- PTAB · Jun 11, 2025 · IPR2025-00115 · APJ Annette R Reimers · IPR · Institution
Instituted review of claims 1–4, 10, 11, 14, 15, 17, 21, 22, 24, 26, 28–30, 32, 33, and 35 on all asserted grounds, based on a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Determination as to a Reasonable Likelihood of Prevailing Upon consideration of the arguments and evidence of record, we conclude, for the reasons provided above, that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1–4, 10, 11, 14, 15, 17, 21, and Wampler.” slip op. at 41
- BurdenDecided for patent owner
“With respect to Patent Owner’s assertions about word count limits, the Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019 (“Consolidated TPG”) states that “deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count, may lead to a party’s brief not being considered.” Consolidated TPG, 40 (citing Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015)). As the basis for denying the Petition, Patent Owner alleges “undue prejudice.” Prelim. Resp. 76. Patent Owner, however, did not raise with the Board, prior to filing its Preliminary Response, any concern with the manner in which Petitioner formatted its Petition. As a result, Patent Owner did not avail itself of the opportunity to seek relief to address any alleged undue prejudice short of denying the Petition through, for example, an increase in the word count for its own brief. See 37 C.F.R. § 42.24(a)(2). Under the circumstances alleged improper formatting.8” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1–2. We find, for purposes of the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’517 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In sum, Petitioner maintains a narrower construction of “magneto coupling” is correct, and alleges grounds of unpatentability based on both its narrower proposed construction (a construction encompassed by the broader construction), as well as based on the broader construction that Patent Owner does not dispute. We, therefore, find no merit to Patent Owner’s argument that Petitioner’s contention “contradicts itself” or fails to present a “prima facie obviousness position.” See Prelim. Resp. 3. Patent Owner does not dispute the broader construction applied by Petitioner, which encompasses the narrower construction Petitioner proposes. For purposes of this Decision, we apply the broader construction of “magneto coupling,” which encompasses generating a rotating field either by rotating magnets or by an electromagnet / stator.” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,674,517 - PTAB · Jun 11, 2025 · IPR2025-00116 · APJ John D Hamann · IPR · Institution
The Board instituted inter partes review on all challenged claims and all asserted grounds, finding a reasonable likelihood that Abbott would prove at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2024); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’077 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage, “Patent Owner takes no position regarding the appropriate level of skill for a person of ordinary skill in the art.” Prelim. Resp. 1. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 6. We view this definition for the level of ordinary skill as consistent with the ’077 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“axially adjacent.” In particular, Petitioner argues in connection with mapping cited art to challenged claims for the Wampler and Akamatsu asserted grounds that “a magnetic element sealed within a rotor is . . . ‘axially adjacent.’” Pet. 20 n.6. Petitioner fails to point to any intrinsic evidence to support this construction. Rather, Petitioner alleges that Patent Owner took this position in the parallel litigation in a chart mapping claim 1 to accused products. Id. (citing Ex. 1019,6 5–7). Petitioner does not explain how Patent Owner’s chart supports Petitioner’s construction here. See id. at 6 Petitioner identifies this exhibit as “Exhibit 13 of Complaint, dated November 27, 2023,” which comprises a claim chart mapping accused products to claim 1. when “a magnetic element [is] sealed within a rotor,” it necessarily means being “axially adjacent,” as Petitioner alleges. See Ex. 1019. Rather, we agree with Patent Owner that this chart instead labels product components that are adjacent to one another as measured along a central axis. Prelim. Resp. 21 (citing Ex. 1019, 6–7). In addition, we agree with Patent Owner that “[t]his [mapping] is in accordance with the plain and ordinary meaning of the claim terms and does not suggest that any component ‘sealed within’ another component would categorically be axially adjacent thereto.” Id. We note that Petitioner applies the plain and ordinary meaning of “axially adjacent” for other asserted grounds, arguing that components which are adjacent to one another along a central axis are “axially adjacent.” E.g., Pet. 55–57. Accordingly, we find, for purposes of this Decision, that the plain and ordinary meaning of “axially adjacent” is being adjacent to one another as measured along a central axis, and does not mean a magnetic element sealed within a rotor. Id. at 20. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“would have found it obvious to include Wampler’s “techniques related to its axially aligned inflow tube” in the HeartMateIII device taught by Bourque. Pet. 81–88. Petitioner argues that Wampler teaches an arrangement for which “[g]ood anatomic compatibility is possible . . . fitting well between the apex of the heart and the adjacent diaphragm.” Id. at 83 (quoting Ex. 1008 ¶ 76) (alterations in original). Petitioner reasons that applying Wampler’s arrangement to Bourque combines old elements performing known functions yielding expected results. Id. at 83–84. According to Petitioner, a person of ordinary skill in the art would have known from Wampler that an axial inflow, as taught by Wampler, would have improved blood flow for the device of Bourque by eliminating the flow restrictive elbow in Bourque. Id. at 84 (citing Ex. 1003 ¶¶ 648–649; Ex. 1007, 2; Ex. 1008 ¶¶ 75–76). Petitioner contends that Bourque recognized certain components, including inflow components, were the cause of clinical troubles, and that Wampler “taught how to eliminate these components that caused clinical troubles–using the inlet to also ‘serve[] as the inflow canula.’” Id. at 85–86 (citing Ex. 1003 ¶¶ 741–747; Ex. 1007, 1, 5; Ex. 1008 ¶¶ 75–76). Petitioner also argues that a person of ordinary skill in the art would have understood Wampler’s arrangement would have reduced “rates of infection” by avoiding placement of the pump in a preperitoneal pocket person of ordinary skill in the art “would have adhered to the express teachings of [Wampler], which focused on ‘[g]ood anatomic compatibility’ so that the device ‘fit[s] well between the apex of the heart and the adjacent diaphragm,’ eliminating the need for a peritoneal pocket dissection associated with increased rates of infection.” Id. at 86–87 (citing Ex. 1003 ¶¶ 651–654; Ex. 1008 ¶ 76) (second and third alterations in original). Petitioner reasons that a person of ordinary skill in the art would have had a reasonable expectation of success because the asserted combination of Bourque and Wampler “would ‘fit[] well between the apex of the heart and the adjacent diaphragm’ due to the pump’s ‘development as a compact’ device and the existence of several similar LVADs that fit well at that position.” Id. at 87 (citing Ex. 1003 ¶¶ 652–655; Ex. 1007, 5). Lastly, Petitioner argues that the asserted combination would have been obvious to try, because “there were a finite number (i.e., two) [of] options for LVAD implantation: the device would be implanted at a preperitoneal pocket, or at the cardiac apex.” Id. at 87–88 (citing Ex. 1003 ¶ 656). At this stage, we find Petitioner’s arguments persuasive, and find that Petitioner has provided sufficiently articulated reasoning with rational underpinning to support combining Wampler and Bourque’s teachings in the manner Petitioner does.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,754,077 - PTAB · Jun 10, 2025 · IPR2025-00114 · APJ Annette R Reimers · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7, 8, 11, 12, 14–16, and 18–20 on all petitioned grounds, finding a reasonable likelihood of unpatentability over Bourque and Wampler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’879 patent.” slip op. at 2
- BurdenMixed
“Decision we find “axially adjacent” to mean “adjacent to one another as measured along a central axis.” Petitioner does not contend or show in the Petition that Wampler teaches a magnetically driven rotor adjacent to a first magnetic device as measured along a central axis. See Pet. 24–26. In” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 7 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1. We find, for purposes of this appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’879 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Magnetic Device” and “Magnetically Driven Rotor” along a “Central Axis”. Ex. 1019, 6. We find nothing in Exhibit 1019 that defines “axially adjacent” to mean “a magnetic element sealed within a rotor,” as Petitioner alleges. In this regard, Patent Owner argues as follows: Exhibit 1019 contains no mention of “a magnetic element sealed within a rotor” or a contention that such a configuration would represent an “axially adjacent” orientation of such components. Instead, [in Exhibit 1019], Patent Owner illustrates a Petitioner product and labels components identified as the claimed magnetically driven rotor and first magnetic device that are adjacent to one another as measured along a central axis. [See Ex. 1019 at 5]. This is in accordance with the plain and ordinary meaning of the claim terms and does not suggest that any component “sealed within” another component would categorically be axially adjacent thereto.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,572,879 - PTAB · Jun 9, 2025 · IPR2025-00112 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on claims 1–3, 10, 11, 14, and 17 on all petitioned grounds, finding a reasonable likelihood of success on obviousness over Bourque and Wampler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’357 patent.” slip op. at 2
- BurdenDecided for petitioner
“4. Determination as to a Reasonable Likelihood of Prevailing Upon consideration of the arguments and evidence of record, we conclude, for the reasons provided above, that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1–3, 10, 11, 14, and 17 of the ’357 patent as obvious over Bourque and Wampler.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1. We find, for purposes of this appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’357 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“In sum, Petitioner maintains a narrower construction of “magneto coupling” is correct, and alleges grounds of unpatentability based on both its narrower proposed construction (a construction encompassed by the broader construction), as well as based on the broader construction that Patent Owner does not dispute. We, therefore, find no merit to Patent Owner’s argument that Petitioner’s contention “contradicts itself” or fails to present a “prima facie obviousness position.” See Prelim. Resp. 3. Patent Owner does not dispute the broader construction applied by Petitioner, which encompasses the narrower construction Petitioner proposes. For purposes of this Decision, we apply the broader construction of “magneto coupling,” which encompasses generating a rotating field either by rotating magnets or by an electromagnet / stator.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,351,357 - PTAB · Jun 6, 2025 · IPR2025-00113 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on claims 1–5, 10, 11, 14, 16, and 17, finding a reasonable likelihood that claims 1–5, 10, 11, 14, 16, and 17 are obvious over Bourque and Wampler.
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). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’415 patent.” slip op. at 2
- BurdenNot shown unpatentable
“Decision we find “axially adjacent” to mean “adjacent to one another as measured along a central axis.” Petitioner does not contend or show in the Petition that Wampler teaches a magnetically driven rotor adjacent to a first magnetic device as measured along a central axis. See Pet. 24–25. In opposition, Patent Owner argues, and we agree on the current record, as follows: Wampler does not teach or suggest “a magnetically driven rotor . . . axially adjacent to a first magnetic device” based on its imbedding of permanent magnets 88 in the impeller 74 because these components are not adjacent to one another as measured along the central axis of the device. Instead, the magnet segments 88 and impeller 74 are aligned with, and overlap, one another as measured along the central axis in Wampler’s configuration. See Ex. 1008, [where the magnet segments are housed within the impeller blades.] Prelim. Resp. 23 (citing Ex. 1008, ¶ 18, Figs. 3, 4, 7, 9, 11, 13, 15, 17, 19). We find Patent Owner’s arguments refuting Petitioner’s contention that the Challenged Claims would have been obvious over Wampler, alone, have substantial merit. We, therefore, turn to Petitioner’s contentions based on Bourque, in combination with Wampler, which instead rely on Bourque as teaching the “axially adjacent” limitation.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1. We find, for purposes of this appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’415 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We find insufficient support for Petitioner’s assertion that “a magnetic element sealed within a rotor is ‘axially adjacent.’” Pet. 24. Moreover, we find Patent Owner’s definition of the claim language reflects its plain and ordinary meaning and is consistent with the disclosure of the ’415 patent (which illustrates only a “magnetically driven rotor” positioned adjacent to a “first magnetic device” as measured along a central axis). See Ex. 1001, Fig. 2. It is also consistent with the construction Petitioner appears to contend is the correct construction, as applied by Petitioner in, for example, it’s contentions based on the asserted combination of Bourque and Wampler. See Pet. 60 (relying on Bourque’s teaching of a rotor and magnetic device adjacent to one another as measured along a central axis with regard to the “axially adjacent” limitation and not on Wampler’s magnets embedded in the impeller at the same location along a central axis). Accordingly, we find, for purposes of this Decision and based on the current record, that the plain and ordinary meaning of “axially adjacent,” as shown by Patent Owner, is “adjacent to one another as measured along a central axis,” and apply this definition to our analysis of Petitioner’s contentions below.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,376,415 - PTAB · Jun 3, 2025 · IPR2025-00216 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Thiel and Gruber.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2023); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’138 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“exercise of discretion under 35 U.S.C. § 325(d). Pet. 88–89; Prelim. Resp. 3–8. In evaluating these arguments, we use a two-part framework, with the first part being whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing eyewear and/or consumer electronics.” Pet. 22–23 (citing Ex. 1003 ¶ 28). Petitioner adds that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 23. Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’138 patent or identify any shortcoming in Petitioner’s formulation. See generally Prelim. Resp. level of skill for one of ordinary skill in the art. Pet. 22–23. We view this definition for the level of ordinary skill as consistent with the ’138 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Here, neither party sets forth any term for claim construction. Pet. 23–24; see Prelim. Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,487,138 - PTAB · May 19, 2025 · IPR2025-00096 · APJ James A Tartal · IPR · Institution
The Board instituted inter partes review of claims 1–7, 10, 12, and 13 on all petitioned grounds, finding a reasonable likelihood of prevailing on obviousness over Bourque and Wampler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’356 patent.” slip op. at 2
- BurdenInstituted
“Decision we find “at a position axially adjacent” to mean at a position “adjacent to one another as measured along a central axis.” Petitioner does not contend or show in the Petition that Wampler teaches a magnetically driven rotor coupled to a first magnetic device at a position adjacent to one another as measured along a central axis. See Pet. 26–28. In opposition, Patent Owner argues, and we agree on the current record, as follows: Wampler cannot teach or suggest a first magnetic device that is at a position axially adjacent to a magnetically driven rotor based on the positioning of its magnet segments 88 and impeller 74 because these components are not adjacent to one another as measured along the central axis of the device. Instead, the magnet segments 88 and impeller 74 are aligned with, and overlap, one another as measured along the central axis based on the disclosed configuration where the magnet segments are housed within the impeller blades.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1. We find, for purposes of this appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’356 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We find no sufficient support for Petitioner’s assertion that “a magnetic element sealed within a rotor is ‘at a position axially adjacent to the magnetically driven rotor.’” Pet. 26. Moreover, we find Patent Owner’s definition of the claim language reflects its plain and ordinary meaning and is consistent with the disclosure of the ’356 patent (which illustrates only a “magnetically driven rotor” positioned adjacent to a “first magnetic device” as measured along a central axis). See Ex. 1001 Fig. 2. It is also consistent with the construction Petitioner appears to contend is the correct construction, as applied by Petitioner in, for example, it’s contentions based on the asserted combination of Bourque and Wampler. See Pet. 61–62 (relying on Bourque’s teaching of a rotor and magnetic device adjacent to one another as measured along a central axis with regard to the “axially adjacent limitation” and not on Wampler’s magnets embedded in the impeller at the same location along a central axis). Accordingly, we find, for purposes of this Decision and based on the current record, that the plain and ordinary meaning of “at a position axially adjacent,” as shown by Patent Owner, is at a position “adjacent to one” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,351,356 - PTAB · Apr 30, 2025 · IPR2024-01493 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–15 and all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Bowen and Sunai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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) (2024); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’167 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent.” Pet. 20 (citing Ex. 1024 ¶ 25). Petitioner adds that “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Id. Patent Owner does not identify a level of skill in the art that one would have had at the time of the invention of the ’167 patent or identify any shortcoming in Petitioner’s formulation. Prelim. Resp. 18. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 20. We view this definition for the level of ordinary skill to be consistent with the ’167 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Here, neither party sets forth any term for claim construction. Pet. 17; see generally Prelim. Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Second, on this record we agree that one of ordinary skill in the art would have been motivated to substitute Sunai’s CoFeB layer for Bowen’s Fe layer to increase the tunnel magnetoresistance ratio (“TMR”) of Bowen’s MTJ. Pet. 24; Ex. 1055,9 2269–70 (“The benefit of using CoFeB” includes “a higher TMR value.”), 2270 (“[I]t is natural to replace both the free and pinned layers to CoFeB to further increase the TMR value.”); Ex. 105610 ¶ 39 (“[A]n amorphous layer comprised of a CoFeB alloy . . . exhibits a larger TMR ratio.”), ¶¶ 67–68 (“In the construction[,] . . . ferromagnetic layers 5, 7 are made of an FeCoB[11] . . . material containing B so as to have 9 Dexin Wang et al., 70% TMR at room temperature for SDT sandwich junctions with CoFeB as free and reference layers, 40 IEEE Trans. Magn. 2269–71 (July 2004). 10 US 2004/0136232 A1, published July 15, 2004. 11 We are persuaded by Dr. Bokor’s testimony that “a skilled artisan [would have] understood that CoFeB and FeCoB refer to the same alloy.” Ex. 1024 ¶ 121. ratio.”); Ex. 1024 ¶ 129. Moreover, as Petitioner explains, “[r]esearchers were . . . interested in optimizing MTJs to improve MRAM performance,” and “[h]igher TMRs long promised improved performance for MRAM.” Pet. 6 (citing Ex. 1026, 1655; Ex. 1045,12 1; Ex. 1049,13 186; Ex. 1024 ¶¶ 31, 36–44) (emphasis omitted). In addition, on this record we agree with Petitioner that Bowen and Sunai teach forming an MgO barrier layer and ferromagnetic alloy electrodes. Pet. 25–26 (citing Ex. 1026, 1655, Abstract; Ex. 1030 ¶¶ 24, 35; Ex. 1024 ¶ 126). And we also agree that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Bowen as forming electrodes with CoFeB alloys was known. Id. at 26.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,680,167 - PTAB · Apr 30, 2025 · IPR2024-01494 · APJ Justin T Arbes · IPR · Institution
The Board instituted review of claims 5, 6, and 9–20 on all asserted grounds after finding a reasonable likelihood that claim 5 would have been obvious over Bowen and Soukup.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and 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.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 5, 6, and 9–20 of the ’909 patent on all grounds of unpatentability asserted with respect to those claims in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments based on the current record. Dr. Bokor testifies that “as is evident from the TMR equation, . . . lowering the resistance (barrier height) for parallel spin electrons [(i.e., Rp)] compared to antiparallel [(i.e., Rap)] improved TMRs.” Ex. 1024 ¶ 169 (citing Ex. 1035, 3273) (emphasis added). Dr. Bokor’s testimony is consistent with the TMR equation above, which has Rp as the only term in the denominator, and reflects that Rp would be lowered disproportionally, or otherwise the TMR would not have “improved.” Id. It also appears to be supported by other evidence of record. See Ex. 1035, 3273 (noting the” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Finally, we note that, although Petitioner has made a sufficient showing with respect to obviousness, we are not persuaded by Petitioner’s inherency argument. See Pet. 36. Specifically, Petitioner has not established that a barrier height of 0.1–0.85 eV is necessarily present in, or the natural result of, a tunnel barrier layer having some amount of oxygen vacancy defects. See Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322, 1329 (Fed. Cir. 2020) (“When the prior art does not expressly disclose a claim limitation, ‘inherency may supply a missing claim limitation in an obviousness analysis.’ . . . Inherency is established in the context of obviousness when ‘the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art.’”). Petitioner points to the ’909 patent’s statement that “[w]hen there are oxygen vacancy defects, the potential barrier height of the MgO tunnel barrier is thought to decrease (such as in the range of 0.10 to 0.85 eV; more specifically, 0.2 to 0.5 eV), which is thought to result in an increase in the tunneling current.” Ex. 1017, col. 7, ll. 19–23; see Pet. 36. Bowen, however, has “oxygen vacancy defects” in its MgO layer and “[o]xygen vacancies are naturally present in every oxide” according to Petitioner, but Bowen discloses a barrier height of 0.9 eV, which is outside the claimed range (albeit only slightly). Pet. 13, 23–24. Thus, Bowen contradicts Petitioner’s assertion that a barrier height within the claimed range of 0.1–0.85 eV is inherent when there are oxygen vacancy defects.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19 (citing Ex. 1024 ¶ 25). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 17. Based on the record presented, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,968,909 - PTAB · Apr 21, 2025 · IPR2024-01447 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–4, finding a reasonable likelihood that claims 1–4 are obvious over at least Bowen and Sunai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’134 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 of the ’134 patent.” 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) 5 Nagahama, EP 1391942 A1, published February 25, 2004 (Ex. 1027, “Nagahama”). (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’134 patent and the asserted prior art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of Bowen and Sunai teaches limitation 1[e]. Petitioner asserts, as an initial matter, that a person of ordinary skill would have been motivated to combine Bowen with Sunai because “CoFeB was known to increase TMR compared to CoFe.” Pet. 35. Dr. Bokor provides supporting testimony relying, in part, on reported research publications. Ex. 1024 ¶ 135. For instance, Dr. Bokor refers to Cardoso, which reports that the use of CoFeB-based junctures had improved TMRs compared to CoFe-based junctions. See Ex. 1061, Abstract (“CoFe-based junctions (R x A ~ 500 Ω.μm2) have lower TMR (~35%) and larger Hf (~5–6 Oe) and Hc (~12–14 Oe) [compared to CoFeB-based junctions].”). Wang also discloses that the use of CoFeB offered benefits including “a higher TMR value.” Ex. 1055, 2269–70. Additionally, Hosomi discloses that when a “ferromagnetic layer” is “comprised of a CoFeB alloy,” it “exhibits a larger TMR ratio.” Ex. 1056 ¶ 39. At this juncture, because of this evidentiary support, we find persuasive Dr. Bokor’s testimony that one of ordinary skill in the art would have been motivated to use an CoFeB alloy as disclosed in Sunai in Bowen. Patent Owner argues the motivation to combine Sunai and Bowen is flawed because Sunai, Wang, and Hosomi disclose the use of amorphous CoFeB only and not CoFeB in a crystalline form. See Prelim. Resp. 25–26, 28–29. While Sunai, Wang, and Hosomi disclose the use of amorphous CoFeB, Petitioner relies on these references to only provide support that one of ordinary skill in the art would be motivated to use a CoFeB alloy because of enhanced TMR performance due to the alloy. See Pet. 35–37; Ex. 1024 ¶¶ 135–137. We find that, on this preliminary record, the evidence provides sufficient support for Petitioner’s assertion that one of ordinary skill in the art would have been motivated to use CoFeB as taught in Sunai in Bowen because Sunai, Wang, and Hosomi, as well as Cardoso, provide support that the use of CoFeB improved electrode performance. Petitioner separately asserts that it would have been obvious to one of ordinary skill in the art to then crystallize the CoFeB electrode of the combination, which we discuss in more detail below.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,405,134
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.