• Netflix, Inc. v. Divx, LLCAll claims unpatentable
  PTAB · Sep 21, 2026 · IPR2020-00558 · APJ Kevin F Turner · IPR · Remand

  Claims 1–24 are unpatentable as obvious over Chen, Lindahl, and Hurst because the combination teaches the claim limitations and has motivation to combine and a reasonable expectation of success.

  RulingsRemand decision

  • RemandOther

    “On February 13, 2026, the Federal Circuit issued a decision in the appeal vacating the Second Final Decision as to all challenged claims and remanding for further proceedings. Netflix II, 7. The Federal Circuit reversed the Board’s claim construction, vacated the Board’s decision, and remanded for further proceedings consistent with the claim construction the 6 The First Final Decision also addressed Petitioner’s Motion to Exclude (Paper 42), where we granted-in-part, denied-in-part, and dismissed-in-part that Motion. See 1st Final Dec. 28–37. Our determinations on that Motion were a part of Petitioner’s appeal to the Federal Circuit. See Paper 52. As the Federal Circuit did not address this aspect of the First Final Written Decision, we determine our conclusions with respect to that Motion remain undisturbed. Federal Circuit adopted. Id. The Federal Circuit issued its mandate on March 23, 2026.” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention (“POSITA”) would have had “a bachelor’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with at least two years of experience in video streaming and media security or . . . a master’s degree in mechanical engineering, electrical engineering, computer science, or a similar field with a specialization in video streaming and media security.” Pet. 14–15 (citing Ex. 1003 ¶¶ 65–67). Patent Owner does not refute Petitioner’s assessment and appears to apply such a level of skill in its arguments against combining Chen, Lindahl, and Hurst to teach or suggest the elements of the challenged claims. See generally PO Resp. As such, we continue to adopt and apply Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision. See Inst. Dec. 6; 1st Final Dec. 6; 2nd Final Dec. 10.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In response, we conclude that the most natural reading of limitation [l] results from examination of the entire limitation: “locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video.” Ex. 1001, 27:54–57. The “within” most naturally connotes where the encrypted portions of frames of video occur, as opposed to determining where the encryption information may be located. Patent Owner’s interpretation is not wrong, i.e., the limitation could be read as Patent Owner suggests, leading to a narrower construction, but we are not persuaded that the construction of limitation [l] must be so limited, on the basis of the words themselves. We continue to reject Patent Owner’s interpretation that limitation [l] requires locating encryption information within the requested portions of the selected stream of protected video. See Inst. Dec. 27–30; 1st Final Dec. 8. Although it is apparent that encryption information can be found within the requested portions, we are not persuaded that the claim language or ’588 Patent implicitly or explicitly requires such a relationship. Likewise, although embodiments disclosed in the Specification of the ’588 Patent are consistent with Patent Owner’s more restrictive construction, the Specification also is consistent with the more grammatically correct construction as well. Thus, we construe limitation [l] as requiring that the encrypted portions of frames of video be within the requested portions of the selected stream of protected video, but we do not construe limitation [l] as requiring that the encryption information be within the requested portions of the selected stream of protected video.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We are persuaded that the Petition demonstrates that one of ordinary skill in the art would have had a motivation to combine Chen, Lindahl, and Hurst, as asserted by Petitioner. As the Federal Circuit found, the Petition pointed to and relied upon the portions in Chen describing pre-Chen art, without scalability or FEC features that were part of what Chen describes as aspects of its own inventive system. Netflix I, slip op. at 9–10 (citing Pet. 17–19, 69–70). We agree with Petitioner that “Chen-924 teaches several embodiments that adaptively stream alternative representations of a video using partially encrypted container files.” Pet. 20 (citing Ex. 1010, 14:41–15:60). We determine that Chen-924 provides support for the rationale provided in the Petition, and that one of ordinary skill in the art would have been motivated to combine Chen and Lindahl in view of the disclosure of Chen-924. As discussed above, the Petition does not rely solely on privacy concerns and improvements to efficiency as its motivation to combine the references. See Pet. 18–19 (specifying piracy concerns, improvements to the efficiency of adaptive streaming, optimization of the balance between bitrate and bandwidth, and improvements to the end-user experience with fast startup and seek). With respect to whether one of ordinary skill in the art would have” slip op. at 30

  Patent outcomesUS 10,225,588 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,225,588
• Apple Inc. v. Proxense, LLCAll claims unpatentable
  PTAB · Sep 17, 2026 · IPR2025-00562 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–20 are unpatentable as obvious over Giobbi ’157, Giobbi ’139, and Dua; the Board also finds the claims unpatentable under the Broadcom grounds.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “IPR2024-00783, Ex. 1001, 22:36–49. As the Federal Circuit stated, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. See Dyfan, 28 F.4th at 1367. Based on the record before us, this presumption that each of the terms is not subject to § 112 ¶ 6 is not overcome.” slip op. at 17

  • Skill levelOther

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 25

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We find persuasive Dr. Wolfe’s supporting testimony that a POSITA would have understood the terms “PDK” and “RDC” to have “definite structure.” Ex. 1013 ¶¶ 35–56. In particular, we find persuasive Dr. Wolfe’s testimony that the term “PDK,” for example, “encompasses at least ‘a collection of circuit components that includes an antenna, a transceiver, and a controller and memory for storing information particular to a user.’” Id. ¶ 35. Dr. Wolfe’s testimony is consistent with the Specification of the ’188 patent. See Ex. 1001, 5:42–6:7, 3:48–62. In particular, the Specification of the ’188 patent describes a microchip that stores information in memory and responds through an antenna when probed, which is consistent with Dr. Wolfe’s testimony. Id.; Ex. 1001, 1:30–62.” slip op. at 19

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, “would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of non-obviousness. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).” slip op. at 25

  Patent outcomesUS 9,049,188 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,049,188
• Charles River Laboratories, Inc. v. Seikagaku CorporationAll claims unpatentable
  PTAB · Sep 8, 2026 · PGR2025-00023 · APJ Per Curiam · PGR · Final written decision

  Claims 1–9 are unpatentable as anticipated by the ’629 publication; the claims are not entitled to the 2013 priority date.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “We find that a rigid requirement as to the subject of a POSITA’s doctoral degree (e.g., biochemical engineering, enzymology), or experience working specifically with horseshoe crab proteins, is not consistent with the evidence of record. See, e.g., Ex. 1067, 20:23–21:2 (Dr. Schaefer testifying that the fact the “name of [his] Ph.D. is immunology . . . does not change the fact that the core of [his] thesis training was really in molecular biology”), 22:3–15 (explaining that “the fact that the production of proteins recombinantly is mostly species agnostic”); Ex. 1069, 45:20–47:17 (Dr. Morris testifying that whether a person is a POSITA depends on the person’s “experience, [ ] publications,” and work done for the Ph.D. rather than the name of the Ph.D. program). We also find that evidence of record supports Petitioner’s assertion that, for purposes of defining a POSITA, “[m]ore education could substitute for experience, and vice versa.” See, e.g., Pet. 22; Ex. 1065, 99:14–100:3. Accordingly, based on the entirety of the trial record, we find a POSITA with respect to the claims of the ’109 patent would have had a two years of experience with cloning genes, expressing cloned genes as proteins, and/or characterizing such cloned genes and proteins, with more education being able to substitute for experience, and vice versa. A POSITA may also have collaborated with others, including those with specific experience in utilizing or assessing horseshoe crab Factor C for endotoxin detection and quantitation.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither party proposes an express construction of any claim term. See Pet. 22–23 (not proposing any constructions); PO Resp. 23 (“Patent Owner agrees that the terms can be afforded their plain and ordinary meaning.”). However, Patent Owner states that some of Petitioner’s arguments implicitly construe claim 1 in an erroneous manner. PO Resp. 23–28. “For example, Petitioner argues that ‘an adequate written description would have to either disclose representative examples of the possible working cascades of various proteins or some accurate structural feature of the claimed proteins that allow them to function in the claimed assay as a whole.’” Id. at 23 (quoting Pet. 35). Patent Owner argues that, contrary to what Petitioner’s argument allegedly implies, “Claim 1 is directed to a method for producing an endotoxin assay agent” and does not require the use – Owner that claim 1 does not require the use of endotoxin assay agent. However, the claimed endotoxin assay agent must be capable of performing the assay, as counsel for Patent Owner acknowledged. Tr. 83:5–9.” slip op. at 10

  • BurdenNot shown unpatentable

    “In this case, to show that the claims of the ’109 patent are unpatentable for lack of written description, Petitioner would have needed to show that the specification as filed (i.e., the ’420 application) fails to reasonably convey to those skilled in the art that Patent Owner had possession of the claimed subject matter as of the July 3, 2023, filing date. Petitioner did not. Pet. 23–24. Nor does Petitioner’s declarant offer testimony that could support such a showing. See Ex. 1003 ¶50 (“I have been asked to provide my opinions as to the state of the art in this field for purposes of determining what the inventors disclosed as their invention as of December 10, 2013.”), ¶51 (“Whenever I offer an opinion in this declaration about the knowledge of a POSA, the manner in which a POSA would have understood the claims of the ’109 patent or its description, the manner in have been led to do based on the prior art, I am referencing the December 10, 2013 timeframe.”). In our Institution Decision, we stated: Although the ’420 application is essentially identical to the ’767 application, the person of ordinary skill in 2013 is not the same as in 2023. See Ariad, 598 F.3d at 1351 (“[T]he [written description] test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” (emphasis added)). Thus, the information presented in the Petition, which is limited to the perspective of a 2013 POSITA, does not demonstrate that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable for lack of written description. Inst. Dec. 12 (alterations in original). During trial, Petitioner did not present any further arguments in support of Ground 1. See generally Pet. Reply. Petitioner has failed to prove that claims 1–9 are unpatentable for failing to meet the written description requirement set forth in 35 U.S.C. § 112(a).” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable

    “Although the evidence before us shows that, in 2013, a POSITA knew how to recombinantly express genes in expression systems such as CHO or HEK-293 cell lines, the evidence shows that this was true only for genes whose genetic sequences were known or readily available. See, e.g., Ex. 1069, 34:11–22 (“Q. Okay. So you would agree that the creation of the recombinant protein requires the underlying sequence of, as you said, the original animal? A. Of course.”) Because it is undisputed that, in 2013, the genetic sequence for Limulus polyphemus Factor C was unknown, or least not publicly available, Falko-Gunter does not support a finding of adequate written description here. See, e.g., Tr. 48:18–19 (“Patent Owner agrees that there had not been, as of 2013, the full length cDNA sequence for Limulus polyphemus Factor C published.”).” slip op. at 23

  Patent outcomesUS 11,959,109 unpatentable
  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 11,959,109
• Charles River Laboratories, Inc. v. Seikagaku CorporationAll claims unpatentable
  PTAB · Sep 8, 2026 · IPR2025-00440 · APJ Tawen Chang · IPR · Final written decision

  Claim 21 is unpatentable as obvious over Mizumura with either the ’498 PCT or McClymont; the Revised Contingent Motion to Amend proposing claim 22 is denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “overlap to a significant degree, i.e., a person with a Ph.D. in a discipline related to biological sciences and having had at least two years of work experience. However, the parties’ proposals differ slightly in the specific subjects in which a POSA would have had a doctoral degree, and whether the person’s work experience must have been directly related to horseshoe crab Factor C. As an initial matter, we find that a rigid requirement as to the subject of a POSA’s doctoral degree (e.g., biochemical engineering, enzymology), or experience working specifically with horseshoe crab proteins, is not consistent with the evidence of record. See, e.g., Ex. 1067, 20:23–21:2 (Dr. Schaefer testifying that the fact the “name of [his] Ph.D. is immunology . . . does not change the fact that the core of [his] thesis training was really in molecular biology”), 22:3–15 (explaining “the fact that the production of proteins recombinantly is mostly species agnostic”); Ex. 1069, 45:20–47:17 (Dr. Morris testifying that whether a person is a POSA depends on the person’s “experience, [ ] publications,” and work done for the Ph.D. rather than the name of the Ph.D. program). We also find that evidence of record supports Petitioner’s assertion that, for purposes of defining a POSA, “[m]ore education could substitute for experience, and vice versa.” See, e.g., Pet. 19; Ex. 1065, 99:14–100:3. with respect to the claims of the ’318 patent would have had a Ph.D. in molecular biology, biochemistry, or a related discipline, and about two years of experience with cloning genes, expressing cloned genes as proteins, and/or characterizing such cloned genes and proteins, with more education being able to substitute for experience, and vice versa. A POSA may also have collaborated with others, including those with specific experience in utilizing or assessing horseshoe crab Factor C for endotoxin detection and quantitation.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction The parties agree that “the terms in claim 21 can be afforded their plain and ordinary meaning for purposes of this proceeding” without further construction. Pet. 19–20; PO Resp. 11. Because express claim construction is not needed to resolve the issues in this case, we need not, and do not, construe expressly any claim term for purposes of this Decision. 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)).” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “Carrying Out the Invention section, that “[t]he Factor C of the present invention is a Factor C derived from a horseshoe crab,” and states later in the same section that “[e]xamples of the horseshoe crab include . . . Limulus polyphemus.” Ex. 1006, 40. However, none of the remaining portions of ’767 application cited by Patent Owner relate directly to L. polyphemus; instead, the remaining portions of ’767 application cited by Patent Owner are directed to other species, in particular the Japanese horseshoe crab T. tridentatus. Further, Patent Owner’s witness, Dr. Schaefer, conceded that the ’767 application does not contain Factor C sequence information for L. polyphemus. See, e.g., Ex. 1067, 44:25–45:23. Although “[n]o length requirement exists for a disclosure to adequately describe an invention,” Falko-Gunter, 448 F.3d at 1365–1366, we are persuaded that a POSA would not, based on the totality of the above disclosures, reasonably understand that the inventors were in possession of the claimed HEK-293 recombinant L. polyphemus Factor C protein, in view of the state of the art as of December 10, 2013. In this regard, we note that adequate written description of a biological molecule, such as a HEK293 recombinant L. polyphemus Factor C protein, requires “more than a mere statement that it is part of the invention and reference to a potential method for isolating it”; instead, what is required is “‘a precise definition, such as by structure, formula, chemical name, or physical properties,’ not a mere wish or plan for obtaining the claimed chemical invention.” The Regents of the” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Neither do we see Petitioner’s arguments regarding the December 10, 2013 priority date to be “mutually opposed” as Dr. Schaefer testified. Ex. 1067, 216:4– 24. Instead, we credit evidence of record, including Dr. Jain’s testimony and the February 22, 2018 Mizumura Declaration, that existence of the full sequence would permit a more complete analysis and that such an analysis would provide a POSA with a reasonable expectation that the claimed L. polyphemus recombinant protein would have a residual activity within the claimed range. See, e.g., Ex. 1029, 2–5; Ex. 1010, 48; Ex. 1065, 117:14– 130:24 (explaining that comparison of partial sequences in the Tokunaga 1991 publication showed “difference around the cleavage site” between T. tridentatus and L. polyphemus but comparison of the full sequence revealed that “the catalytic triad of histidine, serine, aspartate . . . to be more similar between Tachypleus and Limulus”). Patent Owner asserts that “Petitioner’s reliance on a statement made by Dr. Mizumura in a declaration submitted during prosecution of the ’767 Application fails to fill the gap in the analysis” regarding reasonable expectation of success, because the declaration “offers no evidence of the percentage of conserved amino acid substitutions that exist to support the conclusion that a POSA would have expected residual activity to be maintained between Tachypleus tridentatus and Limulus polyphemus” PO Resp. 47. However, as noted above, Dr. Mizumura provides an alignment of Factor C proteins from the two different species of horseshoe crab, determines that the similarity between the amino acid sequence is 99.5%, states that the amino acid residues that can undergo N-type sugar chain that L. polyphemus, like T. tridentatus, would also be less susceptible to inhibition by ions. Ex. 1029, 4–5. For the reasons discussed above, we also disagree with Patent Owner’s assertion that Petitioner’s reasonable expectation of success argument is “nothing more than conclusory assertions with no support.” PO Resp. 46. Rather, we find Petitioner has shown, by a preponderance of the evidence, that a POSA would have had reason to combine the teachings of Mizumura and the ’498 PCT, with a reasonable expectation of success in arriving at the Factor C protein recited in claim 21.” slip op. at 38

  Patent outcomesUS 11,236,318 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 11,236,318
• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthSome claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00249 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1 and 4–8 are unpatentable: claims 1 and 4–6 as obvious over Huang2 and Kuo, and claims 7–8 as anticipated by Huang2; claims 2–3 were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for patent owner

    “(“POSITA”) “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20– 21 (citing Ex. 1003 § II.C7). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:28–29. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”). Importantly, the Specification does not treat the existence of minor peaks as prerequisites for the existence of major peaks. Indeed, the Specification does not discuss “minor peaks” at all. See generally Ex. 1001. Likewise, none of the claims of the ’227 patent, whether challenged or unchallenged, recites “minor peaks” or any additional peaks beyond the disputed “major peaks.” Id. at 23:30–24:42. Nor does the Specification include an example of FFT analysis results in which the average of the peaks therein is calculated and those higher than the average are identified as major peaks.8” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundMixed

    “Petitioner has the better position. Huang2 teaches crosslinking and provides a reason for doing so (stability). In particular, Huang2 states: “To better mimic skin ECM, electrospun collagen fibers have been fabricated, however, the rapid degradation and poor mechanical properties determine that either crosslinking or combination with other materials is necessary to obtain a stable scaffold.” Ex. 1005, 1791 (emphasis added). It is true that, in describing work actually carried out, Huang2 states that blending with PCL was performed and does not mention crosslinking. See id. at 1792 (“Nanofibrous matrices of PCL and Collagen at a weight ratio of 3:1 were fabricated using electrospinning as previously described.”). However, the prior art – here, Huang2 – is not limited to that which it describes having created. See In re Mills, 470 F.2d 649, 651 (C.C.P.A. 1972) (“a reference is not limited to the disclosure of specific working examples”); see also In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968) (“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.”); In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior art reference is relevant for all that it teaches to those of ordinary skill in the art.”). Huang2 teaches two stabilization methods when using collagen in scaffolds. Huang2 states that one or the other “is necessary to obtain a stable scaffold” (when using collagen), but it does not preclude or teach away from using Patent Owner-cited testimony of Dr. Mikos is not as definitive as Patent Owner suggests; Dr. Mikos’s testimony is that a person of ordinary skill in the art “typically would not have done both.” Ex. 2015 ¶64 (emphasis added). The bottom line is that Huang2 teaches the person of ordinary skill in the art two ways to stabilize scaffolds/matrices comprised of collagen, provides a reason for doing so (stability), and does not teach away from using both. We are persuaded that a “scaffold comprising crosslinked fibers comprising collagen” would have been obvious in view of the cited teachings of Huang2.” slip op. at 33

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We are not persuaded by Appellant’s citations to either reference. As discussed above, Petitioner’s Ground 1 is premised on a person of ordinary skill in the art altering the native flat sheet structure of Huang2 by rolling it into a jelly-roll structure as taught by Kuo. See Pet. 41 (Beginning its claim 2 arguments with the following: “Claim 1 is obvious for the reasons expressed above in § X.A., supra, which are incorporated herein.”); see also Pet. Reply 17 (“[B]ased on the explicit teaching of Kuo, a POSA would have been motivated to take the electrospun flat scaffold made by the techniques of Huang2, seed it with the desired cells, and roll it to treat a tendon and ligament.” (emphasis added)). Indeed, the paragraphs of Kuo that Petitioner cites for disclosing “scaffold sheets,” explicitly describe rolling them into jelly-roll like structures. See Ex. 1018 ¶7 (stating that “the sheet is spirally contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct”), ¶22 (describing a method comprising “forming a tissue construct by contacting a scaffold sheet of fibrous material with a cell; and rolling the scaffold sheet in a jelly-roll like manner to form a spirally wound tissue construct” and implanting it in a patient). Petitioner fails to argue that that “one or more elongated sheets” recited in claim 2 would encompass the rolled structure of its proposed modification. Nor does Petitioner articulate a claim construction argument that could support such an argument. Petitioner has failed to prove, by a preponderance of the evidence, that claim 2 would have been obvious over Huang2 and Kuo.” slip op. at 42

  Patent outcomesUS 11,318,227 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman · KSR
  Patents in suitUS 11,318,227
• Embody, Inc. / Zimmer Biomet Holdings, Inc. v. Lifenet HealthAll claims unpatentable
  PTAB · Aug 4, 2026 · IPR2025-00248 · APJ Michael J Fitzpatrick · IPR · Final written decision

  Claims 1–3 and 5–12 are unpatentable as anticipated by Huang2; claim 4 is unpatentable as obvious over Huang2 and Kumbar. Lee grounds failed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 18– 19 (citing Ex. 1003 § II.C5). Patent Owner does not dispute Petitioner’s proposal but specifies the set of disciplines within which the Ph.D. would have been earned, namely “bioengineering, chemical engineering, mechanical engineering, or a related engineering discipline.” PO Resp. 5–6. We adopt and apply Petitioner’s proposal as clarified by Patent Owner regarding the Ph.D. discipline.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner

    “A patentee “may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (citing Hoechst Celanese Corp. v. BP Chemicals Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996)); see Markman v. Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc) (“[A]ny special definition given to a word must be clearly defined in the specification.”), aff'd, 517 U.S. 370 (1996); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). “[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.” Bell Atlantic Network Services, Inc. v. Covad Communications Group, Inc., 262 F.3d 1258, 1268 (Fed. Cir. 2001). Among the criteria to consider in whether the patentee acted as a lexicographer to define a claim term include (a) whether the patent specification included the statement in question under a section for marks, (c) whether the sentence uses the term “refer to,” which generally “conveys an intent for [that sentence] to be definitional,” and (d) whether there are other non-limiting terms (e.g., “for example,” or “include”) that contradict a definitional intent. Alnylam Pharms., Inc. v. Moderna, Inc., 138 F.4th 1326, 1333 (Fed. Cir. 2025) (alteration in original). At the outset, we agree with Patent Owner that the Specification purports to define “major peaks” in the following sentence: “The ‘major peaks’ herein refer to peaks higher than the average of the peaks in the result.” Ex. 1001, 13:6–7. We determine that this language satisfies at least two of the criteria set forth in Alnylam. Specifically, the sentence at issue sets out “major peaks” in quotation marks, and then uses the term “refers to” to explain what qualifies as major peaks. That is not the end of the inquiry, however, as we find there is still some ambiguity as to whether the patentee intended to define “major peaks” so as to require so-called “minor peaks” in the claimed invention. See Bell Atlantic, 262 F.3d at 1268 (“[T]he intrinsic evidence must ‘clearly set forth’ or ‘clearly redefine’ a claim term so as to put one reasonably skilled in the art on notice that the patentee intended to so redefine the claim term.”).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “As discussed above, we agree with Patent Owner that the sentence it cites from the Specification of the ’223 patent bears sufficient hallmarks of lexicography. However, the Specification nonetheless lacks any indication that so-called “minor peaks” are a necessary component of the claimed invention. “Although it is firmly settled that an applicant may act as a 9 Figure 8B does not contain “major peaks” despite clearly depicting two “peaks higher than the average of the [three or possibly four] peaks in the result” because none of the peaks is a reflection of fiber alignment. 10 After presenting claim construction arguments based on Ayres 2008, Patent Owner confusingly states: “Finally, whether Ayres-2008 supports [Patent Owner’s] construction is irrelevant.” PO Sur-Reply 5 (emphasis added). definition that is contrary to the ordinary meaning of a claim term unless it communicates a deliberate and clear preference for this alternative definition.” Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003). There is no indication that the patentee sought to require “minor peaks” within the scope of the claimed invention. Nor are we persuaded that a person of ordinary skill in the art would readily understand the scope of the term “major peaks” to require non-major peaks. We interpret the Specification’s statement that “‘major peaks’ herein refer to peaks higher than the average of the peaks in the result” (Ex. 1001, 13:6–7) to be teaching a person of ordinary skill in the art how to identify or discern “major peaks,” which indicate a principal axis of alignment, from any non-major peaks, which would be caused by something else. We conclude that a person of ordinary skill in the art would consider “major peaks” as used in the ’223 patent as referring to peaks that reflect the sole axis or primary axis of fiber alignment. See, e.g., id. at code (54) (“ALIGNED FIBER AND METHOD OF USE THEREOF”), code (57) (“A scaffold comprising an aligned fiber.”), 1:6–7 (“The invention relates to an aligned fiber and method of use thereof.”), 1:11–12 (“The invention relates to a scaffold comprising an aligned fiber.”), 13:16–17 (“Alignment of the fibers in the scaffold may be measured by a fast Fourier transform (FFT) analysis.”). This would certainly include peaks materially higher than the average of the peaks in the result, but it would not be limited to situations involving peaks of different heights or require so-called minor peaks. Based on the totality of the evidence before us, we do not construe the claims to require non-major peaks.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Petitioner argues that, for the aligned sample, a major peak occurs at about 90° as identified by Petitioner’s annotation (red arrow). Pet. 30–31. As support, Petitioner directs us to Huang2’s explicit description of what the peak indicates, namely that “[t]he narrow peak of the normalized intensity values in anisotropic [aligned] matrices (Figure 1C) indicated that PCL/Coll nanofibers aligned along a single axis (Fig. 1B).” Id. at 31 (alterations in original) (quoting Ex. 1005, 1794). Patent Owner disputes that the illustrated peak is a major peak solely based on the lack of any lesser peaks. See PO Resp. 13 (“[T]he height of the sole peak is identical to—not higher than—the average height of the peaks in the result.”). As discussed above, however, we do not construe “major peaks” as requiring the existence of non-major peaks. We find that the illustrated peak in the Aniso plot of the FFT analysis results (Figure 1C) is a major peak within the meaning of the claim. The evidence in support of this finding is overwhelming. First, the term “Aniso” as used in Huang2 refers to fibers “with alignment.” Ex. 1005, 1792. Huang2 describes fabricating such matrices of aligned fibers with electrospinning, the same method used to impart alignment in the ’223 patent. Id. at 1791–92. Huang2 visually confirms that the fibers in fact are aligned via scanning electron microscopy. Id. at Fig. 1B. Further, Huang2 explicitly states that the peak illustrated in the Aniso plot of the FFT analysis results (Figure 1C) is caused by the fact that the “PCL/Coll nanofibers aligned along a single axis (Fig. 1B).” Id. at 1794. This is precisely what electrospinning may yield aligned fibers and images of aligned fibers will yield FFT results with major peaks. Ex. 1001, 2:18–19, 4:46–60, 13:16–26. Additionally, Huang2 itself considers the peak illustrated in the Aniso plot of the FFT analysis to be significant, stating: “In contrast [to the Aniso plot], the lack of a significant peak for the fibers collected on a stationary surface [(i.e., without electrospinning)] demonstrated no preferred fiber orientation in the isotropic matrices” (i.e., the Iso plot). Ex. 1005, 1794. Indeed, the asserted major peak in the Aniso plot shown in Huang2’s Figure 1C is higher than any other data point on the plot. For these reasons, we find the peak to be a major peak.15 Petitioner acknowledges that Figure 1C only reports its results” slip op. at 32

  Patent outcomesUS 10,137,223 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Markman
  Patents in suitUS 10,137,223
• Apple Inc. / Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLCAll claims unpatentable
  PTAB · Apr 22, 2026 · IPR2022-01002 · APJ Jameson Lee · IPR · Remand

  On remand, claims 1–9 and 12–20 are unpatentable as obvious over Paulraj and Heath under § 103.

  RulingsRemand decision

  • RemandOther

    “determining no challenged claim had been proved unpatentable by Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Apple Inc. (collectively, “Petitioner”). Paper 41. Petitioner appealed to the U.S. Court of Appeals for the Federal Circuit. Papers 43, 44. On January 13, 2026, the Federal Circuit vacated and remanded, on the basis that the Board erred by not considering certain alternative arguments presented in the Petitioner’s Reply (Paper 29), which were properly responsive to claim construction proposed in the Patent Owner Response and adopted by the Board.1 Paper 45. In its Reply, Petitioner alternatively argued that even under the Patent Owner’s claim construction relating to “the plurality of antennas,” the same prior art references nonetheless still rendered obvious the challenged claims. In this remand proceeding, neither party requested the filing of additional briefing, despite having been given an opportunity to make and explain such a request. Paper 51. We have authority to conduct this inter partes review under 35 U.S.C. § 6. This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. Having considered all of the arguments presented in Petitioner’s Reply, we determine that Petitioner has proved by a preponderance of the evidence that claims 1–9 and 12–20 of U.S. Patent No. 9,191,083 B1 (Ex. 1001, “the ’083 patent”) are unpatentable. A.” slip op. at 2

  • Skill levelSkill level board ownDecided for petitioner

    “Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 2–3 (citing Ex. 1003 ¶¶ 27–28). Petitioner additionally states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 3. Patent Owner does not in its Response address the level of ordinary skill. Patent Owner’s expert witness, Dr. Cooklev, testifies that he “will apply the same definition of the level of skill of a POSITA [as Petitioner].” Ex. 2004 ¶ 19. Based on the evidence of record, we determine a person of ordinary skill would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two years of experience related to the design or development of wireless communication systems. This is consistent with Petitioner’s articulation of the level of ordinary skill, with the exception of Petitioner’s open-ended reference to “at least” two years of experience, because that would improperly encompass a level of experience only possessed by an expert. This articulation of the level of ordinary skill is also the same as what we determined in the Final Written decision issued on November 30, 2023. Paper 41, 6. C. slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Patent Owner contends: “The plain meaning of the claims requires that the same ‘plurality of antennas’ be used for transmitting and receiving the plurality of signal streams.” PO Resp. 5, 9–12. Citing Dr. Cooklev’s testimony, Patent Owner contends that the ’083 patent’s Specification describes embodiments that use the same antennas for both transmitting and receiving data streams. PO Resp. 7–9 (citing Ex. 2004 ¶¶ 34–35). In the Final Written Decision, we determined: Although we do not understand the claims to require both transmission and reception “via all antennas” all of the time, we determine the claims require a set of antennas in which at least some of the antennas are for both transmitting and receiving. We disagree with Petitioner that two separate sets of antennas— one set of transmitting antennas and a separate, nonoverlapping set of receiving antennas—fall within the scope of the challenged claims. Paper 41, 13 (emphasis added). The Federal Circuit agreed with our claim construction. Apple Inc. v. Smart Mobile Technologies LLC, U.S. Ct. App. Fed. Cir., slip op. 24-1419 (January 13, 2026) (2026 WL 91021) (Paper 45, 2–4). We continue to apply the same construction here that we adopted in the Final Written Decision.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “legally sufficient motivation for modifying Paulraj, but only attempted to show that the modification “could” have been made by one of ordinary skill in the art which is not enough for a showing of obviousness. Sur-reply 8–9. We disagree with Patent Owner. Establishing that certain technique was well-known to one of ordinary skill in the art at the effective filing date of the challenged patent constitutes sufficient motivation to make a modification in accordance with what was well-known in the art to one of ordinary skill, absent factors not present here. Indeed, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. That would be the situation where a technique was well-known to one of ordinary skill in the art, unless there is actual difficulty in making the application. The “improvement” here, although not articulated by Petitioner, is inherent with the technique, not requiring use of separate antennas for transmitting and receiving, i.e., eliminating the need for additional parts. Further, it is not necessary to show that a modification is the “best option,” because any “suitable option” would suffice. See Intel Corporation v. Qualcomm Incorporated, 21 F.4th 784, 800 (Fed. Cir. 2021). Here, Patent Owner does not assert that one of ordinary skill in the art would have had difficulty modifying Paulraj to use some of the same antennas both for transmitting and for receiving. Nor does Patent Owner dispute that it was well known to one of ordinary skill in the art to use the same antenna(s) for both transmitting and for receiving. We further note the following description in the Specification of the ’083 patent: “The typical CT/MD [cellular telephone/mobile device] has one transmitter and one receiver (T/R), with one antenna.” Ex. 1001, 1:47–48. That statement is fully consistent with Petitioner’s assertion that it was well-known to use the same antenna for transmitting and for receiving. For the foregoing reasons, notwithstanding Patent Owner’s arguments to the contrary, we determine that Petitioner sufficiently has shown that it would have been obvious to one of ordinary skill in the art to modify Paulraj such that some of the same antennas would be used both for transmitting and for receiving, according to limitations 1[b], 1[d], and 1[e].” slip op. at 36

  Patent outcomesUS 9,191,083 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,191,083
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01266 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 29, 36–38, 44–46, 48, 49, and 56–58 unpatentable as obvious over Reime, with additional grounds also supporting the challenged claims.

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 32) and Petitioner filed an Opposition (Paper 33). We denied this motion. See Final Dec. 58–61.” slip op. at 3

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “transmission paths. See Pet. Reply 14–15; PO Sur-reply 15. And we agree with both parties that the light that is transmitted directly through the plate to the sensor element does not have intervening reflections—such is consistent with the plain and ordinary meaning of “directly to.” See PO Resp. 31–32; Pet. Reply 14–15; PO Sur-reply 15. Nothing in claim 48’s language, however, requires that all of the reflected light be transmitted directly to the sensor element, which Patent Owner argues. Ex. 1001, 70:32–35; PO Resp. 31–32; PO Sur-reply 14–16. Rather, we agree with Petitioner that the claim language “merely requires that some light reflected by the object goes ‘directly to’ at least one sensor element once it is transmitted through the viewing plane defining plate.” Pet. Reply 14. We also agree that “none of these dependent claims purport to be exclusive of one another.” Id. at 15. Rather, claims 46–48 simply require some light be transmitted (or propagated) for their particular transmission path, without reciting all light. See Ex. 1001, 70:24–35.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “We find Petitioner’s arguments based on Reime alone insufficient. Thus, we find that Petitioner does not show by a preponderance of the evidence that claim 49 is rendered obvious by Reime alone.” slip op. at 52

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “And in view of the above, we find persuasive Dr. Bederson’s testimony that “[c]hoosing a multi-element detector or a single-element detector would have been a simple design choice using commercially available detectors.” Ex. 1002 ¶ 117. Accordingly, we find that one of ordinary skill in the art would have found it obvious for Reime’s receivers to be implemented using discrete single-element detectors. See KSR, 550 U.S. at 417 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”). We find unavailing Patent Owner’s argument that “Petitioner relies on expert testimony to gap-fill missing elements regarding Reime’s failure to disclose or suggest the different claim arrangements of detector elements in a ‘detector assembly.’” PO Resp. 78 (citing Ex. 1002 ¶¶ 111–119; Ex. 2056 ¶ 171). Rather, in light of Reime’s teachings, coupled with the general knowledge of one of ordinary skill in the art, it would have been obvious to employ discrete single-element detectors for Reime’s receivers. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1338 (Fed. Cir. 2020) (finding obviousness can rely on supported expert testimony to supply an element of a claim). We appropriately consider such evidence of the knowledge that one of ordinary skill in the art would have had as part of our obviousness analysis. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013). Moreover, “AAPA can be important evidence of general background knowledge, and general knowledge can be used to supply a missing claim 1371, 1378–79 (Fed. Cir. 2025). Here, Petitioner relies on the cited AAPA as evidence of one of ordinary skill in the art’s general knowledge at the time of the ’093 patent, and the AAPA is not the basis for this ground. See Pet. 4, 42–43; Pet. Remand 4–5. As Shockwave Med. explains, Federal Circuit “case law has long recognized numerous permissible uses for general background knowledge in an IPR such as, ‘for example, furnishing a motivation to combine, or supplying a missing claim limitation.” 142 F.4th at 1378–79 (quoting Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1376 (Fed. Cir. 2022) (citing Randall Mfg., 733 F.3d at 1362; Koninklijke, 948 F.3d at 1337–38)).” slip op. at 31

  Patent outcomesUS 9,569,093 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 9,569,093
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b, Inc.All claims unpatentable
  PTAB · Mar 13, 2026 · IPR2021-01239 · APJ John D Hamann · IPR · Remand

  On remand, the Board held claims 17, 18, 21, 22, 26, and 30 unpatentable as obvious over Reime, with claims 17, 18, 21, 22, and 30 also obvious over Reime and Hinckley.

  RulingsRemand decision

  • ExcludeMotion to exclude, deniedDenied

    “In addition, Patent Owner filed a Motion to Exclude certain of Petitioner’s evidence (Paper 28) and Petitioner filed an Opposition (Paper 34). We denied this motion. See Paper 41, 47–50.” slip op. at 3

  • Skill levelSkill level board ownOther

    “one having ordinary skill in the art at the time of the invention of the ’850 patent: one who “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and . . . years of experience in the research, design, development, and/or testing of touch and/or proximity sensors, human-machine interaction and 3 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’850 patent issued from an application filed before March 16, 2013, we apply the pre-AIA version of the statutory basis for unpatentability. 4 US 2003/0034439 A1, published Feb. 20, 2003 (Ex. 1010, “Reime”). 5 US 2002/0021278 A1, published Feb. 21, 2002 (Ex. 1011, “Hinckley”). Petitioner lists the combination of Reime and Hinckley as a separate asserted ground for claim 26. We combine these two asserted grounds into one as they rely on the same combination. additional education substituting for experience and vice versa.” Final Dec. 8–9. This definition for one having ordinary skill was not the subject of appeal, and we maintain it for purposes of this Final Written Decision on Remand. Moreover, it is consistent with the ’850 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “PO Resp. 17–29; Pet. Reply 8–15; PO Sur-reply 6–11. We construed this term in the Final Written Decision. Final Dec. 10–24. In particular, we concluded that (i) “detector assembly” means “two or more detector elements that detect electromagnetic radiation,” and (ii) a detector assembly is not required to be physically separate from (i.e., not interspersed with) a pixel array. Id. at 20, 22. The Federal Circuit found the first part of our construction erroneous. Appeal Dec. 7–10. In particular, the Federal Circuit concluded that “[t]he element.” Id. at 8. In addition, to guide the Board’s analysis on remand, the Federal Circuit construed “the terms ‘at an edge’ and ‘at least one edge’ [to] require a detector assembly to be arranged along one or more edges of a viewing plane defining plate.” Id. at 10–11. In other words, the Federal Circuit “clarif[ied] that arranging a detector assembly ‘at,’ ‘along,’ or ‘about’ ‘at least one edge’ or ‘an edge’ does not limit the detector assembly to being arranged entirely on ‘one edge.’” Id. at 12.” slip op. at 9

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “the Federal Circuit already has concluded that claim 15 is obvious in view of Reime. Appeal Dec. 9–10. Claim 17 further recites “wherein the detector assembly comprises: a support substrate, and an arrangement of detector elements.” Ex. 1001, 67:15–18. We agree with Petitioner and find that Reime teaches these further limitations. Pet. 34–35; Pet. Remand 2–4; Pet. Resp. Remand 1–3. First, as we found in the Final Written Decision, Reime’s receivers 30 and 32 are two detector elements that detect electromagnetic radiation (i.e., light), and Reime’s receivers 30 and 32, collectively, comprise a detector assembly. Final Dec. 27–28 (citations omitted). Moreover, Reime’s two receivers 30 and 32 comprise a detector assembly having multiple detector elements (e.g., two receivers) to teach “an arrangement of detector elements.” Ex. 1010 ¶¶ 73, 86, Figs. 9A–9C; Ex. 2060,7 127:17–18; Pet. 32–33; Pet. Reply 20; Pet. Remand 3. In addition, as we found in the Final Written Decision, Reime teaches that each of receivers 30 and 32 are centered on opposite edges of the plate. 7 Deposition Transcript of Dr. Benjamin Bederson (Apr. 7, 2022). Ex. 1010, Fig. 6A, ¶ 82) (affirming that Reime teaches having one light receiver (e.g., 30 or 32) on each side of a four-sided touch pad). In further support, we agree with Petitioner and find that Reime teaches that receivers 30 and 32 “are mounted in the peripheral area surrounding the LCD 92.” Pet. 32–33; Ex. 1010 ¶ 86; see also id. at Figs. 9A–9C (showing that the receivers are positioned at the edge of the LCD screen); infra annotated Fig. 9E (showing receivers 30 and 32 along edges of the LCD). Accordingly, we find Reime’s detector assembly that comprises receivers 30 and 32 is arranged along two edges (one edge for each receiver) of the LCD, which meets the Federal Circuit’s construction for being arranged at at least one edge. See supra Section III (concluding “at least one edge” means “arranged along one or more edges”) (emphasis added).” slip op. at 12

  Patent outcomesUS 8,624,850 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,624,850
• Avanos Medical, Inc. v. Stratus Medical, LLCAll claims unpatentable
  PTAB · Mar 10, 2026 · IPR2024-01209 · APJ Susan L C Mitchell · IPR · Final written decision

  Claims 1–27 are unpatentable as obvious over the asserted combinations, principally Racz, Fitz, and Lee; both parties’ motions to exclude are dismissed as moot.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “PO Resp. 30 (citing Ex. 2006 ¶ 58). Patent Owner’s proposal is too narrow in two respects. First, it mandates certain education and experience in RF neurotomy specifically. This is too narrow as the description of the scope of the invention set forth in the ’782 patent as described above is not limited to RF neurotomy. Second, it requires the POSA to be both a physician who performs thermal ablation (RF neurotomy specifically) and an engineer with training and experience “in the design and development of devices and methods” for performing the same. Id. This is too narrow because it excludes physicians and other advanced degree holders who research and design devices and methods for performing thermal ablation but do not actually operate on patients. We adopt the Petitioner’s definition of a POSA, quoted above, as it is reflective of the level of skill in the art when viewed in light of the disclosure of the ’782 patent. Supra (quoting Pet. 11).” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “With respect to the challenged claims, Petitioner contends that no claim term requires express construction. Pet. 12 (citing Ex. 1031 ¶106 (Dr. Robert D. Tucker’s11 testimony that “the terms in the Challenged Claims would be understood by a POSA to have their plain and ordinary meaning and do not require a special construction or definition”)). In instituting the IPR, we found no need to provide an express construction of any claim term. Inst. Dec. 12. We likewise find no need to do so now, as neither party has proposed a construction for any claim term and none of the parties’ arguments turns on a disputed meaning of any claim language.” slip op. at 11

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “(Fed. Cir. 1985)). “Whether a reference in the prior art is ‘analogous’ is a fact question.” Clay, 966 F.2d at 658. “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 658–59. Patent Owner argues that Lee is not analogous art under the first criterion because “Lee does not relate to neurotomy at all.” PO Resp. 34. However, as discussed above, the field of the invention is not limited to neurotomy. The field of the invention is thermal ablation generally, which encompasses RF neurotomy, but which is not limited to RF neurotomy. Accordingly, we are not persuaded by Patent Owner’s argument. To the contrary, we are persuaded by Petitioner’s argument that Lee is analogous art, under at least the first Clay criterion, because it “discloses various techniques for deploying electrodes from the tip of an RF ablation device.” Pet. 18.” slip op. at 24

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Dr. Tucker’s testimony is not a bald conclusion. His conclusion as to a reasonable expectation of success is set forth in paragraph 148 of his declaration. Ex. 1031 ¶148. It is supported extensively with testimony regarding what the prior art teaches (see id. ¶¶110–117 (Racz), ¶¶118–123 (Fitz), ¶¶124–131 (Lee)) and why and how a POSA would have combined the prior art teachings (see id. ¶¶132–147). Dr. Tucker’s testimony clearly is entitled to weight. Since 1983, he has “been a Professor at the University of Iowa where [he] direct[s] an active research program in radiofrequency electrosurgical procedures and instrumentation.” Ex. 1031 ¶3. He has a Ph.D. in biophysics, and he is also a medical doctor (albeit he is not Board certified as pointed out by Patent Owner19). Id. ¶2. He also has additional training and experience that is relevant, but which is not necessary, but further establishes that he is well qualified to offer the opinions set forth in his declaration. Id. ¶¶2–11. Patent Owner argues that Dr. Tucker is not qualified to testify here because “he is not Board certified” and he is “not a pain-specialist physician and has never performed a neurotomy.” PO Resp. 30. Dr. Tucker explained, however, that he is not Board certified nor does he operate on 19 See PO Resp. 30 (citing Ex. 2020, 10:19–12:20). patients because his work focuses on the development of instrumentation, not the use of it, explaining on cross-examination:” slip op. at 39

  Patent outcomesUS 10,966,782 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,966,782

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.