• Merck Sharp & Dohme LLC v. Halozyme, Inc.All claims unpatentable
  PTAB · Oct 15, 2026 · PGR2025-00030 · APJ Susan L C Mitchell · PGR · Final written decision

  Claims 1, 2, and 6–30 are unpatentable under §112(a) for lack of written description and lack of enablement; the §103 ground was not reached.

  RulingsFinal written decision

  • Additional discoveryAdditional discovery, deniedDenied

    “Patent Owner filed a Motion for Additional Discovery (Paper 42), Petitioner opposed the motion (Paper 44), and the Board denied the motion (Paper 47).” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “of the ’758 patent supports an understanding that some activity is required for a polypeptide to be a “modified PH20 polypeptide,” and it is the enzymatic activity of hyaluronidase specifically that is the most frequently identified activity recited in the Definitions section of the ’758 patent. Indeed, both the definitions of “PH20” and “modified PH20 polypeptide” require hyaluronidase activity. See Ex. 1001, 45:54–55, 50:39–41 (“PH20 refers to a type of hyaluronidase that . . . is neutral-active” and “neutral active refers to the ability . . . to enzymatically catalyze the cleavage of hyaluronic acid at neutral pH”); 48:43–46 (“A modified PH20 polypeptide can have up to 150 amino acid replacements so long as the resulting modified PH20 polypeptide exhibits hyaluronidase activity.”). Similar language is used later in the definition of a “conjugate” to explain that even when the modified PH20 polypeptide is linked to another polypeptide or chemical moiety it “retains hyaluronidase activity.” Id. at 63:39–46. In contrast, the discussion regarding the potential use of “modified PH20 polypeptides that are inactive” as antigens in contraception vaccines appears only in non-definitional sections of the ’758 patent. Id. at 72:63–65, 75:60–62. Accordingly, we find that this disclosure does not modify the definition’s explicit requirement that the claimed “modified PH20 polypeptide” exhibit hyaluronidase activity. Id. at 48:38–46.” slip op. at 21

  • Skill levelOther

    “II. ANALYSIS A. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “this testimony to at most describe a research plan (i.e., a “tool to engage in further modification”16) for finding the recited polypeptides rather than demonstrating the inventors were in possession of the full scope claimed. This is particularly so given the limits of the then-available analytical tools noted above and the fact that the structural connections and three dimensional modeling Patent Owner’s experts attempt to make (see, e.g., Ex. 2070 ¶¶ 129–213; Ex. 2068 ¶¶ 123–125) do not appear in the written description itself. To the extent the experts disagree on this point, we credit the testimony of Petitioner’s experts over that of Patent Owner’s. See Ex. 1133 ¶¶ 111–251 (identifying problems with the approaches proposed by Patent Owner’s experts). For these reasons, we find that a preponderance of the evidence of record better supports a finding that in the 2011–2012 timeframe, it would have been unpredictable to identify which multiple mutants retained hyaluronidase activity, even with the single substitution data provided by the ’758 patent.” slip op. at 56

  Patent outcomesUS 12,054,758 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 12,054,758
• Merck Sharp & Dohme LLC v. Halozyme, Inc.All claims unpatentable
  PTAB · Oct 1, 2026 · PGR2025-00052 · APJ Cynthia M Hardman · PGR · Final written decision

  Claims 1–17 are unpatentable for lack of written description, lack of enablement, and indefiniteness; the Board did not find them unpatentable as obvious.

  RulingsFinal written decision

  • Skill levelOther

    “II. ANALYSIS A. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 7

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

    “Specification of the ’345 patent supports an understanding that some activity is required for a polypeptide to be a “modified PH20 polypeptide,” and it is the enzymatic activity of hyaluronidase specifically that is the most frequently identified activity recited in the Definitions section of the ’345 patent. Indeed, the definitions of “PH20” and “modified PH20 polypeptide” both require hyaluronidase activity. See Ex. 1001, 44:20–21, 49:4–7 (“PH20 refers to a type of hyaluronidase that . . . is neutral-active” and “neutral active refers to the ability . . . to enzymatically catalyze the cleavage of hyaluronic acid at neutral pH”); 47:8–11 (“A modified PH20 polypeptide can have up to 150 amino acid replacements so long as the resulting modified PH20 polypeptide exhibits hyaluronidase activity.”). Similar language is used later in the definition of a “conjugate” to explain that even when the modified PH20 polypeptide is linked to another polypeptide or chemical moiety it “retains hyaluronidase activity.” Id. at 61:60–67. In contrast, the discussion regarding the potential use of “modified PH20 polypeptides that are inactive” as antigens in contraception vaccines appears only in non-definitional sections of the ’345 patent. Id. at 71:16-18, 74:11–13. Accordingly, we find that this disclosure does not modify the definition’s explicit requirement that the claimed “modified PH20 polypeptide” exhibit hyaluronidase activity. Id. at 47:3–11.” slip op. at 20

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “description (see Capon, 418 F.3d at 1357–58), Patent Owner is trying to extend that to include that which is at most obvious from the prior art, as opposed to what is actually described. That is, it may have been obvious to a POSA to align PH20 sequences with other known hyaluronidase enzymes and to use the crystal structure of a different hyaluronidase (Hyal-1) in SWISS-MODEL to generate a three-dimensional structure, but none of that is described in the common disclosure itself. “[A] description that merely renders the invention obvious does not satisfy the [written description] requirement.” Ariad, 598 F.3d at 1352. While a POSA might be able to embark on their own research program to try to find suitable multiply-modified PH20 polypeptides, the four corners of the written description do not demonstrate possession of such. See id. at 1356‒57 (recognizing that “[p]erhaps one of ordinary skill could discover this information, but this does not alter our conclusion that the description . . . just represent[s] a wish or arguably a plan for future research”) (internal quotation omitted).” slip op. at 66

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledUnpatentable

    “instances of epistasis are “rare” and an inactive PH20 polypeptide “will stay inactive . . . absent intentional ‘rescue’ mutations.” See Sur-reply 12–14. But the claims encompass far more than combinations of just two substitutions, and even Dr. Petsko concedes there are “billions” of sequences within the recited sequence space that will not properly fold. See Ex. 2070 ¶ 347; see also Ex. 1133 ¶ 237 (“While some [residues critical to protein structure] can be predicted (e.g., highly conserved positions), many others cannot without experimentation.”). Accordingly, we find Petitioner’s position more persuasive than Patent Owner’s competing position and evidence.” slip op. at 108

  Patent outcomesUS 12,264,345 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 12,264,345
• Merck Sharp And Dohme LLC v. Halozyme, Inc.All claims unpatentable
  PTAB · Sep 25, 2026 · PGR2025-00039 · APJ Michael A Valek · PGR · Final written decision

  Claims 1–4 and 7–11 are unpatentable because the challenged claims lack written-description support and are not enabled.

  RulingsFinal written decision

  • Adverse judgmentAdverse judgmentOther

    “1 Although the Petition was directed to claims 1–11 of the ’185 patent, Patent Owner filed a statutory disclaimer of claims 5 and 6 prior to institution, leaving just claims 1–4 and 7–11 at issue. See Ex. 2003.” slip op. at 2

  • Skill levelOther

    “II. ANALYSIS A. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “B. Claim Construction In a post-grant review, we interpret a claim “using the same claim” slip op. at 11

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “For these reasons, we find that a preponderance of the evidence” slip op. at 59

  Patent outcomesUS 12,104,185 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 12,104,185
• Merck Sharp And Dohme LLC v. Halozyme, Inc.All claims unpatentable
  PTAB · Sep 25, 2026 · PGR2025-00033 · APJ Michael A Valek · PGR · Final written decision

  Claims 1, 2, and 6–29 are unpatentable for lack of written description and enablement; the Board did not find them obvious over the ’429 patent and Chao.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “structural connections and three-dimensional modeling Patent Owner’s experts attempt to make (see, e.g., Ex. 2070 ¶¶ 126–212, 297–342; Ex. 2068 ¶¶ 123–125, 245, 294–313, 318) do not appear in the written description itself. To the extent the experts disagree on this point, we credit the testimony of Petitioner’s experts over that of Patent Owner’s. See Ex. 1133 ¶¶ 111–230 (identifying problems with the approaches proposed by Patent Owner’s experts). For these reasons, we find that a preponderance of the evidence of record better supports a finding that in the 2011–2012 timeframe, it would have been unpredictable to identify which multiple mutants retained hyaluronidase activity, even with the single substitution data provided by the ’652 patent.” slip op. at 58

  • Skill levelOther

    “II. ANALYSIS A. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Decided for petitioner

    “exclude the use of modified PH20 polypeptides as contraceptives—the only other possible utility described in the ’652 patent—is unavailing. Resp. 39. First, “[t]he fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.” Phillips, 415 F.3d at 1327 (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004)). Second, unlike the definitions of “PH20” and “modified PH20 polypeptide” in the “Definitions” section of the Specification, the passages describing possible contraceptive use do not contain any characteristics suggesting they are definitional in nature. See Alnylam, 138 F.4th at 133 (enumerating “characteristics” such as the fact that the text appears in the “Definitions” section, sets the term off in quotation marks, and uses phrases like “refer to” that indicate that specification language is definitional in nature). Accordingly, the statement that “[a]lso provided are modified PH20 polypeptides that are inactive, and that can be used, for example, as antigens in contraception vaccines” (Ex. 1001, 75:56–58), does not redefine the term, nor otherwise void the definitional language in the Specification stating that a “modified PH20 polypeptide can have up to 150 amino acid replacements, so long as the resulting modified PH20 polypeptide exhibits hyaluronidase activity.” Id. at 48:47–49 (emphasis added).” slip op. at 26

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “1352. While a POSA might be able to embark on their own research program to try to find the genus of multiply-modified PH20 polypeptides recited in the challenged claims, the four corners of the written description here do not demonstrate the inventors were in possession of such. See id. at 1356–57 (recognizing that “[p]erhaps one of ordinary skill could discover this information, but this does not alter our conclusion that the description . . . just represent a wish or arguably a plan for future research”) (internal quotation omitted).” slip op. at 68

  Patent outcomesUS 12,049,652 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 12,049,652
• Samsara Inc. v. Motive Technologies, Inc.No claims unpatentable
  PTAB · Jul 29, 2026 · IPR2025-00574 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–7 were not shown unpatentable because the asserted combinations did not establish the claimed video overlay and transmission for manual review.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Petitioner’s contentions in this ground do not cure the issues for limitations 1D and 1E. Petitioner’s contentions in this ground involve combining Khan and Ali’s teachings of identifying a horizon line and lane lines with Choe. For example, Petitioner argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have combined known elements according to known methods to yield predictable results” and that “[i]mplementing these known mathematical models in Choe’s calibration system, according to their known functions, would have yielded predictable results.” Pet. 39. Petitioner further argues that “[u]sing predictive models for Choe’s lane and horizon prediction would have used a known technique (predictive models) to improve similar devices in the same way” and that “[u]sing predictive models for Choe’s lane and horizon prediction would have also applied a known technique (predictive models) to a known device (a manual annotator device) ready for improvement.” Pet. 40. Petitioner’s proposed combination, therefore, still relies on Choe’s teachings of transmitting an overlaid image to an annotator device. We note that Petitioner asserts that, “[o]nce Khan in view of Ali identifies the horizon and lane lines, it overlays the horizon line and/or lane lines on the video, as shown in the screenshots below.” Pet. 41–42. Although Petitioner mentions Khan and Ali’s teachings with respect to video here, Petitioner does not adequately explain how the teaching of an overlaid video would be combined with Choe’s single image annotator teachings. As discussed above, Choe discloses transmitting a single overlaid image to the annotator” slip op. at 23

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

    “Thus, Petitioner has not provided sufficient evidence and argument to explain how the additional teachings of Khan and Ali teach limitations 1D and 1E in combination with Choe. Petitioner, therefore, has not demonstrated unpatentability of claims 1–5 by a preponderance of the evidence. F. Obviousness over Choe and Workman (Claims 1–4) Petitioner asserts that claims 1–4 would have been obvious over the combined teachings of Choe and Workman. Pet. 47–52; Pet. Reply 26–30. Petitioner asserts that, “if [Patent Owner] alleges that Choe does not explicitly disclose which predictive models it uses or whether it uses predictive models to identify the horizon line, a [person of ordinary skill in the art] would have searched for references that use predictive models and how such models were used,” which “would have led to Workman, which discloses predictive models to identify the horizon line.” Pet. 47. According to Petitioner, “[u]sing Workman’s predictive model to identify the horizon line would also have merely been combining known elements ([convolutional neural networks (CNNs)] and annotation for camera calibration) according to known methods to yield predictable results and used known techniques (CNNs) to improve similar devices in the same way.” Pet. 48–49. Thus, Petitioner relies on Workman to teach a predictive model to identify a horizon line. See Pet. 47–49. Choe with respect to limitations 1D and 1E. Indeed, Workman involves horizon line estimation in single images. See Ex. 1011, 10 (§ 5) (“We introduced Horizon Lines in the Wild (HLW), a new dataset for single image horizon line estimation, to address the limitations of existing horizon line detection datasets.”). Petitioner, therefore, has not demonstrated unpatentability of claims 1–4 by a preponderance of the evidence.” slip op. at 24

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Patent Owner criticizes Petitioner’s proposed level of ordinary skill for not requiring “any training or experience in ‘automotive systems,’ precisely what the ’580 [p]atent relates to.” PO Resp. 7. According to Patent Owner, a person of ordinary skill in the art would have had “a training and/or experience in design of software for camera/sensor systems in the automotive industry.” PO Resp. 8–9 (citing Ex. 2003 ¶ 35).” slip op. at 5

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

    “C. Claim Construction We need not construe expressly any claim terms to decide the issues before us. 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 6

  Patent outcomesUS 11,875,580 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,875,580
• Twitch Interactive, Inc. v. Razdog Holdings LLCAll claims unpatentable
  PTAB · Jul 27, 2026 · IPR2025-00308 · APJ Aaron W Moore · IPR · Final written decision

  The Board held claim 1 unpatentable as obvious over Darnell and Kim, and over Dasgupta and Darnell; Judge Moore dissented as to the Dasgupta and Kim ground.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner

    “2. “Real Time” – The Parties’ Positions In the preliminary phase of this proceeding, the principal claim term” slip op. at 9

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

    “1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of” slip op. at 35

  • Expert testimonyOther

    “form of storage or minimal time delay, and Patent Owner concedes as much in this proceeding. See, e.g., Ex. 1082, 125:19–22, 126:3–10; Tr. 41:26– 42:14, 53:20–25. Accordingly, the mere fact that Darnell’s system may aggregate content feeds or content items on a server, merge content, store content, and then deliver content to a user interface, does not preclude it from being done in “real time” as that term would be understood by a person of ordinary skill in the art reading the ’654 patent in its entirety.” slip op. at 48

  Patent outcomesUS 10,334,068 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,334,068
• Twitch Interactive, Inc. v. Razdog Holdings LLCAll claims unpatentable
  PTAB · Jul 27, 2026 · IPR2025-00307 · APJ Kevin C Trock · IPR · Final written decision

  Claims 1–18 are unpatentable: the majority finds them obvious over the asserted prior-art combinations, including Darnell and Kim and Dasgupta-based combinations.

  RulingsFinal written decision

  • BurdenFwd all claims unpatentableUnpatentable

    “§ 6. This Final Written Decision issues pursuant to 35 U.S.C. § 318(a) (2018) and 37 C.F.R. § 42.73 (2019). For the reasons discussed herein, we determine that Petitioner, Twitch Interactive, Inc., has shown by a preponderance of the evidence that claims 1–18 (the “challenged claims”) of U.S. Patent No. 9,729,658 B2 (Ex. 1001, “the ’658 patent”) are unpatentable. See 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2019).” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “2. “Real Time” – The Parties’ Positions In the preliminary phase of this proceeding, the principal claim term” slip op. at 10

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

    “1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of” slip op. at 37

  Patent outcomesUS 9,729,658 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,729,658
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.No claims unpatentable
  PTAB · Jul 10, 2026 · IPR2025-00147 · APJ Linda E Horner · IPR · Final written decision

  The Board found claims 1–6 and 8–20 not shown unpatentable under three obviousness grounds, principally because the proposed combinations did not establish a feasible curved battery or transparent potting encapsulating the components.

  RulingsFinal written decision

  • Skill levelSkill level board ownOther

    “at least a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, or equivalent experience, and at least two years’ experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. Pet. 8 (citing Ex. 1002 ¶ 29). Petitioner also contends that a person of ordinary skill would have been “familiar with, e.g., sensor system design, including inertial and other motion sensor system design, and signal processing” and that “[a] higher level of education or skill might make up for less experience, and vice versa.” Id. Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 25. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’124 patent and the references cited in the Petition.” slip op. at 10

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

    “We need not reach the issue of whether the preamble is limiting for purposes of determining patentability of the challenged claims. Even were we to agree with Patent Owner that the preamble is limiting and the claims are limited to a finger-worn ring wearable computer device, Petitioner has relied on Schröder in each ground to disclose a “wearable computing device configured to be worn around a finger of a wearer.” Pet. 22 (Ground 1), 45 (Ground 2, relying on Yuen for adding the functionality of light sources with a photodetector, temperature sensors, and varying the sampling frequency of sensor data acquisition), 56 (Ground 3). We agree with Petitioner that Schröder discloses such a device. Thus, no explicit claim construction is necessary for this decision.” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundNot shown unpatentableNot shown unpatentable

    “We are not persuaded by Petitioner’s arguments and find that Patent Owner has the better position for several reasons. First, the record supports Patent Owner’s argument that Mestas’s batteries are much too large to fit within a ring form factor, and “would have to be reduced in size on the 6 There is no Exhibit 2022 in the record of this case. magnitude of 5-10x from its current size to fit in a ring of Schröder.” Resp. 38 (citing Dr. Anthony’s cross-examination testimony at Ex. 2021, 313:12). Second, Petitioner relies on evidence in the Reply that Petitioner failed to specifically identify in the Petition. Compare Reply 3–5 (citing Ex. 1369 ¶¶ 7–14; Ex. 1079 ¶¶ 47, 71; Ex. 2022, 138:7–143:1; Ex. 1002 ¶¶ 96, 337; Ex. 2021, 12–13, 307:7–17; Ex. 2020, 212:6–214:13; Ex. 1081, 130:18–131:14; Ex. 1010 ¶ 168), 9 (referring back to Section § II.B.2) with Pet. 25–26 (citing Ex. 1002 ¶¶ 193–99; Ex. 1010 ¶¶ 157, 163, 168, 201, Fig. 6). More specifically, while the portion of Dr. Anthony’s Declaration cited in the Petition (see Pet. 25–26 (citing Ex. 1002 ¶¶ 193–99)) mentions the Technology Background Section V of his Declaration (Ex. 1002 ¶¶ 42–147), neither Petitioner nor Dr. Anthony sufficiently explains what evidence supports his opinion that it was feasible to incorporate batteries or battery-like devices into finger-rings, or how a person of ordinary skill in the art would have miniaturized a curved battery for incorporation into Schröder’s ring. Ex. 1002 ¶ 196 (describing that rechargeable batteries powering wearable electronic devices were “well-known by 2013” and “had also undergone significant advances in terms of miniaturization and energy density [that] made it feasible to incorporate batteries or battery-like devices such as supercapacitors into smaller form factors, such as finger rings, without sacrificing functionality” such as “lithium-polymer (Li-Po) batteries and solid-state batteries.”). Moreover, some of Petitioner’s citations in the Reply appear to be incorrect as there is no Exhibit 2022 of record in this case, as noted above. These issues undermine the strength of Petitioner’s showing by making it difficult to follow its reasoning, much less identify where in the record that reasoning finds support. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”); United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”). Third, even considering Petitioner’s new Reply arguments and” slip op. at 27

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “We credit Dr. Mercier’s testimony over Dr. Anthony’s and agree that Dr. Anthony’s testimony fails to account for the constraints of a substantially smaller form factor in Schröder’s finger-ring as compared to Mestas’s wrist device. Ex. 2018 ¶ 140. Although large curved batteries suitable for use in a wrist band or other larger wearable device, such as shown in Mestas, were known at the time of the ’124 patent, we also have evidence that prior art “finger ring wearables up to the ’124 patent had used ‘coin’ type batteries.” Resp. 40 (citing Ex. 2018 ¶ 140). We credit Dr. Mercier’s testimony that a person having ordinary skill in the art would have looked to a coin type battery for the necessary power requirements of Schröder’s device. Ex. 2018 ¶ 141. Indeed, this testimony is consistent with the other art of record that consistently shows the use of flat batteries in finger-ring devices, often stacked above and protruding from the general ring shape of the device. See, e.g., Ex. 1005 (Niwa), Figs. 22, 28; Ex. 2025 (Asada ’701 patent), Fig. 4; Ex. 1035 (Rhee), Figs. 7-1, 8-1, 8-2; Ex. 1037 (Asada article), Fig. 9; Ex. 1034 (Asada ’199 patent), Fig. 2; Ex. 1028 (Kimura patent), Fig. 24; Ex. 2018 ¶¶ 74–84. In fact, Oura’s first-generation ring design, released in 2015, used a Superbowl ring type design, with the battery and other components mounted on top of the ring. Ex. 2034; Ex. 2018 ¶ 85. We also agree with Dr. Mercier that Dr. Anthony’s testimony lacks evidence or a technical analysis of the power requirements for the various sensors he suggests including in a wearable device and the capacity of the proposed GMBPow battery. See, e.g., Ex. 1002 ¶¶ 94, 210, 214–17; Ex. 2018 ¶ 97. Moreover, Dr. Anthony does not address the issues with the batteries that are identified in the references he discusses. For example, Dr. Anthony does not address Lee’s disclosure that “direct coating of electrode slurry onto plain paper led to the occasional internal-shorting of the device due to the leakage of the electrode material through a large-sized hole in the paper.” Ex. 1019, 2415. In contrast, Dr. Mercier discusses the pitfalls the skilled artisan faced in developing finger-ring devices. See, e.g., Ex. 2018 ¶¶ 77–79 (discussing the issues Rhee’s and Asada’s large rings), 83 (identifying power requirements as a design constraint). For example, Dr. Mercier explains that “flexible or curved batteries include flexible packaging materials such as aluminum laminated films that house the electrodes and electrolyte” such that “once the battery packaging is added to a battery such as GMBPow and then placed within a housing (e.g., external housing shell and internal potting), the resulting device would have dimensions that are not suitable for a finger-worn ring.” Id. ¶ 96 (citing Ex. 2026).” slip op. at 34

  Patent outcomesUS 11,188,124 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,188,124
• Tesla, Inc. v. Intellectual Ventures II LLCAll claims unpatentable
  PTAB · Jun 26, 2026 · IPR2025-00220 · APJ Kristen L Droesch · IPR · Final written decision

  Claims 1–18 are unpatentable under § 103 over Wallen and Berggren because the combined teachings render the claimed subject matter obvious.

  RulingsFinal written decision

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

    “We agree that Patent Owner’s proposed claim construction is wholly unsupported by, and inconsistent with, the language of independent claims 1, 7, and 13, and the aims of the ’670 Patent Specification. See Ex. 1001, 2:3– 25, 9:32–10:5, 12:51–67, 18:54–19:6, 19:26–42, 20:12–26. Moreover, the cited extrinsic evidence––testimony by Patent Owner’s expert Dr. Lomp–– does not support Patent Owner’s proposed construction because it is internally inconsistent and also undermined by Dr. Lomp’s inconsistent deposition testimony. See Ex. 1036, 11:6–17, 12:9–12; Ex. 2010 ¶¶ 40, 48. Similarly, the extrinsic evidence cited by Petitioner (e.g., Exs. 1037, 1038, 2009) undermines Patent Owner’s position emphasizing the intended recipient devices of SIB1. In summary, we decline to adopt Patent Owner’s proposed claim construction because it is unsupported by the claim language, the ’670 Patent Specification, and the cited extrinsic evidence. with the ordinary and customary meaning which does not include limiting SIB1 to an ordinary legacy SIB and excluding MTC specific SIBs or SIBs intended for MTC devices. In addition, we need not construe explicitly any other claim term or phrase. See, e.g., Nidec Motor Corp. 868 F.3d at 1017 (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had a bachelor’s degree from an accredited program in electrical engineering, computer engineering, computer science, or equivalent training, and at least two years of professional experience relating to wireless communication technology” and “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 15–16 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’670 Patent Specification and the prior art of record. slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “filing date. As explained above, the burden of production shifted to Patent Owner to show that Wallen is not prior art because the ’670 Patent is entitled to the earlier January 20, 2012, filing date of foreign priority application GB1201000. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). Patent Owner’s arguments fail to meet this burden of production because, aside from addressing a system information block 1, Patent Owner’s arguments do not substantively address how GB1201000 provides written description support for any other limitations of the claimed invention. See PO Resp. 43, 57. Accordingly, Patent Owner has not met its burden of production in coming forward with evidence or argument to show possession of the claimed invention in foreign priority application GB1201000, the burden of production did not shift back to Petitioner, and,” slip op. at 18

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

    “primary synchronization signal (PSS), a secondary synchronization signal (SSS), and a physical broadcast channel (PBCH) including a master information block (MIB).” See Pet. 41–42 (citing Ex. 1003 ¶¶ 70–75; Ex. 1005 ¶¶ 76, 77, 83–84). Petitioner implicitly acknowledges that Wallen does not expressly disclose a physical broadcast channel (PBCH), but relies on Berggren for confirming that the LTE standard specifies that a PBCH carries the MIB. See Pet. 42–43 (citing Ex. 1003 ¶ 74; Ex. 1007 ¶¶ 73–75). According to Petitioner, “a person of ordinary skill in the art would have been motivated to transmit Wallen’s MIB using a PBCH as taught by Berggren.” Pet. 43 (citing Pet. 33–38). In particular, Petitioner asserts that a person of ordinary skill in the art “would have been motivated for Wallen’s LTE system to utilize the LTE standard implementation details taught by Berggren,” and “it would have been predictable and beneficial for Wallen’s user equipment to receive the MIB in the [PBCH], as was standard in LTE.” Pet. 34 (citing Ex. 1003 ¶ 58), 37 (citing Ex. 1003 ¶ 63). According to Petitioner, “the combination is nothing more than ‘the predictable use of prior art elements according to their established functions.’” Pet. 38 (citing KSR, 550 U.S. at 417). Based on the entire record developed during trial, we are persuaded by a preponderance of the evidence that Petitioner provides sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to a person of ordinary skill in the art to modify Wallen’s broadcast MIB with Berggren’s teachings of using a PBCH for transmitting broadcast MIBs. See Pet. 33–38; KSR, 550 U.S. at 418.” slip op. at 24

  Patent outcomesUS 11,206,670 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,206,670
• Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Jun 23, 2026 · IPR2025-00219 · APJ Frederick C Laney · IPR · Final written decision

  Claims 11–22 were not shown unpatentable under any § 103 ground because the prior art did not teach or suggest receiving the claimed resource allocation and multi-level TPC command on one physical channel.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Moreover, a petitioner should 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’153 patent issued claims priority to an application filed before this date, the pre-AIA version of § 103 applies. not “place the burden on [the Board] to sift through information presented by the Petitioners, determine where each element [of the challenged claims] is found in [the cited references], and identify any differences between the claimed subject matter and the teachings of [the cited references.]” Google Inc. v. EveryMD.com LLC, IPR2014-00347, Paper 9 at 25 (PTAB May 22, 2014).” slip op. at 5

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “The second and third asserted benefits—reduced complexity and reduced latency—rest on the declaration of Dr. Kotzin (Ex. 1003 ¶ 64) rather than on any disclosure of Andersson or Khan. We accord that testimony little weight on this point because it asserts the benefits in conclusory terms without explaining why they would result from inserting a scheduling grant into Andersson’s undefined “other bits,” as distinct from Khan’s separate-slot design.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill in the Art Petitioner asserts that ordinarily skilled artisans “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of wireless communication systems or design of similar communication systems.” Pet. 14. Petitioner’s proposed definition, which Patent Owner does not dispute, appears reasonable and consistent with the asserted prior art and the ’500 Patent. Therefore, we adopt it as the ordinary level of skill of an artisan in the field of the patented technology for our analysis below.” slip op. at 7

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

    “Patent Owner offers a proposed construction for the recited “single physical channel” found in limitation 11.2 and “an accumulation of TPC commands” found in independent claims 12 and 18. PO Resp. 9–17. Petitioner likewise addresses the scope of an accumulation of TPC commands, but Petitioner does not contest directly Patent Owner’s proposed construction for “single physical channel.” Pet. Reply 2–7. We determine, however, that no express construction of any claim term is necessary to resolve the dispute between the parties. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  Patent outcomesUS 9,706,500 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,706,500

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.