly describes that hollow tube 112 has “a generally cylindrical or elliptical shape” wherein “[t]he diameter of one hollow tube and the diameter of other hollow tubes may differ in some embodiments.” Id. at 11:3–14 (emphases added). We are not aware of any open-periphery channels being described as having a cylindrical or elliptical shape, nor are we aware of such a channel being described as having a diameter. Thus, lululemon’s proposed claim construction ignores the context surrounding the ’046 patent’s description of the tubular rib structures when it describes them as having the configuration of a tunnel or channel.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Nike, given our construction of the claimed “tubular structures.” As shown in annotated Figures 1, 3, and 4 of Good (reproduced below), Good discloses a sock 12 having rib portions 22 (red) and webbed areas 24 (green). See PO Resp. 19. lululemon contends that Good’s rib portions 22 meet the claimed “tubular structures” because each rib portion 22 “roll[s] substantially together in the relaxed condition” and “has the shape of a tube, namely an elongate hollow structure.” Pet. 29–30. In support, lululemon points to Good’s Figure 3 (reproduced below center) as allegedly showing the tubular shape of Good’s rib portions 22. Id. at 30. Annotated Figure 3 is a vertical cross-section of rib portions 22 (red) shown in Good’s Figure 1. But, as Nike correctly notes, Good’s rib portions 22 are “C-shaped knitted portions,” which when stretched, go from an essentially C-shaped configuration (Figure 3) to a relatively flat, linear configuration (Figure 4). PO Resp. 19–20 (citing Ex. 2006 ¶¶ 48–49). Nowhere does Good disclose that the ends of C-shaped rib portions 22 ever meet and remain in a closed periphery configuration to form a hollow tube per our construction of “tubular structures” (as discussed above in Section II.B). In at least this way, Good’s C-shaped rib portions 22 differ from the claimed “tubular structures.”7 Thus, we find that Good does not disclose or otherwise suggest the claimed “tubular structures,” as properly construed, meaning that lululemon fails to demonstrate, by a preponderance of the evidence, that Good either anticipates claims 1–3, 7, 16–18, and 20, or, alternatively, renders obvious claim 3.” slip op. at 16
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In our Institution Decision, we said that Munsing lacks the claimed “tubular structures” because “nowhere does Munsing indicate that the rows of stitches or loops form a rib that is tubular-like, let alone one with a closed periphery.” Inst. Dec. 10–12. During the trial phase, lululemon’s expert likewise agreed, conceding (on cross-examination) that Munsing only discloses non-tubular structures. See Ex. 2007, 40:9–41:11 (“Q [by Patent Owner’s counsel]: So you agree that . . . Munsing only discloses a nontubular rib? A [by lululemon’s expert]: That’s what I said.”). Nowhere does lululemon rebut that admission by its own expert, despite Nike noting it explicitly as a reason for rejecting Ground 2. Compare PO Resp. 25–26 (noting the admission of lululemon’s expert), with Pet. Reply 1–26 (addressing only Grounds 1 and 3, while omitting any mention of Ground 2, which is based on Munsing). Nor does lululemon ever dispute the preliminary findings in our Institution Decision as to why Munsing is not an anticipatory reference. Compare Inst. Dec. 10–12, with Pet. Reply 1–22. Thus, lululemon fails to demonstrate, by a preponderance of the evidence, that Munsing anticipates challenged claims 1–3, 7, 17, 18, and 20.” slip op. at 18
Patent outcomesUS 9,375,046 mixedClaim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,375,046
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.