- PTAB · Oct 21, 2025 · IPR2025-00057 · APJ Hung H Bui · IPR · Remand
The Board denied institution on all challenged claims because the conjunctive construction required a hardware action, which the asserted grounds did not show.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A patent claim is unpatentable under 35 U.S.C. § 103(a) when the 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) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“(1) The Claim Language Supports a Conjunctive Construction There is a “heavy presumption” that the terms used in claims “mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” SuperGuide, at 875 (citing Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002)).” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. First, the construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is conjunctive in light of the language of the claims and the specification of the ’887 patent. As such, Petitioner has the burden, but fails to show all three (3) components to be reproduced at Yun’s mobile device, including: [A] the display, [B] the audio and [C] the hardware (HW) action by the HW component of the mobile device. Second, as Patent Owner observes, and we agree, “Petitioner ignores the requirement for ‘the hardware (HW) action’ entirely” and does not even mention any “hardware (HW) action.” Prelim. Resp. 14 (Paper 10).” slip op. at 34
- Strike new argumentNew argument disregardedDecided for patent owner
“6 In the Petitioner’s Reply to the Patent Owner’s Preliminary Response, Petitioner presents several arguments to address the Fintiv factors, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). In support of Factor 6, Petitioner argues for the first time that Overton (not Yun or Lu) is allegedly teaching “the hardware (HW) action” aspect of the claims. Prelim. Reply 5 (citing Ex. 1006, 11:13–24 “force feedback . . . to the input devices 142 [shown in Figure 1]”). However, we decline to consider this belated argument raised for the first time in the context of a Fintiv analysis instead of the Petition.” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,934,887 - PTAB · Jan 21, 2025 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Remand
On remand, the Board denied institution because the petition failed to show a reasonable likelihood that any challenged claim was unpatentable, including over Hall and Borowski.
RulingsRemand decision- RemandOther
“We entered a first Decision Denying Institution of Inter Partes Review (Paper 8), and Petitioner filed a Request for Director Review (Paper 13). The former Director of the United States Patent and Trademark Office vacated our denial of institution and remanded for further proceedings consistent with the former Director’s decision. Paper 14. After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent. Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Accordingly, we do not institute an inter partes review of the ’236 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: “A [person of ordinary skill in the art (‘POSITA’)] as of August 24, 2016 would have had an undergraduate degree in mechanical engineering, electrical engineering, or physics, and two to three years of experience in LiDAR design.” Pet. 9 (citing Ex. 1003 ¶¶ 59–64). Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 9. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it is consistent with the ’236 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms explicitly to reach our 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))); see also Pet. 10 (“[N]o formal constructions are necessary.”); Prelim. Resp. 10 (“[N]o formal constructions are necessary.”).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,422,236 - PTAB · Apr 27, 2023 · IPR2022-00074 · APJ George R Hoskins · IPR · Final written decision
Original claims 1–13 were canceled by amendment; proposed substitute claims 14–26 were denied because “high pressure” is indefinite under § 112.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“original claims 1–13 of the ’732 patent, which are all of the claims challenged in the Petition. See Mot. Caption (“NON-CONTINGENT”), 1 (stating the motion is “Non-Contingent”), 2 (“The claim listing cancels original claims 1–13 . . . .”); Mot. App. A, 1 (stating original claims 1–13 are “Cancelled”); Pet. 17. Petitioner does not oppose this portion of the Motion to Amend. See generally Mot. Opp. Therefore, we grant Patent Owner’s request to cancel original claims 1–13. As a result, we do not reach the unpatentability grounds asserted in the Petition against these original claims.” slip op. at 5
- Skill levelSkill level board ownDecided for petitioner
“b) Person of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’732 patent would have either: “(1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least two years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production”; or “(2) at least four years of industry experience in the oil and gas industry, including well drilling, completion, or production.” Pet. 13. Patent Owner utilizes the same formulation of ordinary skill. See Mot. 13. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. The parties’ agreed-upon formulation of ordinary skill is consistent with the level of skill reflected in the ’732 patent and the prior art of record. We therefore apply it in the present Decision.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“witnesses cannot agree on a numerical definition of “high pressure.” Mr. Marscher says high pressure is between 5,000 psi and 15,000 psi (see Ex. 1030, 111:1–112:3), whereas Mr. Schaaf says high pressure is between 8,000 psi and 12,000 psi and specifically disagrees with Mr. Marscher’s testimony that high pressure can be below 8,000 psi (see Ex. 1031, 43:6–44:13). Although there are overlapping values in the witness testimony, we agree with Petitioner that the testimony does not evidence clear boundaries for how an ordinarily skilled artisan would interpret “high pressure.” See Mot. Sur-reply 6 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901–02 (2014); Interval Licensing, 766 F.3d at 1371). Thus, the testimony of Patent Owner’s own witnesses is contrary to Patent Owner’s position that an ordinarily skilled artisan would have understood the meaning of “high pressure.” Furthermore, neither Mr. Marscher nor Mr. Schaaf cites any objective evidence to support their respective notions of what “high pressure” might be, in the context of hydraulic fracturing. For example, neither witness cites to any published industry standards to support their respective opinions. This lack of objective evidentiary support weakens the persuasiveness of both witness’s testimony on this issue, especially because their opinions conflict with each other. We are instead persuaded by the testimony of Petitioner’s witness, Dr. Durham, who testifies that “[t]here is [no] general consensus about the precise boundaries of the term ‘high pressure,’ and different engineers can reasonably come to different conclusions as to the meaning of the term absent further guideposts.” Ex. 1036 ¶ 17; see also id. ¶ 19 (“There is no universally accepted definition of ‘high pressure.’”). Dr. Durham further testifies that “what might be sufficiently ‘high’ pressure for one fracturing application and according to one [person of ordinary skill in the art] may be not ‘high’ enough in another fracturing application and to another [such person].” Id. ¶ 18; see also id. ¶ 19 (“Merely stating that a pump fractures a formation says little to nothing about whether that pump should be deemed ‘high pressure’ or ‘not high pressure.’”).” slip op. at 30
- BurdenUnpatentable
“The intrinsic record does not “provide objective boundaries for those of skill in the art” to determine whether a given pressure is “high pressure” as recited in the proposed substitute claims. See Interval Licensing, 766 F.3d at 1370–71. Nor does the intrinsic record provide guidance to clarify the meaning of “high pressure.” As noted above, the ’732 patent refers only to “high pressure” without qualification or explanation as to how “high pressure” is determined. The prosecution history does not address “high pressure” in any meaningful way and, therefore, also fails to explain what pressures are “high” pressures. See generally Ex. 1003. Thus, the intrinsic record does not explain adequately what pressure(s) qualify as “high pressure,” nor differentiate “high pressure” from other pressures at which hydraulic fracturing can be performed.” slip op. at 27
Claim construction§ 112 disclosurecites NautilusPatents in suitUS 10,254,732 - PTAB · Jun 30, 2022 · IPR2021-00361 · APJ Stephen E Belisle · IPR · Final written decision
Claims 1, 2, 5, 7, 14, and 17 are unpatentable as anticipated by Dukach and obvious over Dukach, alone or with Dunsmuir.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention of the ’613 patent, “would have had a Bachelor’s degree in computer science or a related field, and two years of work experience in operating systems, file systems, networks, and/or client-server applications, though additional education or work experience can make up for more or less formal education.” Pet. 20 (citing Ex. 1002 ¶ 31). Patent Owner does not present an alternative definition of the skilled artisan, and does not dispute Petitioner’s definition thereof. See generally PO Resp.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“skilled artisan to have its “ordinary and customary meaning[],” allegedly “a stream of data bytes that can be read and written (among other common operations).” PO Resp. 3. But as noted by Petitioner (Pet. Reply 3–4), the only intrinsic evidence cited by Patent Owner does not support its proposed construction in the context of the ’613 patent; rather, such evidence favors Petitioner. See PO Resp. 4 (citing Ex. 1001, 2:35–45 (a “‘file is accessed via the file descriptor’”), 2:46–3:7 (“‘the system calls that access files via file descriptors do not distinguish between a file on media and a communication channel’”)); see also PO Resp. 7 (“It is undisputed that file descriptors were conventionally ‘associated with’ files stored on media, communication channels, and even hardware devices.” (emphasis added)). Patent Owner also cites extrinsic evidence, namely, Dunsmuir (Ex. 1007), to support its proposed construction: “Conceptually, a file consists of a stream of data bytes followed by a logical end-of-file. … Because UNIX file I/O is performed through a uniform file interface, a program that can read and write files can read and write anything.” PO Resp. 4 (quoting Ex. 1007, 22). But as noted by Petitioner (Pet. Reply 4–6), Patent Owner does not explain why this “conceptual” meaning set forth in the generic context of programming interfaces in a UNIX operating system would apply in the specific context of the ’613 patent. See Pet. Reply 4 (“[Patent Owner’s] proposed construction is problematic because it is inconsistent with the specification of the ’613 patent.”). Patent Owner also does not explain what “among other common operations” means in the context of its own proposed construction. For the foregoing reasons, and those discussed below, we agree with Petitioner’s proposed construction of “file.” First, the claims of the ’613 patent support Petitioner’s proposed construction. For example, claim 1 recites that a “file” is accessed via a file descriptor. Ex. 1001, 14:55. Claim 5 recites a file descriptor being associated with “a communication channel” and determining with what file type the file descriptor is associated. Ex. 1001, 15:44–57. Together, these limitations show that a “file” is an entity assessed via a file descriptor, and such an entity includes, for example, a communication channel (i.e., per these claims, a communication channel is a type of file associated with a file descriptor). We find nothing in the claims, and Patent Owner does not direct us to anything in the claims, that supports limiting the term “file” only to a “stream of data bytes that can be read and written.”” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“in the abstract, discloses the claimed “indicator,” but rather the inclusion (or storage or presence) of that number in a list of monitored file descriptors discloses such a stored “indicator.” See, e.g., Pet. 49 (“[The skilled artisan] would have understood that, before the listen( ) call or the accept( ) call attempts to access a file using a file descriptor, it examines the file descriptor to determine if it is on the list of monitored file descriptors—the ‘indicators’ of a file type associated with the control pipe for services to be performed by the front end server.” (emphasis added)); Pet. 37–38 (“Dukach utilizes the presence or absence of a file descriptor’s number stored in a list of monitored file descriptors to indicate the file type associated with the file descriptor, which is how the ’613 patent describes indicating a file type by the indicator’s presence or absence in an indicator table.”); see also Pet. Reply 13 (“Petitioner contended in the Petition and maintains that it is the presence of a file descriptor’s number on the list of monitored file descriptors, not the file descriptor’s number itself, that teaches the claimed indicator.” (bold omitted)); cf. PO Resp. 9 (“[A]n ‘indicator’ . . . must reflect . . . an indication that such file descriptor is associated with a communication channel.”). Patent Owner also variously argues “Dukach does not disclose or” slip op. at 34
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In our Institution Decision, we credited the foregoing and related testimony of Dr. Greenspun (Ex. 1002 ¶¶ 96–98), and noted that Patent Owner at that stage of the proceeding had not offered any evidence to rebut Dr. Greenspun’s testimony. Dec. 30–31. Despite that, as highlighted by Petitioner, Patent Owner still offers no evidence to rebut Dr. Greenspun’s testimony in this regard. See Pet. Reply 16 (“But in arguing all these [above arguments], [Petitioner] presents no rebuttal evidence—neither a deposition testimony of Dr. Greenspun, nor a rebuttal testimony by its own expert, nor any other evidence.”); see generally PO Resp. Instead, Patent Owner merely declares Dr. Greenspun’s testimony “conclusory” and tainted by “vague leap[s]” (see, e.g., PO Resp. 14), but yet makes such accusations against a technical declarant with nothing but attorney-argument. Regardless, for the same reasons given by Petitioner (see Pet. Reply 16–18), we disagree with Patent Owner and continue to credit Dr. Greenspun’s technical testimony as to the subject limitation. See Pet. Reply 16–18 (Petitioner explaining why “[Patent Owner’s] attorney argument is wrong”.). As noted above, Patent Owner variously argues Dukach does not disclose “storing” of the indicator at issue in this limitation. See generally PO Resp. 7–17. To summarize, we disagree with Patent Owner, and as explained above, are persuaded by Petitioner’s evidence, including the unrebutted testimony of Dr. Greenspun, that Dukach discloses storing information that points to a file type associated with a file descriptor. First, we are persuaded that, in Dukach, the presence or absence of a file descriptor’s number in the list of monitored file descriptors constitutes information that points to a file type associated with the file descriptor. See Pet. 37–40 (citing, inter alia, Ex. 1005, 11:5–40; Ex. 1002 ¶ 96; Ex. 1001, 11:12–42). Second, we also are persuaded that, in Dukach, the list of monitored file descriptors “needs to be maintained in memory such that it can be used by software to check an at-issue file descriptor’s presence or absence in the list,” which constitutes storing the indicator. Pet. Reply 16– 17 (quoting Ex. 1002 ¶ 97); see Pet. 40 (citing Ex. 1002 ¶ 97). Finally, even if Patent Owner were correct that Dukach does not disclose a particular embodiment in the ’613 patent (see, e.g., PO Resp. 15 (discussing an embodiment “only applicable for binary file types”)), the issue before us is not whether Dukach indeed discloses such an embodiment, but rather whether Dukach discloses the invention recited, for example, in claim 1, given the breadth (scope) of the limitations defining that invention.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,560,613 - PTAB · Aug 12, 2020 · PGR2019-00032 · APJ David Cotta · PGR · Final written decision
The Board granted cancellation of claim 8 and denied entry of substitute claim 11 because Petitioner showed it would have been obvious over Omura, Tsuji, and the knowledge of a person of ordinary skill.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“In our Institution Decision, we agreed with the position Patent Owners took in their Preliminary Response – i.e, that the focus of the challenged claims was enzyme-based biosensors and thus the POSA would have more than just a familiarity with enzyme-based biosensors and protein chemistry. Inst. Dec. 8–9. Accordingly, based on the record before us at the time, we accepted the definition provided in Patent Owners’ Preliminary Response, which was consistent with the level of skill reflected in the asserted prior art references and in the specification of the ‘987 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art). Neither party challenges the identification of the POSA set forth in our Institution Decision. See generally, R. Mot.; Opp.; Reply; Sur-reply. Additionally, we find that the fully developed trial record supports the POSA identification we made in our Institution Decision. Accordingly, in this decision, we apply the identification of the POSA set forth in our Institution Decision. Inst. Dec. 9.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For purposes of this decision, we need not expressly construe any claim terms.” slip op. at 10
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“first, substitute claim 11 would have been obvious over Omura in view of the knowledge of the POSA, and second, substitute claim 11 would have been obvious over the combination of Omura and Tsuji in view of the knowledge of the POSA. Opp. 7–24. We have considered the question of patentability in view of all the evidence and arguments presented in this proceeding. Based on the record developed during this proceeding, we determine that Petitioner has shown by a preponderance of the evidence that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA. Because Petitioner has proven that substitute claim 11 would have been obvious, as discussed in detail below, we do not consider whether Patent Owners’ motion otherwise complies with the statutory and regulatory requirements for a motion to amend. See, 35 U.S.C. § 326(d)(1)(B) (requiring that the amendment propose a “reasonable number of substitute claims” and requiring that the substitute claims do “not enlarge the scope of the claims of the patent or introduce new matter”); 37 C.F.R. § 42.221 (additionally providing, inter alia, that a motion to amend “may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial”). Similarly, because we have determined that substitute claim 11 would have been obvious over the combination of Omura, Tsuji, and the knowledge of the POSA, as discussed in detail below, we do not reach the question of whether substitute claim 11 would also have been obvious over only Omura in view of knowledge of the POSA.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“includes “research experience and/or knowledge in enzymology . . . and biosensors,” we agree with Petitioner that it would have been obvious to a POSA to substitute FAD-conjugated glucose dehydrogenase derived from the claimed strain of Aspergillus oryzae for FAD-conjugated glucose dehydrogenase derived from Aspergillus terreus as disclosed in Omura.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,976,125 - PTAB · Feb 3, 2020 · IPR2018-01373 · APJ Michael R Zecher · IPR · Final written decision
The Board granted cancellation of claims 1–9 and denied substitution of claims 10–12 because Wallace anticipated and rendered the substitute claims obvious.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“need.” 37 C.F.R. § 42.121(a)(3) (2018). Patent Owner proposes three substitute claims—one for each of cancelled independent claims 1, 4, and 7. Mot. to Amend 1, Claims App’x. We determine that the number of proposed substitute claims is reasonable under 35 U.S.C. § 316(d)(1)(B) and 37 C.F.R. § 42.121(a)(3).” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Apart from Dr. Sharony’s assessment requiring a Bachelor of Science degree in Electrical Engineering or an equivalent degree and Dr. Wicker’s assessment requiring a Master’s degree in Electrical Engineering, we do not discern a material difference between the assessments advanced by the declarants. In any event, each party’s declarant appears to meet or exceed both parties’ assessments (see Ex. 1002 ¶¶ 3–24, App’x A; Ex. 2016 ¶¶ 11– 19), and either assessment of the level of skill in the art is consistent with the ’851 patent and the prior art of record. We, therefore, adopt Dr. Sharony’s assessment and apply it to our anticipation and obviousness evaluations below, but we note that our conclusions would remain the same under Dr. Wicker’s assessment.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Patent Owner contends that “[t]he meanings of any new limitations (e.g., ‘maximum number of spatial paths’ or ‘request to establish a link channel’)—taken as a whole—are discernable from their context and would be readily understood by those of ordinary skill in the art.” Mot. to Amend 12 (citing Ex. 2016 ¶ 16). In its Opposition, Petitioner does not contend that any claim term requires an explicit construction to determine whether the prior art of record anticipates or renders obvious proposed substitute claims 10–12. See generally Opp. 1–30. In the course of our discussion of the merits of Petitioner’s opposition, we address the scope of proposed substitute claims 10–12 in applying them to Wallace.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the record developed during trial, we find that Wallace discloses or reasonably suggests antenna number information that sets the maximum number of spatial paths that a terminal can form. Accordingly, Wallace accounts for “a value indicating the maximum number of spatial paths formable by said communication unit for multiplex communication,” as recited in proposed substitute claim 11.” slip op. at 37
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,934,851 - PTAB · Dec 19, 2017 · IPR2016-01107 · IPR · Final written decision
Claim 21 was not shown unpatentable under § 103 over Neilson, Kelly, and Miller because the references did not teach the nozzle limitations without hindsight, and secondary considerations weighed against obviousness.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for patent owner
“Based on the record before us, we determine that the phrase, “a nozzle oriented towards the splash shield,” means “a nozzle pre-positioned such that it points at the splash shield,” and the phrase, “directing rinsing fluid onto the splash shield using the nozzle,” means “spraying rinsing fluid onto the splash shield from the pre-positioned nozzle.” Our claim constructions are supported by the claim language for at least two reasons: First, the phrase, “a nozzle oriented towards the splash shield,” describes a component of a mixing machine. Claim 21 recites: “providing a mixing machine having . . . a nozzle oriented towards the splash shield.” Ex. 1001, 7:1–5. This limitation describes the structure of a mixing machine that is used to perform the claimed method. As Petitioner explains, “[c]laim 21 is a method claim that separately recites attributes of the provided mixing machine and a step of directing rinsing fluid.” Pet. Reply 4. “Oriented” describes the position of the nozzle in the machine. The nozzle is oriented before it is used to direct rinsing fluid onto the splash shield. In other words, the nozzle is pre-positioned. Second, the claim drafter used the term, “positionable,” rather than” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“3. Level of Ordinary Skill in the Art We accept Dr. Slocum’s definition of a person having ordinary skill in the art (“PHOSITA”) as an engineer with at least an undergraduate degree in mechanical engineering or related discipline and at least three years of professional or research experience in the design of consumer or medical products that utilize fluid systems. Ex. 1010 ¶ 20. Dr. Maynes states that he does not necessarily agree with Dr. Slocum’s definition, but does not provide and alternative definition or no persuasive reasoning as to why Dr, Slocum’s definition is incorrect. Ex. 2023 ¶ 6. We also rely on Petitioner’s references as reflecting the level of ordinary skill in the art at the time of the invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“limited to automatic rinsing, Miller discloses an electronically controlled nozzle 129. Pet. Reply 12. Petitioner argues that it would have been a simple substitution to modify Kelly’s spray device 56 with Miller’s electronically controlled nozzle 129 and that the teachings of Kelly and Miller would have led a skilled artisan to orient Miller’s electronically controlled nozzle 129 toward Neilson’s lid 16 and direct rinsing fluid thereon. Id. at 12–13 (citing Ex. 1010 ¶¶ 69, 82–85; Ex. 2027, 169–72). We are not persuaded by Petitioner’s argument for two reasons. First, Petitioner’s reply argument relies on impermissible hindsight. The combination of Neilson, Kelly, and Miller does not teach or suggest the nozzle limitations of claim 21 without relying on the claim as a roadmap for selecting and modifying the teachings. Miller teaches nozzle 129 for spraying cleaning fluid onto a blender spindle after each use. Ex. 1004 ¶ 55, Figs. 17, 18. Miller also discloses a splash shield in the form of a tubular sleeve inserted into a mixing container during blending. Id. ¶ 42; Ex. 1005, 4:1–4, 4:33–36. Like Neilson’s lid 16, Miller’s splash shield is manually removed for cleaning. Ex. 1003, 5:65–66; Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. Although Miller’s nozzle 129 is pre-positioned, it is not pointed at a splash shield. See Ex. 1004 ¶ 55, Fig. 18 (showing nozzle 129 for dispensing cleaning fluid onto spindle 114). To meet the nozzle limitations of claim 21, Kelly’s nozzle would need to be modified from a manually positionable nozzle to one that is pre-positioned such that it points at a splash shield. Such a modification is not suggested by Miller, which does not teach or suggest a nozzle pointed at a splash shield and instead teaches that the splash shield is manually removed for cleaning. Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. Thus, even if combined, Neilson, Kelly, and Miller do not, absent hindsight, teach or suggest a method of rinsing a splash shield in which a nozzle is pre-positioned such that it points at the splash shield and rinsing fluid is sprayed onto the splash shield from the pre-positioned nozzle.” slip op. at 20
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Slocum that is not supported by Miller, and we, thus, decline to afford it substantial weight. Pet. Reply 13 (citing Ex. 1010 ¶¶ 69, 84, 85); see also Pet. 28 (citing Ex. 1010 ¶ 77).8 In paragraph 69, Dr. Slocum testifies that, “in the case of Miller,” the angle of the nozzle is adjusted “to clean . . . the splash shield.” Ex. 1010 ¶ 69. In paragraph 85, Dr. Slocum testifies that Miller teaches “the rinsing fluid [is] used for the splash shield.” Id. ¶ 85. In paragraph 77, Dr. Slocum testifies that Miller discloses using a nozzle oriented towards a splash shield for directing rinsing fluid onto the splash shield. Id. ¶ 77. Dr. Slocum’s testimony is inconsistent with Miller, which teaches that the splash shield is manually removed for cleaning. Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. In fact, on cross-examination, Dr. Slocum conceded that Miller does not disclose automatic cleaning of the sleeve (splash shield) 8 See supra note 7. and that Miller’s nozzle is not pointed at the sleeve. Ex. 2027, 189:8– 190:11. Petitioner also relies on Dr. Slocum’s testimony that a PHOSITA reading Kelly would have substituted an electronic valve for Kelly’s manual valve and would have “put a bunch of them in at a bunch of different angles,” so when the valves are actuated, the whole thing is cleaned. Ex. 2027, 169:5–172:9; see Pet. Reply 13. In our view, the cited testimony is not credibly based on the teachings of the prior art references, as opposed to the teachings of the ’662 patent. Whereas Dr. Slocum opines that it would have been obvious to clean a splash shield using electronically operated nozzles (id.), Neilson, Kelly, and Miller all teach manual cleaning of a splash shield. Ex. 1002, 4:13–20; Ex. 1003, 5:65–66; Ex. 1004 ¶ 45; Ex. 1005, 5:4–10. In view of the inconsistencies between Dr. Slocum’s testimony and the teachings of Miller, we do not give substantial weight to his opinion that the method of claim 21 would have been obvious to a PHOSITA in view of Neilson, Kelly, and Miller.” slip op. at 21
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,520,662 - PTAB · Mar 4, 2016 · IPR2014-01368 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, 5, and 10 of the ’469 patent were held unpatentable; the remaining challenged claims were not shown unpatentable because the cited art did not disclose the required current connection status.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time the query is transmitted to the server.” Id. at 1363.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1012, 62– 63, 68–69. Microsoft Manual discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. Microsoft Manual further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. Microsoft Manual discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1014, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to Microsoft Manual, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of Microsoft Manual and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner contends that “WINS is an implementation of NetBIOS” and, therefore, Petitioner contends that “one having skill in the art would have known about and been motivated to combine Microsoft Manual with NetBIOS.” Id. at 34 (citing 67 Ex. 1004 ¶¶ 88–89). We are persuaded by Petitioner that the combination is reasonable because Microsoft Manual demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS and Microsoft Manual in the same manner in which Petitioner proposes to combine NetBIOS and Microsoft Manual. See 67 Ex. 1012, 3, 11. Microsoft Manual discloses that Microsoft TCP/IP for Windows NT provides support for application interfaces, including NetBIOS for establishing logical names and sessions on the network. Id. at 11. Microsoft Manual describes that “[w]hen WINS servers are in place on the network, NetBIOS over TCP/IP resolves names on a client computer by communication with the WINS server.” 67 Pet. 34 (quoting 67 Ex. 1012, 62). We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by Microsoft Manual, and a person with ordinary skill in the art would have readily combined the disclosures of Microsoft Manual and Microsoft Manual.” slip op. at 25
- BurdenFwd mixedUnpatentable
“8. Conclusion We have reviewed the Petition and supporting evidence and find that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent are obvious over Microsoft Manual and NetBIOS, and claim 10 is unpatentable because it depends from a cancelled claim. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 2, 5, and 10 of the ʼ469 patent are unpatentable.” slip op. at 29
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,131,121 - PTAB · May 12, 2015 · IPR2014-00242 · APJ Peter P Chen · IPR · Final written decision
The Board canceled claims 1–3, 5, and 6 and denied substitute claims 7–11 because the Patent Owner failed to establish written-description support for claim 10 and patentability over prior art for claims 7–9 and 11.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“Unlike examination, entry of the proposed substitute claims in an inter partes review is not automatic. As the moving party, Patent Owner must establish that it is entitled to the requested relief. See 37 C.F.R. § 42.20(c). In its Motion to Amend, Patent Owner bears the burden to show, inter alia, that a reasonable number of substitute claims is proposed, there is no broadening of scope, the proposed claims are supported adequately by the written description of the application as filed originally, and the proposed claims are patentable over the prior art. See 37 C.F.R. § 42.121; Idle Free Sys. Inc. v. Bergstrom, Inc., Case IPR2012-00027, slip op. at 5–6 (PTAB June 11, 2013) (Paper 26) (“Idle Free”). We address each of these requirements in turn.” slip op. at 10
- 112 supportDenied
“its Motion to Amend to set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.” The test for written description support is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). The purpose of the written description requirement is to convey with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991).” slip op. at 12
- ScopeDecided for patent owner
“2. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 7 as a substitute for claim 1, claim 8 as a substitute for claim 2, claim 9 as a substitute for claim 3, claim 10 as a substitute for claim 5, and claim 11 as a substitute for claim 6. Mot. 1–5. Each claim includes all of the limitations of the corresponding challenged claim for which it is a substitute, and adds additional limitations. Id. No limitations from the challenged claims were deleted in the proposed substitute claims. Patent Owner asserts that the proposed substitute claims do not enlarge the scope of the claims of the ’047 patent. See Mot. 1. Petitioner does not dispute this assertion (“patent owner’s proposed substitute claims . . . add ancillary features”). Opp. 1. We are persuaded that each of the proposed substitute claims does not enlarge the scope of each of the challenged patent claims it intends to replace.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Decision to Institute, we determined that no explicit construction was necessary for any of the claim terms beyond their ordinary and customary meanings. Dec. to Inst. 8–9. Neither party has challenged that determination, and based on the record adduced during trial, we see no reason to provide an express construction for any term. For the proposed substitute claims, Patent Owner states that: Like the terms in the original claims, all of [the newly added claim terms in the proposed substitute claims] are simple [claim terms] whose ordinary meaning applies and for which no construction is required, with the possible exception of “member” and “group.” As explained in the specification (Ex. 1) at 3:2–4, “The present invention comprises a method . . . for allowing on-line communications with members of a group of recipients for whom the invention has been implemented.” In the context of proposed independent claim [7], the claimed invention requires that “said first computer system storing information about said plurality of members in a database.” Thus, in the context of the proposed amended claims[,] a “group” is a group of a plurality of members for whom the first computer system has stored information in a database. Mot. 7. Petitioner does not propose alternative constructions for the claim terms “member” or “group.” We cannot discern how the constructions proffered by Patent Owner add any clarity to the terms “member” and “group,” which are simple and commonly understood terms. We decline to provide an express construction for either “member” or “group.”” slip op. at 8
Claim construction§ 101 eligibility§ 103 obviousnesscites AlicePatents in suitUS 8,499,047 - PTAB · Oct 28, 2014 · IPR2013-00266 · APJ Christopher L Crumbley · IPR · Final written decision
The Board denied entry of substitute claims 20–26 as obvious, and granted cancellation of challenged claims 1, 2, 4, 11, 12, 17, 18, and 19.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“1. the cleavable linker and the protecting group are cleavable under identical conditions Proposed substitute claim 20 recites, inter alia, “a base that is linked to a detectable label via a cleavable linker,” a “protecting group attached via the 3' oxygen atom” of the nucleotide, and a step of “removing the label and the protecting group of the nucleotide . . . under a single set of chemical cleavage conditions.” Mot. 2 (emphasis added). These limitations are similar to those present in original claim 1, which we construed in our Decision on Institution. Specifically, we construed removal of the label and the protecting group under a single set of conditions “to mean what its plain language indicates: removal of the label and the protecting group under a single set of conditions.” Dec. 6. Neither of the parties contested this construction subsequent to institution, and we discern no reason to modify our initial construction for the purposes of this decision. Proposed claim 20 also requires that the cleavable linker comprise a disulfide linkage, but does not specify the protecting group. Thus, “a single set of chemical cleavage conditions,” under the broadest reasonable interpretation standard, limits the structure of the protecting group to one which can be cleaved under the same conditions as a disulfide linkage, but does not require a specific structure, such as a disulfide linkage.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Illumina was essentially 100%. This is a significant and unexpected improvement over the disulfide cleavages of Ruby (~86%) and Herman (87%).” Ex. 2004 ¶ 84. There is no testimony, however, that the stated results were due to the claimed nucleotide rather than the reducing agent. While Dr. Romesberg refers to the “disulfide cleavage yield” as being unexpected, he does not testify that this yield was attributable to the claimed nucleotide configuration, rather than the reducing agent which performs the disulfide bond cleavage. Illumina has not distinguished the Vermaas results from the prior art by showing that the nucleotide is responsible for the disulfide yield, rather than it being a property of the disulfide bond and the yield being “the mere recognition” of the bond’s “latent properties,” which “does not render nonobvious an otherwise known invention.” Baxter, 952 F.2d at 392; In re Geisler, 116 F.3d 1465, 1468 (Fed. Cir. 1997). Absent such evidence, Illumina has not shown that the claimed subject matter possesses “unexpected results relative to the prior art.” Galderma Labs., LP v. Tolmar, Inc., 737 F3d 731, 738 (Fed. Cir. 2013). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416.” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“After considering all the evidence as a whole, we conclude that Illumina has not met its burden in showing that the proposed substitute claims are patentable over the prior art considered in this Decision. The Motion to Amend is DENIED to the extent that it requests entry of substitute claims 20–26.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,158,346
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.