- PTAB · Mar 27, 2025 · IPR2024-01451 · APJ Erica A Franklin · IPR · Institution
The Board instituted review of claims 1–19 on all petition grounds, finding a reasonable likelihood that claim 1 would have been obvious over Larson alone.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“of whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). Rather, when considering the Fintiv factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, factors one and six are neutral, factors two and three weigh against discretionary denial, and factors four and five favor denial. We assign less weight to the existence of an overlap in asserted claims and prior art, in view of there being no trial date scheduled in the District Court case and no persuasive evidence that the court’s trial date would be expected to be significantly before the due date of our Final Written Decision. Therefore, after weighing all of the factors, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage in the proceeding, Patent Owner does not dispute Petitioner’s description of the person of ordinary skill in the art. Prelim. Resp. 27. In view of this, and because Petitioner’s uncontested description of one of ordinary skill in the art is reasonable and consistent with the ’921 patent and the cited art, we adopt Petitioner’s definition for purposes of this Decision. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. Therefore, we do not apply this aspect of Petitioner’s formulation.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that there is no need to expressly construe any claim term to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 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))). To the extent that any discussion regarding the scope of a claim term is relevant to our decision, we address that issue in our analysis of the asserted grounds of unpatentability.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Owner that Petitioner has not demonstrated sufficiently in the Petition, for purposes of institution, that all of the portions of Saxonov relied upon in the Petition are prior art. In particular, we determine that Petitioner has not established that the disputed portions of Saxonov are entitled to claim the benefit of the ’013 provisional filing date because Petitioner has failed to satisfy the second condition for this benefit, i.e., by showing that the provisional application provides sufficient support for certain subject matter in Saxonov relied upon for prior art purposes in the Petition.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,827,921 - PTAB · Mar 19, 2025 · IPR2024-01289 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7, 11–15, 17, 19, and 27–29 were unpatentable over Cantor, Cantor and Armani, or Frisen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’022 patent is unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not argue that any claim term requires construction. Pet. 20. Likewise, Patent Owner takes the position that “no claim terms require explicit construction” for purposes of determining whether to institute inter partes review. Prelim. Resp. 20. We determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest the level of ordinary skill in the art set forth in the Petition. Prelim. Resp. 20. Because Petitioner’s unopposed definition is consistent with the ’022 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In particular, we agree with Patent Owner that “[n]ot only does Cantor not teach contacting a ‘tissue sample’ with beads, but Cantor comes nowhere close to suggesting that its beads could be contacted with a tissue sample to identify spatial location.” Prelim. Resp. 50. Here, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from biological material and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 17. More specifically, “nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Thus, these types of “bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples.” Id. at ¶ 17. While we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 39, citing to Dr. Puglisi, Ex. 1100 ¶¶ 65– 66), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mentions of “tissue” made in Cantor are in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue sample itself. Incidental to the parties’ dispute is whether Petitioner’s reliance on and characterization of Cantor’s use of the terms “sample” and “nucleic acid sample” as equivalent in meaning to “tissue sample” recited in the challenged claims is persuasive. Pet. 21 (citing Ex. 1031, 6). Here, we note that Cantor discloses that “[s]ample nucleic acid may be derived from one or more samples or sources.” Ex. 1031, 5; Ex. 2002 ¶¶ 35, 149. Cantor refers to “sample” as the thing that contains the sample nucleic acid. Ex. 1031, 5. For example, Cantor discloses that “[a] sample may be collected from an organism.” Ex. 1031, 6; Ex. 2002 ¶ 42. When a “sample” comes from a living (or formerly living) source, Cantor refers to that sample as a “biological sample,” which can “be in any form, including without limitation a solid material such as a tissue, cells, a cell pellet, a cell extract, or a biopsy, or a biological fluid . . . .” Id. Those samples, however, are further processed in bulk to obtain the nucleic acid sample. For example, Cantor discloses that the “sample nucleic acid may be a result of nucleic acid purification or isolation and/or amplification of nucleic acid molecules from the sample.” Ex. 1031, 7; see also id. at 54 (The “sample nucleic acid” is derived from a sample or source “by any means commonly known in the art, including but not limited to cell lysis procedures using chemical, physical or electrolytic lysis methods.”); Ex. 2002 ¶ 39. In view of the above, we are not persuaded by Petitioner’s attempts to characterize Cantor’s “nucleic acid sample” as synonymous to “tissue sample” recited in the challenged claims. Rather, we agree with Dr. Cantor that “[a] tissue is simply the source of the sample nucleic acid used in [Cantor’s] methods”—it is not the sample nucleic acid itself. Ex. 2002 ¶¶ 36, 150. Petitioner does not direct us to any persuasive evidence to the contrary.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,480,022 - PTAB · Mar 18, 2025 · IPR2024-01378 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1–10 on all petitioned grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2021).” slip op. at 2
- BurdenInstituted
“In sum, Patent Owner asserts that the precise teachings of the asserted secondary references do not amount to detecting electrical conduction through the posterior tibial nerve. That argument does not consider that Petitioner relies on a combination in which Svihra’s approach is modified by the secondary references such that Svihra’s stimulation of the PTN is detected and used to automatically control the stimulation parameters. Pet. 21–28. As discussed, we view the references’ disclosures as supporting Petitioner’s contentions. f. Summary We conclude that Petitioner has identified sufficient reason that skilled artisans would have modified Svihra’s approach to incorporate the systems and techniques of Mann, DiLorenzo, Gerber, and Bourget, and that the asserted combination renders obvious claim 1’s limitations. Accordingly, this ground supports institution.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had an undergraduate degree in the field of biomedical engineering, or a related discipline, such as electrical engineering, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could substitute for a formal degree and vice versa.” Pet. 14 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute Petitioner’s proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no terms require construction for purposes of this Petition.” Pet. 14. Patent Owner does not contest Petitioner’s argument. See generally Prelim. Resp. We agree and do not expressly construe any terms at this stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Should either party believe that a position taken during trial depends on a particular claim construction, we encourage the party to explain that dependence and why its asserted construction is correct.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,002,477 - PTAB · Mar 18, 2025 · IPR2024-01375 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–13 based on both §103 grounds, finding a reasonable likelihood that the asserted combinations render at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“35 U.S.C. § 325(d) because Amarenco and Mann previously were presented to the Office during prosecution of the ’742 patent. See Prelim. Resp. 17–18. According to Patent Owner, Petitioner has identified additional references that “supposedly teach[] only some of what was missing—stimulation of a branch of the posterior tibial nerve but not to treat overactive bladder or incontinence.” Id. at 18. Patent Owner’s argument is flawed for two reasons. First, neither Svihra nor Ponsford were previously presented to the Office. Because Patent Owner does not argue that we should deny institution of Petitioner’s Svihra-based ground under § 325(d), and because that ground relies on a combination of art not previously presented, Patent Owner’s § 325(d) argument is unpersuasive. In that regard, we determine that even if we were to conclude the Amarenco-based ground warranted discretionary denial, the Svihra-based ground would not be subject to such denial and may alone justify institution. See USPTO, SAS Q&As (June 5, 2018) at D1.11 Additionally, for the Amarenco-based ground, Petitioner relies on a combination including prior art that was not previously presented, and Patent Owner does not show that additional prior art is cumulative to art presented during prosecution. We determine that Petitioner’s Amarenco-based ground 11 Available at: https://www.uspto.gov/sites/default/files/documents/ sas_qas_20180605.pdf is not substantially the same as one previously presented to the Office. Thus, we decline to discretionarily deny institution under § 325(d).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had an undergraduate degree in the field of biomedical engineering or a related discipline, such as electrical engineering, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could substitute for a formal degree and vice versa.” Pet. 21 (citing Ex. 1003 ¶¶ 20–21). Patent Owner does not dispute Petitioner’s proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it, and use “skilled artisans” to refer to people with such skill at the time the invention was filed.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no terms require construction for purposes of this Petition.” Pet. 22. Patent Owner does not contest Petitioner’s position. See generally Prelim. Resp. We agree and do not expressly construe any terms at this stage. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“It has long been recognized that the touchstone as to whether an asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,224,742 - Biofrontera Inc. / Biofrontera Bioscience GmbH et al. v. Sun Pharmaceutical Industries, Inc.InstitutedPTAB · Feb 24, 2025 · IPR2024-01312 · APJ Erica A Franklin · IPR · Institution
The Board instituted review of claims 1, 2, 4-6, 16, 17, and 19-21 on all asserted grounds, finding a reasonable likelihood of unpatentability over Lundahl and Larsen.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“justification for requiring a POSITA to have both an engineering degree and a medical degree. We agree, insofar as Petitioner has not clearly set out any particular explanation or evidence in support of its dual-degree requirement. In all other respects, we note that the parties’ proposed definitions are largely similar. Because we determine that Patent Owner’s proposed definition is reasonable and consistent with the ’028 patent and the cited art, we adopt Patent Owner’s definition for purposes of this Decision. In any event, our decision whether to institute does not turn on this level of skill determination.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. § 282(b); 37 C.F.R. § 100(b). Under that standard, claim terms “are generally given their ordinary and customary meaning” as understood by a person of ordinary skill in the art at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). Petitioner and Patent Owner assert that the Board need not construe any claims for the purpose of deciding whether to institute an inter partes review. Pet. 12; Prelim. Resp. 24. We agree.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review of the Petition, Petitioner explains that a driving motivation for a POSITA to modify Lundahl to include Larsen’s five panels is “to increase the flexibility of the device to ensure the light panels could be maintained at a distance of 2-4′′ from surface of the treatment area, whether the face, arm, or back, etc.” Pet. 29 (emphasis added). As Lundahl’s device is not flexible, and such flexibility would improve its ability to treat areas other than an average sized face, we determine, at this stage in the proceeding, that this motivation for the combination is sufficient.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightInstituted
“would have been motivated to modify Lundahl’s device by incorporating Larsen’s use of LEDs on the surface of the light applicators in place of Lundahl’s fluorescent tubes with a reasonable expectation of success. Prelim. Resp. 55. Patent Owner argues that Petitioner’s modification is based on improper hindsight bias because “Petitioner cherry-picks Larsen’s LEDs (together with the five panels) and purports to arrange them according to the [sic] ‘the uneven spacing’ of Lundahl’s fluorescent tubes.” Id. at 56 (citing Pet. 46–49; Ex. 1015 ¶¶ 175–80). According to Patent Owner, “Petitioner cannot on the one hand argue that a ‘POSITA would have understood that Larsen’s applicator is configured to uniformly illuminate a treatment surface of the patient,’ while on the other ignore Larsen’s teaching that the ‘light sources 17 are placed in regular row arrangements.’” Id. Patent Owner asserts that Petitioner’s proposed modification “mish-mashes aspects of Lundahl and Larsen ([while] avoiding the overall teachings of [challenged] claims.” Id. at 56–57. As discussed above, based on our consideration of the current record, Petitioner has provided sufficient motivation for employing Larsen’s flexible five panel configuration. These panels in Larsen already use LEDs as their light source. So, in our view, Petitioner’s incorporation of the five panels includes the lighting source, i.e., LEDs, for those panels taught by Larsen. Further, we note that Petitioner has persuasively asserted that a skilled artisan would have been motivated to use Larsen’s LEDs as they are more cost-efficient and last longer. See Pet. 31.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,697,028 - Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyInstitution deniedPTAB · Jan 29, 2025 · IPR2024-01178 · APJ Erica A Franklin · IPR · Institution
The Board denied institution because Bio-Rad did not show a reasonable likelihood of proving any challenged claim unpatentable, as relied-upon Saxonov disclosures were not shown to qualify as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314. Upon considering the parties’ arguments and evidence, we determine that Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of at least one claim challenged in the Petition. Accordingly, we decline to institute an inter partes review of the challenged claims.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes when two conditions are met: (1) the provisional provides sufficient support for at least one claim in the reference patent or published patent application; and (2) the provisional application provide sufficient support for the subject matter relied upon for prior art purposes in the reference patent or application. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1377, 1381–82 (Fed. Cir. 2015); MPEP §§ 2136 (I), 2136.03 (III), 2136 (Examples 2, 4, 7); see, e.g., Google LLC v. Ikorongo Tech, LLC, IPR 2021-00058, Paper 14 at 10–12 (PTAB May 10, 2021). The burden of production is on the Petitioner to show in its Petition that the asserted references qualify as prior art. See Dynamic Drinkware, 800 F.3d at 1380 (explaining that a petitioner bears the initial burden of production to establish that the asserted references qualify as prior art).” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“Each of the remaining grounds asserted in the Petition relies on Saxonov to reach a number of limitations of independent claim 1 and the challenged dependent claims. Because Petitioner has not shown that all of the relied-upon portions of Saxonov are prior art to the ’170 patent, we determine that Petitioner has failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’170 patent in any of the remaining grounds.” slip op. at 24
- PTAB / AIA Trials › Discretionary denialNot reached
“Because we deny institution upon consideration of the merits of Petitioner’s challenges, Patent Owner’s argument that we should exercise our discretion under 35 U.S.C. § 314(a) to deny institution is moot.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,770,170 - Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyInstitution deniedPTAB · Jan 29, 2025 · IPR2024-01177 · APJ Erica A Franklin · IPR · Institution
Institution was denied for claims 1–9 because Bio-Rad did not show a reasonable likelihood of unpatentability on any ground relying on Saxonov, which was not established as prior art.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage in the proceeding, Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 26. Because Petitioner’s uncontested definition of one of ordinary skill in the art is reasonable and consistent with the ’051 patent and the cited art, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner has identified certain claim terms for which it has proposed constructions in a parallel proceeding. Pet. 27–29. Petitioner notes that it has that “[o]ther terms, as used herein, are consistent with Patent Owner’s arguments and positions in the parallel proceeding,” without identifying those terms. Id. at 28. Patent Owner requests that the Board adopt Patent Owner’s proposed constructions from the parallel proceeding for certain claim terms. PO Prelim. Resp. 26–27. Neither party provides a discussion for their proposed constructions. In any event, for purposes of this Decision, we determine there is no need to expressly construe any claim term, as the parties appear to agree to the ordinary and customary meaning of the identified terms.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“benefit of its provisional application’s filing date for pre-AIA 35 U.S.C. § 102(e) prior art purposes when two conditions are met: (1) the provisional provides sufficient support for at least one claim in the reference patent or published patent application; and (2) the provisional application provides sufficient support for the subject matter relied upon for prior art purposes in the reference patent or application. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1377, 1381–82 (Fed. Cir. 2015); MPEP §§ 2136 (I), 2136.03 (III), 2136 (Examples 2, 4, 7); see, e.g., Google LLC v. Ikorongo Tech, LLC, IPR2021-00058, Paper 14 at 10–12 (PTAB May 10, 2021). The burden of production is on the Petitioner to show in its Petition that the asserted references qualify as prior art. See Dynamic Drinkware, 800 F.3d at 1380 (explaining that a petitioner bears the initial burden of production to establish that the asserted references qualify as prior art).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“explains how each of the relied-upon disclosures in Saxonov Figures 9 and 10, and Saxonov paragraphs 17, 18, 37, 76, and 79, which are not present in the ’013 provisional, are supported by the ’013 provisional, we determine that Petitioner has not shown that those cited portions of Saxonov are entitled to the priority date of the ’013 provisional. Accordingly, on this record, we determine that those relied-upon portions of Saxonov do not qualify as prior art to the ’051 patent.” slip op. at 24
Claim construction§ 102 anticipationcites Phillips · GrahamPatents in suitUS 10,068,051 - 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 27, 2025 · IPR2024-01197 · APJ Tawen Chang · IPR · Institution
The Board instituted IPR on all challenged claims, 1–40, and all petitioned grounds after finding a reasonable likelihood of unpatentability and declining § 325(d) denial.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not proposed a definition of a person of ordinary skill in the art in its Preliminary Response. On the current record, for purposes of this Decision, we apply Petitioner’s proposed definition, as it appears consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’729 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We note, however, that the open-ended language “at least” and “or more” expands the range of experience indefinitely with no upper bound. Therefore, we do not apply this aspect of Petitioner’s formulation.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner bears the burden of stating “[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3). However, only those terms that are in controversy need be construed, and 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))). Based on the preliminary record, we find it unnecessary to construe any claim term to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. Any final written decision entered in this case may include express” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion as to Ground 1 Based on the foregoing discussion, and having considered the arguments and evidence presented by Petitioner, including the presently unrebutted testimony of Dr. Parr, we are persuaded Petitioner has shown a reasonable likelihood of prevailing with respect to Ground 1 sufficient for purposes of institution. E. Other Asserted Grounds of Unpatentability Having determined that Petitioner meets the threshold showing necessary to support institution of review based on the ground that asserts obviousness over Dohil in view of the knowledge of a POSA, we decline to address whether any other ground asserted in the Petition also supports institution. See Pet. 15–16 (grounds chart); see also SAS, 138 S. Ct. at 1359–60 (requiring the Board’s final written decision to address every claim the petitioner presents for review); Patent Trial and Appeal Board Consolidated Trial Practice Guide7 (“Trial Practice Guide”) (Nov. 2019) 11 (“The Board will not institute on fewer than all claims or all challenges in a petition.”); PGS Geophysical, 891 F.3d at 1359–1360. We emphasize our determination in this Decision is not a final determination on the construction of any claim term or the patentability of any challenged claim and, thus, leaves undecided any factual issues necessary to determine whether sufficient evidence supports Petitioner’s contentions by a preponderance of the evidence in the final written decision.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“additional evidence and facts presented in the Petition warrant reconsideration of prior art or arguments,” we agree with Petitioner that the Examiner materially erred because the Examiner did not have the benefit of the teachings of the FDA Guidance, which Petitioner relies on in Grounds 1 (Dohil) and 3 (Dohil and Venkatesh) as representative of the knowledge of a POSA with regard to orally disintegrating tablets. See, e.g., Pet. 23.” slip op. at 36
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,771,729 - Salvacion USA, Inc. v. Trutek Corp.InstitutedPTAB · Dec 6, 2024 · IPR2024-00711 · APJ Erica A Franklin · IPR · Institution
The Board instituted review of claims 1–3 and 8 on all asserted grounds, finding a reasonable likelihood that Chen anticipates or renders obvious each challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, we determine that Petitioner has shown a reasonable likelihood of prevailing in its challenge of claims 1–3, and 8 as anticipated by, or obvious over Chen.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not specifically address or dispute Petitioner’s proposed definition or a person of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, we adopt Petitioner’s proposed level of ordinary skill in the art as we find it consistent with the cited prior art and it is undisputed on this record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“of independent claims 1, 2, and 8 are limiting. Prelim. Resp. 7. According to Patent Owner, for these claims, the preamble “recites specific steps in the process that are not recited in the body of the claim or are recited in a way particulate matter; infecting an individual through nasal inhalation; formulation is applied to the skin or tissue of nasal passages; and a thin film.” Id. Petitioner does not allege any contention regarding whether the preamble is limiting. See Pet. 14–16. Based on our review, we agree with Patent Owner that the preamble of independent claims 1, 2, and 8 limits the challenged claims as both the preamble and the body have been used to define the subject matter claimed. See Allen Engineering Corp., v. Bartell Industries, Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). In particular, the preamble is “necessary to give life, meaning and vitality” to the claim, see id., because it provides the only description in the claim for the application site of the formulation, i.e., “to skin or tissue of nasal passages,” and how the formulation is applied, i.e., “in a thin film.” Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“one “biocidic agent.” Petitioner asserts that this term means “an agent which has the capacity to neutralize, inactivate, render harmless or kill airborne particles, which include microorganisms, for example viruses and/or bacteria.” Pet. 14. Patent Owner asserts that the term refers to “a chemical substance that destroys or inhibits the growth or activity of living organisms.” Prelim. Resp. 12 (citing Merriam-Webster Dictionary). Independent claim 2 recites a formulation comprising at least one “cationic agent.” Dependent claim 3 recites that the “cationic agent is a polymeric quaternary ammonium compound.” Patent Owner asserts that a “cationic agent” is “a chemical substance that creates a positive electrostatic term. Based on our review, we determine that an explicit construction is not necessary for purposes of our determination whether to institute an inter partes trial, as there is no dispute as to whether the prior art discloses formulations comprising a biocidic agent and a cationic agent.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,163,802
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.