- Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66–3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66– 3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 4
§ 103 obviousnessPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,811,689 - PTAB · Oct 6, 2025 · IPR2025-00611 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–10, 12, 13, 19, and 20 on all petition grounds after finding a reasonable likelihood that claim 1 was obvious over Douglas and Mark.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A claim is unpatentable under § 103 “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C. § 103; see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “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)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that experience could substitute for a degree, and vice versa. Pet. 3 (citing Ex. 1003 ¶¶ 19–21); Prelim. Resp. 9. The parties’ proposed levels of ordinary skill are substantially similar. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposal for this decision. Only Petitioner’s proposed level is supported by testimonial evidence on the preliminary record, and it appears to be consistent with the problems addressed in the ’774 patent. See Ex. 1001, 1:16–52. Therefore, we adopt Petitioner’s proposal for this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“CLAIM CONSTRUCTION B. In an IPR, we construe a patent claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This generally includes “construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313, 1321. Neither Petitioner nor Patent Owner argues that we need to construe any claim terms explicitly. See Pet. 2–3; Prelim. Resp. 9. However, the parties’ positions depend on interpreting the claim language in a particular way, and we discuss the relevant claim language below in the context of the parties’ arguments regarding the prior art. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage, we find Petitioner’s arguments persuasive and disagree with Patent Owner. Patent Owner appears to equate a “fabrication profile” with a toolpath description, but nothing in the plain language of claim 1 supports that narrow interpretation. The ’774 patent describes a “fabrication profile” broadly and states that the profile can simply “include the dictionary [of configuration information],” or be “used to determine which machineready representation is available or suitable for a target printer.” Ex. 1001, 23:49–52. The preliminary evidence suggests that Douglas’s “operational parameters” would count as a “fabrication profile” because it is “the basis for generation of a machine-ready representation of the three-dimensional model that is executable on the target printer.” Id. at 23:37–39; see infra Section III.C.8. We also disagree that Petitioner’s argument is impermissible hindsight, because it is based on the disclosures in Douglas and Mark, and Petitioner has articulated a sufficiently persuasive reason to combine those references without referring to the ’774 patent itself. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (an obvious rationale is not improper hindsight if it “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure”). Finally, Petitioner appears to rely on Mark for providing a particular example of a fabrication profile, not to replace Douglas’s overall system in which the 3D printer can receive “operational parameters” rather than just G-code. See Pet. 8–10, 17–23; see also Ex. 1005 ¶ 41 (the print queue, which stores tool instructions, may be maintained locally on printers 204 or on print servers 208); see In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc))).” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,886,774 - Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc.Institution deniedPTAB · Oct 3, 2025 · PGR2025-00032 · APJ Susan L C Mitchell · PGR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“Section 42.207(e) states that “[n]o post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.207(e). Because the Patent Owner has disclaimed all claims challenged by the grounds in this Petition, we determine that no trial will be instituted.” slip op. at 2
NonePatents in suitUS 12,115,166 - PTAB · Oct 3, 2025 · IPR2025-00680 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR of claims 2 and 3 on all grounds in the Petition and granted Nintendo’s motion to join IPR2024-00807, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Apple IPR on all challenged claims and all asserted grounds of unpatentability. Apple IPR, Paper 10 (institution decision); see also Apple IPR, Paper 2 (the “Apple Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR. Compare Pet. 2, with Apple Petition 1; see also Mot. 1 (asserting the instant “Petition is substantively identical to Apple Inc.’s petition (‘Apple Petition’) in the Apple IPR, including that it relies on the same expert declaration,” and asserting “the same grounds presented in the Apple IPR”). As indicated, Petitioner also relies on the same declarant as did the petition in the Apple IPR. Mot. 1; compare Ex. 1003 (Hannaford Declaration), with Apple IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the Apple IPR and for the same reasons stated in our Decision to Institute in the Apple IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Apple IPR, Paper 10 (analyzing challenges in the Apple Petition).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Apple Petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration, the Hannaford Declaration (Ex. 1003). Mot. 1, 4. Petitioner represents that “joinder will not negatively impact the Apple IPR trial schedule” and “expressly consents to the existing trial schedule.” Id. at 10; see also id. at 7 (“Proceeding with a consolidated inter partes review would avoid potential inconsistency, promote efficient review of the same claims for the same patent under the same grounds, and would result in a final written decision without delay.”). Petitioner also represents that as “long as Apple remains in the joined IPR, Nintendo remains in a limited ‘silent understudy’ role that does not actively participate in the IPR.” Id. at 8. The record supports Petitioner. In addition, the final written decision in the Apple IPR is due to issue on or before October 15, 2025, with the Oral Hearing complete and no further briefing due. See IPR 2024-00807, Paper 15 (Oral Hearing Transcript); Paper 18, 2–3. Therefore, as Petitioner argues, joinder by Petitioner will have little or no impact on the trial schedule in the Apple IPR. On the other hand, if the Board denies joinder, Petitioner submits that it “intends to file a separate petition for IPR (‘Second Petition’) that includes grounds in addition to some (or all) of the grounds in the Apple IPR.” Mot. 14.” slip op. at 10
NonePatents in suitUS 8,860,337 - PTAB · Sep 19, 2025 · PGR2025-00025 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–19 and all asserted grounds, finding it more likely than not that claim 1 is anticipated by the Gatorade Label.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’422 Patent is eligible for post-grant review and has shown it is more likely than not that at least one challenged claim of the ’422 Patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’422 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would possess at least (1) a Bachelor’s degree in chemistry or a related field, with (2) five years of experience in material identification and characterization using multiple analytical methods and field sampling, or equivalent research or professional experience.” Pet. 12 (citing Ex. 1014 ¶ 24). Patent Owner does not dispute Petitioner’s definition for one of ordinary skill in the art nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposal regarding the level of one of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“336. The applicant explained that not all combinations of shrink films and light blocking materials are recyclable. Id. at 335. The applicant explained that films can be compatible with PET recycling in two ways, (1) the film can float in water and be separated from PET that sinks in water or (2) the PET films crystallize and “can be recovered with the PET stream.” Id. at 336 (citing “A Resource Document by the Association of Plastic Recyclers (APR)”) (found at Ex. 1002, 323–332) (emphasis omitted). The applicant explained that “removing the label before or during the recycling process is not evidence of the recyclability of the label” and that “[r]emoving the label during the recycling process is not equivalent to actually recycling the label.” Id. at 335. As such, a POSITA reading the prosecution history would understand that a label is not recyclable with a PET container, as recited by the independent claims, by removing the label from the PET recycle stream before or during the recycling process.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“To determine how a person skill in the art would determine if a shrink label is “recyclable” as recited in the independent claims, we look to how the Specification of the ’422 Patent describes or defines recyclable shrink labels. For example, the ’422 Patent states that PET shrink films are generally considered recyclable if no inks are retained on the film after a caustic wash cycle typically used in PET reclaiming processes. Ex. 1001, 6:61–65. The ’422 Patent further states that labels are fully recyclable if the polymers used are clear, preferably clear PET, and the labels include inks that can be washed off in a “typical PET recycling wash (caustic wash).” Id. at 11:44– 49; see also id. at 11:49–54 (describing embodiments in which the labels are free or substantially free of inks that cannot be washed off in a caustic wash or where the labels are free or substantially free of color plastics that cannot be recycled). The ’422 Patent further discusses “industry standards” for determining whether various embodiments of shrink labels are recyclable. See, e.g., id. at 11:29–53. For example, the Specification states that the “Association for Plastic Recyclers (APR) Critical Guidance Protocol for Clear PET Articles with Labels and Closures (PET-CG-02)” (Ex. 1005) can certify that a film is fully recyclable with a container or bottle. Id. at 11:34– 38. Additionally, the Specification states that labels “are recyclable according to the Evaluation of the Near Infrared (NIR) Sorting Potential of a Whole Plastic Article (SORT-B-01)” (Ex. 1010) and/or the “Evaluation of Sorting Potential for Plastic Articles Utilizing Metal, Metalized, or Metallic Printed Components (SORT-B-03)” (Ex. 1011). Ex. 1001, 11:39–44. The ’422 Patent further states that embodiments of the labels “are fully recyclable. For example, the labels may include inks that can be washed off in a typical PET recycling wash (caustic wash) and the polymers” are preferably clear PET. Id. at 11:44–48. The ’422 Patent thus provides various descriptions or standards to determine the recyclability of shrink labels. For the purposes of addressing the anticipation and obviousness grounds, we determine that any of these standards can be used to determine if a shrink label is “recyclable.” We note that our construction is preliminary and is based on the present record. We invite the parties to further the address the construction of “wherein the recyclable shrink label is recyclable with a PET container” during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 11,961,422 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Sep 15, 2025 · IPR2025-00005 · APJ John G New · IPR · Rehearing
Denied Solus’s rehearing request; the Board maintained its denial of institution because the petition did not show a reasonable likelihood of prevailing on the challenged claims.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“[O]f the 44 specimens tested by Ye, as revealed in Ye’s Table II, only a single specimen, specimen 15, meets the required TC ratios recited in challenged claim 1 of the ’541 patent. Furthermore, none of the references cited by Petitioner teach, or even remotely suggest, the four requisite TC ratios recited by challenged claim 1. We find Petitioner’s argument that a person of ordinary skill in the art would have been motivated to exclusively select Ye’s sample 15, out of the remaining 43, to which to apply the teachings of Hara and Otsuka concerning the requisite tensile strength and weight deviation ranges in the hope of arriving at the claimed invention, is implausible. Indeed, only the ’541 patent, among all of the evidence of record, that actually mentions the required texture coefficient ratios recited in challenged claim 1. Petitioner provides no convincing argument as to why a skilled artisan would have selected sample 15 for combination with Hara and Otsuka.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“At the heart of this flaw is Petitioner’s argument, and Dr. Josefowicz’s opinion, that it would have been conventional in the art at the time of filing to vary the electrolyte concentration, electrolysis plating parameters, temperature, and the use of organic and inorganic additives, in order to obtain a copper foil with tensile strength and elongation values falling within the claimed ranges as these ranges were well known, at least since 1974. Ex. 1003 ¶ 63. This statement is largely unsupported by evidence of record, with the sole exception of Table 2 of Lowenheim, which, as Patent Owner points out, provides tensile strengths well outside the claimed range. Petitioner provides insufficient guidance as to how a person of ordinary skill in the art would have known which parameters to vary, or how to vary them, to provide the foil of Hirose with a tensile strength or weight deviation within the claimed range. Dr. Josefowicz’s statement that this would result from routine optimization, and was “conventional” may or may not be true, but it is insufficiently supported by evidence of record to be persuasive.” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,457,541 - PTAB · Sep 15, 2025 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 2, 7–9, 11, 12, and 20–24 are obvious over Yamaguchi-727.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Cerebrum Sensor Technologies, Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).1 Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- BurdenInstituted
“We disagree. Positioning module 6 to face a “predetermined direction” is a form of preventing movement that falls within the scope of limitation 1b. Moreover, Yamaguchi-727 uses a method for preventing movement of its module 6 in its housing 20, silicone potting material, that is expressly recognized by the Specification of the ’421 patent when it states: “A common technique used to assist in fixturing the electrical sensor device 40 known within the automotive industry is to fill the internal cavity with a coating material such as a neutral silicone or the like for purposes of retaining placement position.” Ex. 1001, 13:56–60. Although the Specification also asserts that the sensor assemblies disclosed in the 421 patent “do not use or require the use of any such coating or filing agents or materials for any fixturing of the electrical sensor device 40,” id. at 13:61–64, limitation 1b merely requires that the “sensor device . . . is disposed within the internal cavity and attached therein to prevent movement of the device within the internal cavity,” id. at 30:25–27. Absent a persuasive argument to the contrary, we preliminarily conclude that Yamaguchi-727’s use of potting material to hold its module 6 in place within its housing 20 meets the requirements of limitation 1b. Both parties are encouraged to adduce intrinsic evidence relating to the meaning of limitation 1b at trial. For all the reasons set forth above, we find that Petitioner has established a reasonable likelihood of proving the Yamaguchi-727 renders claim 1 unpatentable as obvious. 2. Dependent Claims 2, 7–9, 11, 12, and 20–24 Petitioner identifies the portions of Yamaguchi-727 that teach the limitations introduced in dependent claims 2, 7–9, 11, 12, and 20–24, all of which ultimately depend from claim 1. Pet. 32–40. Patent Owner relies upon its argument that Petitioner’s showing for claim 1 is deficient as the reason why Petitioner’s challenge to dependent claims 2, 7–9, 11, 12, and 20–24 fails. We reject this argument for the reasons stated in Part II.C.1 above. Based on our review of Petitioner’s otherwise uncontested argument and evidence cited in support, we find that Petitioner also establishes a reasonable likelihood of proving that Yamaguchi-727 renders dependent claims 2, 7–9, 11, 12, and 20–24 unpatentable as obvious. D. Remaining Challenges” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner complies with the requirement of identifying “[h]ow the claim language is to be construed” by setting forth proposed interpretations of various claim terms in the table above.7 Both cases cited by Patent Owner relate to an issue presented by a petitioner’s alleged inconsistent handling of whether a claim term is subject to interpretation as a means-plus-function element under 35 U.S.C. § 112(f). Orthopediatrics Corp. v. K2M, Inc., IPR2018-01546, Paper 10 at 11 (PTAB Feb. 14, 2019); 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023- 7 Neither party has identified any claim language that might invoke interpretation as a means-plus-function limitation, and we discern no such claim language. Additionally, we do not imply that a petitioner must always propose express interpretations for specific claim language to comply with Rule 42.104(b)(3). Rather, we only note that Petitioner has, by any measure, complied by expressly proposing interpretations for identified claim language.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree. Positioning module 6 to face a “predetermined direction” is a form of preventing movement that falls within the scope of limitation 1b. Moreover, Yamaguchi-727 uses a method for preventing movement of its module 6 in its housing 20, silicone potting material, that is expressly recognized by the Specification of the ’421 patent when it states: “A common technique used to assist in fixturing the electrical sensor device 40 known within the automotive industry is to fill the internal cavity with a coating material such as a neutral silicone or the like for purposes of retaining placement position.” Ex. 1001, 13:56–60. Although the Specification also asserts that the sensor assemblies disclosed in the 421 patent “do not use or require the use of any such coating or filing agents or materials for any fixturing of the electrical sensor device 40,” id. at 13:61–64, limitation 1b merely requires that the “sensor device . . . is disposed within the internal cavity and attached therein to prevent movement of the device within the internal cavity,” id. at 30:25–27. Absent a persuasive argument to the contrary, we preliminarily conclude that Yamaguchi-727’s use of potting material to hold its module 6 in place within its housing 20 meets the requirements of limitation 1b. Both parties are encouraged to adduce intrinsic evidence relating to the meaning of limitation 1b at trial. For all the reasons set forth above, we find that Petitioner has established a reasonable likelihood of proving the Yamaguchi-727 renders claim 1 unpatentable as obvious. 2. Dependent Claims 2, 7–9, 11, 12, and 20–24 Petitioner identifies the portions of Yamaguchi-727 that teach the limitations introduced in dependent claims 2, 7–9, 11, 12, and 20–24, all of which ultimately depend from claim 1. Pet. 32–40. Patent Owner relies upon its argument that Petitioner’s showing for claim 1 is deficient as the reason why Petitioner’s challenge to dependent claims 2, 7–9, 11, 12, and 20–24 fails. We reject this argument for the reasons stated in Part II.C.1 above. Based on our review of Petitioner’s otherwise uncontested argument and evidence cited in support, we find that Petitioner also establishes a reasonable likelihood of proving that Yamaguchi-727 renders dependent claims 2, 7–9, 11, 12, and 20–24 unpatentable as obvious. D. Remaining Challenges” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,835,421 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Sep 15, 2025 · IPR2025-00005 · APJ John G New · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show a reasonable likelihood of prevailing on claims 1-4.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“In summary, we again conclude that Petitioner has failed to provide sufficient evidence to demonstrate that a person of ordinary skill in the art would have had a reasonable expectation of success in combining the cited prior art references, in combination with Dr. Josefowicz’s relatively unsupported testimony concerning a skilled artisan’s ability to optimize various constituents and conditions, to arrive at the claimed invention. Petitioner has not pointed to any argument or unconsidered evidence of record that is sufficient to show that, in reaching its conclusion, the Board abused its discretion by basing its Decision on an erroneous interpretation of law, a factual finding not supported by substantial evidence, or an unreasonable judgment in weighing relevant factors. Arnold, 362 F.3d at 1340.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“teaches the tensile strengths of various types of copper-electroplated steel electrical cable wire of different properties, including high strength, hardness, low electrical resistivity, near zero strength, good leveling, and thermal stability, some of which fall within the claimed range of tensile strength of 30 to 40 kgf/mm2. Lowenheim, 196, Table II. However, none of these categories correspond to those copper foil properties recited in the claims, and Dr. Josefowicz’s testimony provides little guidance as to how a person of ordinary skill in the art would have known how to optimize the recited properties, and particularly so in combination with the teachings of Hirose and the other cited prior art references. Furthermore, as we noted in our Decision:” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“At the heart of this flaw is Petitioner’s argument, and Dr. Josefowicz’s opinion, that it would have been conventional in the art at the time of filing to vary the electrolyte concentration, electrolysis plating parameters, temperature, and the use of organic and inorganic additives, in order to obtain a copper foil with tensile strength and elongation values falling within the claimed ranges as these ranges were well known, at least since 1974. Ex. 1003 ¶ 63. This statement is largely unsupported by evidence of record, with the sole exception of Table 2 of Lowenheim, which, as Patent Owner points out, provides tensile strengths well outside the claimed range. Petitioner provides insufficient guidance as to how a person of ordinary skill in the art would have known which parameters to vary, or how to vary them, to provide the foil of Hirose with a tensile strength or weight deviation within the claimed range. Dr. Josefowicz’s statement that this would result from routine optimization, and was “conventional” may or may not be true, but it is insufficiently supported by evidence of record to be persuasive. Id. (emphasis added) (footnote omitted).” slip op. at 6
§ 103 obviousnessPatents in suitUS 9,457,541 - PTAB · Aug 25, 2025 · IPR2025-00631 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–9, 11–13, and 15–22 on all five asserted § 103 grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’027 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–3, 5, 7–9, 11–13, and 15–22) of the ’027 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “possessed an undergraduate degree in chemistry, polymers, materials science, chemical engineering (or related field) and one to two years of experience with constructing and manufacturing tires, tire patches, tire decals/stickers and/or the like.” Pet. 8 (citing Ex. 1003 ¶¶ 6–11). According to Petitioner, “Additional education could compensate for less practical experience. Conversely, additional practical experience could compensate for less education.” Id. Patent Owner does not provide an alternate definition, but, “Patent Owner does not acquiesce to, and reserves the right to address, [Petitioner’s] definition of a POSA.” Prelim. Resp. 6 n.6. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’027 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. 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 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We disagree with Patent Owner’s contentions that these disclosures indicate that Wilson’s patch would not meet the construction of “barrier material composition.” None of these disclosures even suggests that the base of Wilson’s patch is rigid as Patent Owner suggests. To begin with, the fact that the housing is “more rigid” provides no information about the absolute rigidness of the patch. See Ex. 1009, 9:16–21. As for the disclosure that the patch is contoured (id. at 3:35–67), Patent Owner provides only attorney argument to support its contention that the contour demonstrates that Wilson’s patch must be so rigid that it cannot be meet the claim limitation. In contrast, Petitioner demonstrates that Wilson discloses using the exact same materials described in the challenged patent (see Ex. 1001, 6:33–58 (noting “[e]lastomeric materials useful for forming the intermediate layer 24 include but are not limited to gum rubber, vulcanized natural rubber SBR . . . or comparable materials”); Ex. 1009, 3:49–55 (noting the patch may be constructed from natural rubber (NR), a preferred mixture of chlorobutyl rubber and natural rubber (CR/NR), or a preferred mixture of SBR and natural rubber (SBR/NR)), and provides detailed testimony from its expert to support its contentions (see Ex. 1003 ¶¶ 114–119). On the current record, we find Petitioner’s reasoning and evidence to be persuasive, and find that Petitioner has shown sufficiently that Willson discloses or teaches this limitation.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,027
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.