- PTAB · Apr 22, 2025 · IPR2025-00156 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–9 under all seven grounds, finding a reasonable likelihood of success on at least one claim based on the Schaffer–Hartley and Schaffer–Eller combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. For reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’012 patent’s challenged claims. We institute inter partes review on all challenged claims. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner proposes that the person of ordinary skill in the art (“POSA”) in September 2017 “would have had an undergraduate degree in mechanical engineering or a related engineering discipline and 2–4 years of product design or engineering experience.” Pet. 15 (citing Ex. 1003 ¶ 35). Patent Owner provides no alternative definition of the POSA’s qualifications and, instead, applies Petitioner’s definition in its Response. Prelim. Resp. 21. obviousness precedents cited herein remain applicable despite this change in the timing of the obviousness inquiry. 9 Petitioner states that it is not aware of any objective indicia of nonobviousness (Pet. 94) and Patent Owner’s Preliminary Response does not provide argument about any objective indicia. level appears to be reasonable and consistent with the cited prior art.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“several threads, lines, cords, robes, ribbons, flat wires, sheets, or tapes. The Specification supports such interpretation. Ex. 1001, 9:21–23. Nevertheless, as Patent Owner argues, Petitioner’s interpretation is incomplete and does not address persuasively the dispute raised here— whether the “filament,” as recited in claim 1, requires flexibility. Based on the parties’ arguments at this preliminary stage, we agree with Patent Owner that flexibility is necessary. The claims, as understood by the POSA, suggest that the filament must be flexible. Claim 1 “recites that ‘the first filament [is] formed into a loop around the collapsible tubular sidewall” and that the “diameter of the valve lumen decreases in response to reducing a diameter of the loop.” See supra Section II.D. As Dr. Zalesky credibly explains “[t]o ‘reduc[e] a diameter of the loop,’ the filament must be ‘flexible’ because if it were rigid or inflexible the loop would retain the same diameter when acted on by the first actuator.” Ex. 2001 ¶ 58 (“This inherent property of flexibility is essential to the loop structure of the claims.”). We observed essentially the same principle in the related 1157 IPR for embodiments where the filament forms a “loop” around the collapsible tubular member, such as shown in Figure 6 of the patent. IPR2024-01157, Paper 7 at 16 (“Thus, in the above embodiment [(shown in Fig. 6)] a flexible filament is required (i.e., a the loop to constrict and seal the valve).”).11” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“22:10. Petitioner contends that, as a general rule, a preamble does not limit the scope of a claim, and that the preamble term “aspiration” here merely describes a non-limiting “intended use” of an otherwise structurally-complete invention defined by the body of the claim. Pet. 18–19. Patent Owner responds that whether the term “aspiration” limits claim 1 is “not germane to Patent Owner’s arguments here.” Prelim. Resp. 21. We need not decide at present if “aspiration” in the preamble phrase “aspiration catheter” is limiting. No dispute at this stage turns on whether “aspiration” is limiting, or on that term’s meaning. Realtime Data, 912 F.3d necessary to resolve matters in dispute).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,697,012 - Eunsung Global Corp. v. Hydrafacial LLCInstitution deniedPTAB · Apr 11, 2025 · IPR2024-01491 · APJ Jamie T Wisz · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding that the advanced ITC proceeding and substantial overlap made review inefficient.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“When determining whether to exercise discretion to deny institution in view of a parallel litigation, we consider the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We find that Petitioner’s obviousness challenges meet the standard for institution. We also will not speculate as to whether the other three petitions referenced by Petitioner will be instituted. Taken together with the other” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“B. Discretionary Denial under 35 U.S.C. § 325(d) Patent Owner asserts that we should deny the Petition under 35 U.S.C. § 325(d) because the Petition presents substantially the same art and arguments that the Office previously analyzed and fails to show that the Office erred during prosecution. See Prelim. Resp. 58–68. Because we exercise discretion to deny institution under 35 U.S.C. § 314(a) for the reasons discussed above, we do not need to reach Patent Owner’s argument regarding denial under § 325(d).” slip op. at 17
Discretionary denialPatents in suitUS 11,865,287 - PTAB · Apr 8, 2025 · IPR2024-01401 · APJ Eric C Jeschke · IPR · Institution
The Board instituted inter partes review of claims 1–23 on all asserted obviousness grounds, finding a reasonable likelihood of prevailing based on Burchia and Metabowerke for claims 9 and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Therefore, “if the petition includes the same or substantially the same claims, grounds, arguments, and evidence as presented in the parallel proceeding, this fact has favored denial.” Id. The Fintiv panel stated that “the degree of overlap is highly fact dependent” and encouraged the parties to “indicate whether all or some of the claims challenged in the petition are also at issue in district court.” Id. at 13. For the reasons below, we view this factor overall as weighing strongly against denial.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“the Examiner erred in the evaluation of the prior art, for example, by showing that the Examiner misapprehended or overlooked specific teachings in the relevant prior art such that the error by the Office was material to the patentability of the challenged claims.” Advanced Bionics, Paper 6 at 21. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8–9 n.9.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposals as to the level of ordinary skill in the art overlap in certain aspects. For example, the first option presented by Petitioner (requiring a bachelor’s degree) largely aligns with the first sentence in Patent Owner’s proposal above (also requiring a bachelor’s degree). Compare Pet. 8, with Prelim. Resp. 4. The second and final sentence from Patent Owner provides other options but is imprecise as to how much “more” or “less” of either formal education or experience are sufficient. See Prelim. Resp. 4. At this stage of the proceeding, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill in the art leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. With that, and the lack of declaration testimony supporting Patent Owner’s proposal, we adopt, for purposes of this Decision, Petitioner’s proposal as to the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,794,952 - PTAB · Apr 8, 2025 · IPR2024-01400 · APJ Eric C Jeschke · IPR · Institution
The Board instituted inter partes review of claims 1–11 on all asserted obviousness grounds, finding a reasonable likelihood of success based on Burchia and Metabowerke.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“patentability disputes between the parties, regardless of the stay.” Fintiv, Paper 11 at 9. We address that issue in the discussion of the fourth Fintiv factor below. Given the framing in Fintiv of this situation, the weight of the lack of a stay of the ITC Litigation depends, at least in part, on the fourth Fintiv factor. See POSCO, Paper 11 at 13; Fintiv, Paper 11 at 9. Thus, we determine that the first Fintiv factor, by itself, is neutral or bears little weight in the analysis, but it elevates the importance of the fourth Fintiv factor.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Decision, we find that it sufficiently implicates the concerns addressed by § 325(d) to find the first part of the framework in Advanced Bionics satisfied. We turn now to the second part of the framework: “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8–9.” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposals as to the level of ordinary skill in the art overlap in certain aspects. For example, the first option presented by Petitioner (requiring a bachelor’s degree) largely aligns with the first sentence in Patent Owner’s proposal above (also requiring a bachelor’s degree). Compare Pet. 8, with Prelim. Resp. 4. The second and final sentence from Patent Owner provides other options but is imprecise as to how much “more” or “less” of either formal education or experience are sufficient. See Prelim. Resp. 4. At this stage of the proceeding, Patent Owner does not argue that Petitioner’s proposal for the level of ordinary skill in the art leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. With that, and the lack of declaration testimony supporting Patent Owner’s proposal, we adopt, for purposes of this Decision, Petitioner’s proposal as to the level of ordinary skill in the art, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,365,026 - Stara S.A.-Indústria De Implementos Agrícolas v. Agco CorporationInstitution deniedPTAB · Mar 25, 2025 · IPR2024-01459 · APJ Barry L Grossman · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). Petitioner has the burden of proof. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had “a bachelor’s degree in mechanical or agricultural engineering, or a related study, and two years of experience building or using agricultural implements, such as cultivators, planters, or other implements, or an equivalent combination of education and experience.” Pet. 21 (citing Ex. 1002 ¶¶ 64–66).” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“J. Discretionary Denial Under 35 U.S.C. § 325(d) Patent Owner argues that the Board should exercise discretion, and deny institution under 35 U.S.C. § 325(d) because the same or substantially the same prior art or arguments previously were presented to the Office during prosecution. See Prelim. Resp. 47–48. We need not reach this argument having denied institution on the merits.” slip op. at 46
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner states “Patent Owner agrees with the Petition that no construction is necessary.” Prelim. Resp. 14. Patent Owner contends “the ordinary and customary meaning of ‘parallel,’ as used in independent Claims 1 and 17, does not include ‘transverse,’ as used in Hubalek.” Id. Patent Owner further contends “the ordinary and customary meaning of ‘a hinged joint,’ as used in independent Claims 1 and 17, does not include a ‘ball joint.’” Id. at 14–15 (citing Ex. 2001 ¶¶ 45–51). Additionally, Patent Owner contends the ordinary and customary meaning of claim 17 is that the preamble is limiting. Id. at 15–17. Patent Owner also believes the preamble of claim 17 is limiting. Id. at 16. We do not perceive the need to construe any claim limitation. We do not believe any claim term requires express claim construction, as both parties agree that no construction is necessary. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted)).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,665,989 - R-Pac International Corporation v. Adasa IncInstitution deniedPTAB · Mar 25, 2025 · IPR2024-01416 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution on claims 1–20 under §325(d), finding the challenges relied on previously presented or cumulative art and Petitioner failed to show material Examiner error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Id. at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION Taking a holistic view of the totality of the information presented, we determine that the challenges set forth in the Petition are based on the same or substantially the same prior art or arguments previously presented to the Examiner. Moreover, Petitioner does not direct us to information sufficient to establish a material Examiner error. Accordingly, we exercise our discretion under Section 325(d) and do not institute an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s request for an inter partes review, pursuant to 35 U.S.C. § 314(a), of claims 1–20 of the ’967 patent is denied, and no trial is instituted.” slip op. at 28
Discretionary denialPatents in suitUS 9,798,967 - PTAB · Mar 24, 2025 · IPR2024-01235 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–3, 6–11, and 14–16 on all proposed grounds after finding a reasonable likelihood of prevailing on the §103 ground over Mañosa and Patel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the 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), 815 F.3d at 1363 (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 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). slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“[T]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. . . . [T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“May” expresses a possibility. The Specification reflects this interpretation of “may” when it states that “[i]n one embodiment, the organic material is not lyotropic. Thus, the organic material may not be a phospholipid.” Ex. 1001, 8:27–28 (emphasis added). One of ordinary skill would understand from this that the organic material “may not be” a phospholipid if the organic material is not lyotropic. It follows that if the organic material is lyotropic, then the organic material may be a phospholipid. Reading the statement “[t]he organic material may not be . . . a phospholipid” (id. at 8:59–63) in light of the earlier stated possibility that the organic material may be a phospholipid if the organic material is lyotropic, one of ordinary skill in the art would interpret “may not be” as excluding phospholipids under some conditions, not under all conditions. Taking the Specification’s discussion about phospholipids as exemplifying the permissive nature of the word “may,” we are unpersuaded that in stating that “[t]he organic material may not be [PMMA], a polyvinylidene difluoride-containing polymer, such as [PVDF] or PVDF- TrFE-CTFE, or a phospholipid, such as [DHPE]’” (Ex. 1001, 8:59–63), the specification “contains a clear and unmistakable disavowal of the compounds PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE” and “disclaims the listed compounds” from the “organic material” of the claims under all conditions, as Patent Owner argues. Prelim. Resp. 6–7. Moreover, the claims themselves limit the “organic material” only to the extent that it is “barocaloric cooling or heating agent” and can perform in the manner claimed. See Ex. 1001, claim 1, supra. As broadly worded, the claims do not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE per se from the group of organic materials employed by the claimed method. Adopting Patent Owner’s construction would impermissibly import a limitation (i.e., not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE) into the claims. For the reasons stated, at this stage of the proceeding, we agree with Petitioner’s broad construction of “organic material.” We do not adopt Patent Owner’s proposed construction whereby PMMA, PVDF, PVDF- TrFE-CTFE, and DHPE are excluded from the scope of the claim term “organic material.” The parties are invited to address this issue further during trial, if desired. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner shows that (a) Mañosa (i.e., inorganic compounds such as Ni-Mn-In, Gd5Si2Ge2, and La-Fe-Co-Si) and (b) Patel (i.e., PVDF-TrFE- CTFE) teach materials exhibiting inverse BCEs. Pet. 59 (citing, inter alia, Ex. 1007, pages 4–8; Ex. 1009, 1, 4–5; Ex. 1004 ¶ 108). In our view, at this stage, Petitioner sufficiently shows (via the five reasons listed supra) why it would have been obvious to one of ordinary skill in the art to substitute the barocaloric cooling or heating agent of Patel for that taught in Mañosa, thereby reaching the claimed method with a reasonable expectation of success. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S., 2007) (“The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”)” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,230,656 - Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution deniedPTAB · Mar 19, 2025 · IPR2024-01427 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution on claims 10–21, finding no reasonable likelihood that claims 10–20 were unpatentable and declining institution based at most on claim 21.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“1. Legal Standards A patent owner may antedate a reference by proving an earlier 4 Assembly Manual: Part Number 80504785 REV A, Hiniker Company, Jan. 2001 (“Hiniker Manual”) (Ex. 1007). 5 Screen capture of the archived version of a Hiniker Company webpage captured by the Internet Archive on March 14, 2006, available at https://web.archive.org/web/20060314112127/http://www.hiniker. com/ag_products/4800features.htm (“Hiniker Webpage”) (Ex. 1008). 237 F.3d 1359, 1365 (Fed. Cir. 2001); see 37 C.F.R. § 1.131. For an actual reduction to practice, a patent owner must show three things: (1) construction of an embodiment or performance of a process meeting all limitations in the challenged claims; (2) “that the invention would work for its intended purpose”; and (3) “sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006). If a patent owner attempts to antedate a reference in an inter partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 6
- Other 314aInstitution denied discretionary otherInstitution denied
“contend that Morris and Hiniker Webpage are not available as prior art with regard of claim 21 because Patent Owner does not contend the invention of claim 21 was actually reduced to practice prior to the alleged publication dates of Morris and Hiniker Webpage. Nevertheless, even assuming a reasonable likelihood of prevailing was shown by Petitioner with respect to claim 21, we still consider whether we should exercise discretion to deny the Petition. That is because when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims institution of review remains discretionary. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14
- BurdenDecided for patent owner
“3500 persuaded us that Petitioner, as explained below, has not produced sufficient evidence to show a reasonable likelihood in refuting that the subject matter of claims 10–20 was actually reduced to practice (i) before February 15, 2006; (ii) no later than February 18, 2006; (iii) no later than February 28, 2006; and (iv) no later than May 16, 2006. Accordingly, Patent Owner persuaded us that Petitioner has not shown a reasonable likelihood in establishing that either Morris, which published by August 13, 2006, or Hiniker Webpage, which published by March 14, 2006, are prior art to claims 10–20 of the ’123 patent.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“4. Conclusion Petitioner’s grounds all rely upon either Morris (Ex. 1004) or Hinkier Webpage (Ex. 1008) with respect to claims 10–20 of the ’123 patent. Pet. 1. establishing that either Morris or Hiniker Webpage are prior art to claims 10–20, we determine that Petitioner fails to show a reasonable likelihood that claims 10–20 are unpatentable.” slip op. at 13
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,745,123 - Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution deniedPTAB · Mar 19, 2025 · IPR2024-01426 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution on all asserted grounds because Petitioner did not show Morris or the Hiniker Webpage was prior art for claims 16–22, and declined institution for claim 23 in view of efficiency.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner
“partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7
- Other 314aInstitution denied discretionary otherInstitution denied
“The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14
§ 102 anticipationDiscretionary denialPatents in suitUS 8,967,940 - Imperative Care, Inc. v. Inari Medical, Inc.Institution deniedPTAB · Feb 7, 2025 · IPR2024-01257 · APJ Timothy G Majors · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable, chiefly because Garrison did not disclose the claimed negative-pressure arrangement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. Based on the record here and for the reasons discussed below, we find that Petitioner has not demonstrated a reasonable likelihood that it will prevail in establishing that any of the challenged claims are unpatentable. We, therefore, do not institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need only construe the claims to the extent needed to resolve the controversy before us. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Patent Owner neither disputes Petitioner’s proffered construction nor disputes Petitioner’s contention that Hartley teaches a “filament” as claimed. See, e.g., Pet. 41–43; Prelim. Resp. 17. We need not expressly construe the term “filament” or any other term for this Decision.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the person of ordinary skill in the art (“POSA”) in August 2018 “would have had an undergraduate degree in mechanical engineering or a related engineering discipline and 2–4 years of catheter design experience.” Pet. 20 (citing Ex. 1003 ¶¶ 35–36). Patent Owner contends that Petitioner’s proposal is “insufficient,” yet Patent Owner provides no alternative definition of the POSA’s qualifications and, instead, applies Petitioner’s proposed definition. Prelim. Resp. 17. We apply Petitioner’s proposed POSA level for the purposes of this Decision, which level does not appear to be inconsistent with the prior art of record.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableInstitution denied
“On this record, we agree with Patent Owner that Petitioner has not shown sufficiently that Garrison describes the subject matter of claim 1’s system with the subject matter being arranged as recited in the claim. Prelim. Resp. 44–62. Patent Owner argues, for example, that Petitioner “fails to identify any embodiment of Garrison that discloses . . . an aspiration system including an aspiration pump in which negative pressure is generated in a first chamber and a second chamber when a valve is closed.” Id. at 45. Patent Owner cites, inter alia, Petitioner’s identification of “an aspiration pump that is positioned upstream of a receptacle such that the pump delivers fluid (e.g., blood) to the receptacle via positive pressure and thus cannot generate negative pressure in the receptacle”—the alleged “first chamber” identified by Petitioner. Id. at 45–46 (emphasis added). Patent Owner persuasively supports its counterarguments with the teachings of Garrison and the testimony of Mr. Brown. See, e.g., Ex. 1006, Figs. 32–36; Ex. 2001 ¶¶ 64–76. We discuss in further detail below. whenever Garrison discloses a pump in the embodiments identified by Petitioner—whether a peristaltic pump as shown in Figures 32–34, a centrifugal pump, or the pump device 3250 shown in Figure 36—the pump is positioned to draw fluid through an inlet and expel the fluid out of an outlet via positive pressure to a downstream delivery location such as a receptacle or blood return line. Such a pump would not and could not generate negative pressure in the downstream delivery location (the receptacle the Petition alleges is the first chamber) for multiple reasons—and therefore would not generate negative pressure in any “first chamber” identified by Petitioner. Prelim. Resp. 46. We agree with Patent Owner.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,744,691
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.