- PTAB · Aug 13, 2025 · IPR2025-00068 · APJ Neil T Powell · IPR · Remand
On remand, the Board denied institution of IPR challenging claims 1–21, applying the construction of “association” used in the parallel petition.
RulingsRemand decision- RemandOther
“The Director Review Decision determined that we should not have instituted inter partes review in both proceedings. DR 1. Instead, we “should have construed [‘association’] and instituted review of, at most, one of the petitions.” Id. at 3. Given this, the Director Review Decision vacated this proceeding’s Institution Decision and the 70 Institution Decision, remanding “to the Board panel to determine which of the two proceedings, if Board should construe the term ‘association,’” the Director Review Decision instructed us to “consider the parties’ claim construction arguments in making [our] determination.” Id. at 4. As we explain in a concurrently issued decision in IPR2025-00070, the parties have persuaded us that the correct construction of the ’872 patent claims’ recitation of “association” is the construction advanced and applied in the 70 Petition, not the narrower, possible construction addressed in this proceeding’s Petition. IPR2025-00070, Paper 28. Accordingly, we deny institution of inter partes review in this proceeding.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“As we explain in a concurrently issued decision in IPR2025-00070, the parties have persuaded us that the correct construction of the ’872 patent claims’ recitation of “association” is the construction advanced and applied in the 70 Petition, not the narrower, possible construction addressed in this proceeding’s Petition. IPR2025-00070, Paper 28. Accordingly, we deny institution of inter partes review in this proceeding.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“As we explain in a concurrently issued decision in IPR2025-00070, the parties have persuaded us that the correct construction of the ’872 patent claims’ recitation of “association” is the construction advanced and applied in the 70 Petition, not the narrower, possible construction addressed in this proceeding’s Petition. IPR2025-00070, Paper 28. Accordingly, we deny institution of inter partes review in this proceeding. II. ORDER It is: ORDERED that, pursuant to 35 U.S.C. § 314(a), the petitioned institution of inter partes review of the ’872 patent is denied.” slip op. at 3
Claim constructionPatents in suitUS 9,954,872 - PTAB · Aug 13, 2025 · IPR2025-00070 · APJ Neil T Powell · IPR · Remand
The Board instituted inter partes review of claims 1–21 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable over Capalik.
RulingsRemand decision- Director reviewOther
“Patent Owner then filed a Request for Director Review, arguing that Petitioner did not need two petitions to challenge the ’872 patent’s claims. Paper 19. Acting Director Coke Morgan Stewart granted Director Review. Paper 25 (“Director Review Decision” or “DR Dec.”); IPR2025-00068, Paper 25. The Director Review Decision vacated this proceeding’s Institution Decision and the 68 Institution Decision, remanding “to the Board panel to Authorizing the parties to brief “how the Board should construe the term ‘association,’” the Director Review Decision instructed us to “consider the parties’ claim construction arguments in making [our] determination.” Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Thus, the parties agree on the correct construction of “association.” And the parties persuade us to adopt their construction: “association” does not require any classification as authorized or unauthorized. Pet. 4–8; PO Remand Br. 1–3; Pet. Resp. Br. 1–2. This construction of “association” is the one applied in this Petition’s claim challenges, which comports with (1) our earlier determination that the Petition demonstrates a reasonable likelihood of prevailing and (2) Petitioner’s preference for this Petition over the 68 Petition. Pet. 4–8, 13–74; Dec. 10–22; Paper 3, 2; Pet. Resp. Br. 2, 5.” slip op. at 13
- BurdenDecided for petitioner
“D. The Merits of Petitioner’s Claim Challenges In our Institution Decision, after weighing the parties’ arguments and evidence, we determined that the Petition demonstrates a reasonable likelihood of establishing unpatentability of at least claim 1 of the ’872 patent as obvious over Capalik. E.g., Dec. 16–22. Based on all of the arguments and evidence currently of record, we remain persuaded that the Petition demonstrates a reasonable likelihood of prevailing on at least claim 1 of the ’872 patent. Indeed, as discussed above in Section II.A, the parties’ agreement on the correct construction of “association” reinforces this determination. III. CONCLUSION In view of the foregoing, having determined that Petitioner has demonstrated a reasonable likelihood of establishing at least claim 1 of the ’872 patent is unpatentable, we institute trial as to all challenged claims on all grounds stated in the Petition IV. ORDER It is: ORDERED that inter partes review of claims 1–21 of the ’872 patent is instituted on all grounds presented in the Petition; and” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“institution under § 325(d). Prior to our Institution Decision, Patent Owner did not argue we should deny under § 325(d). See generally Prelim. Resp.; Pet. Resp. Br. 4. Patent Owner first raised § 325(d) while its Request for Director Review was pending, emailing the Office with a request to brief § 325(d) in view of Ecto World. Ex. 3101, 4–5. The Office did not grant that request. Id. at 1. Nor did the Director Review Decision authorize Patent Owner to brief § 325(d). It only authorized Patent Owner “to file a ten-page brief explaining how the Board should construe the term ‘association.’” DR Dec. 4. In sum, Patent Owner’s unauthorized § 325(d) arguments are waived. Moreover, even if Patent Owner had not waived its § 325(d) arguments, we find Petitioner’s § 325(d) arguments more persuasive.” slip op. at 16
Claim constructionDiscretionary denialPatents in suitUS 9,954,872 - PTAB · Aug 15, 2024 · IPR2023-01339 · APJ Brent M Dougal · IPR · Remand
The Board instituted inter partes review of claims 4–9, 12, and 14 on the asserted §103 ground based on Peev and Spitballs.
RulingsRemand decision- Director reviewOther
“(“Decision Denying Institution”). The Director has now reversed and remanded our Decision Denying Institution. Paper 12 (“Remand Dec.”). Further, the Director ordered institution of inter partes review. Id. at 21.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“in showing that at least one of the claims challenged . . . would have been obvious over Peev and Spitballs.” Remand Dec. 17. Additionally, having considered arguments from Patent Owner vying for discretionary denial of inter partes review, the Director “decline[d] to exercise . . . discretion under § 314(a) to deny institution of inter partes review.” Id. at 21. Accordingly, the Director “reverse[d] [our Decision Denying Institution] and remand[ed] to the Board to institute trial.” Id. III. CONCLUSION For the reasons stated in the Director Review Decision (Paper 12), the Director has determined there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged.” slip op. at 5
NonePatents in suitUS 8,640,683 - PTAB · Sep 25, 2017 · IPR2016-00788 · APJ Neil T Powell · IPR · Final written decision
The Board held that claims 15, 18, and 20 were not shown unpatentable over Johnson or Hitt because neither reference disclosed containment walls standing on the floor.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“broadest reasonable interpretation of the disputed claim language requires that the containment walls stand “on” the floor. In the recitation “containment walls standing upwardly from said floor,” the word “from” indicates that the containment walls are disposed “on” the floor. Consistent with this, all of the various embodiments of the invention disclosed by the ’611 patent consistently show sidewalls of a rail car that stand or rest on underlying floor of the car, as Patent Owner notes. See, e.g., PO Resp. 7–12; Ex. 1001, Figs. 1–10. Patent Owner also relies on the testimony of Mr. Long, in discussing the meaning of “standing upwardly from.” See, e.g., PO Resp. 17–21 (citing Ex. 2118 ¶¶ 101–102, 144–161). Specifically, Mr. Long testifies that a person of ordinary skill in the art would have recognized that in the ’611 patent, the term “standing” is used in “its positional sense,” citing, for instance, to a dictionary definition of “standing” as “to rest or remain upright on a base or lower end.” Ex. 2118 ¶ 145 (citing Ex. 2112, 7). Mr. Long’s testimony and the underlying support for that testimony shed favorable light on the meaning of “standing upwardly from” that is urged by Patent Owner.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“containment walls standing upwardly from said floor.” Pet. 24–28. The Petition notes that Johnson discloses floor 26 and side sheet 16. Id. at 24– 25. The Petition contends that “[b]ased on the vertical direction of the ‘side frame assembly,’ . . . , a [person of ordinary skill in the art] would have understood Johnson to teach that the containment walls stand ‘upwardly from said floor.’” Id. at 25. Showing the uncorrected versions of Figures 1 and 2 of Johnson, the Petition elaborates that “[t]his is further shown, e.g., in Fig. 2, where wall 16 is generally perpendicular with respect to the floor 26.” Id. at 25–26 (citing Ex. 1106, Fig. 2; Ex. 1103 ¶ 132). These statements do not indicate, much less prove, that Johnson discloses a containment wall that stands on a floor. Observing the vertical direction of side frame 12 and the perpendicular orientation of side sheet 16 to floor 26 does not establish that side frame 12 or side sheet 16 is disposed on floor 26. The cited testimony of Mr. Miller notes that Figure 2 shows “side sheet 16 is shown as standing normal to the floor.” Ex. 1103 ¶ 132. This too facially does not indicate, much less prove, that side sheet 16 is disposed on floor 26. slip op. at 13
- Strike new argumentNew argument disregardedDenied
“Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing. When addressing the claim limitations “containment walls standing upwardly from said floor,” the Petition does not cite Figure 5 of Johnson. See Pet. 24–28. This section of the Petition cites paragraphs 54–56, 130– 132, 134, and 135 of Mr. Miller’s testimony (id.), and none of this testimony cites to or addresses Figure 5 of Johnson, either (see Ex. 1103 ¶¶ 54–56, 130–132, 134–135). Furthermore, it is not apparent that Figure 5 of Johnson shows the same embodiment as Figure 2; Johnson identifies Figure 5 as a cross-section of Figure 4, which Johnson introduces as “a partial side elevation view of a gondola railcar having a bolster.” Ex. 1106, 3:7–8. We determine that Petitioner’s citation of Johnson’s Figure 5 in the Reply is unavailing because it constitutes an improper new argument. In that respect, we do not regard Petitioner’s new reliance on Johnson’s Figure 5 in an attempt to address a deficiency raised by Patent Owner in its Patent Owner Response as constituting a proper response envisioned by our rules. See 37 C.F.R. § 42.23(b). Furthermore, even if Petitioner’s citation of Figure 5 were a proper response, it would not demonstrate, by a preponderance of the evidence, that Johnson discloses the claimed relationship. We are persuaded that, without any other supporting evidence, Figure 5 of Johnson does not show the relationship between containment walls and a floor clearly enough to support, by a preponderance of the evidence, Petitioner’s contention that Johnson discloses containment walls that stand on a floor.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For the foregoing reasons, Petitioner has not persuaded us that Johnson discloses containment walls that stand on the floor, as required by independent claim 15. Additionally, Petitioner has not asserted that it would have been obvious to modify Johnson’s railcar to have such a configuration, much less provided evidence and reasoning persuading us that it would have been obvious to do so. See, e.g., Pet. 24–28. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that claims 15, 18, and 20 are unpatentable over Johnson.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 7,757,611 - PTAB · Nov 14, 2016 · IPR2015-01243 · APJ Grace Karaffa Obermann · IPR · Final written decision
Petitioner failed to prove claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, and claims 1–6 and 8–19 of the ’510 patent obvious over Fohr, Sato, and …
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We recognize that it may be necessary “to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l, 550 U.S. at 418. Petitioner in these proceedings, however, directs us to no persuasive reason why an ordinary artisan would have turned to the heat-retaining battery module of Hallaj when working to implement a plurality of Sato’s cells in a pack to replace the capacitors in Fohr. Pet. 36–38 (nowhere addressing that critical point); Reply 13 (devoting four sentences to rebuttal of Patent Owner’s persuasive evidence that one would not have combined the disclosures of Hallaj, Fohr, and Sato in the manner claimed); see Ex. 1033, 15 (Examiner’s observation, in confirming the patentability of the challenged claims during reexamination, that Sato contains “no information as to how Sato’s cells would be implemented in a pack”). We view Petitioner’s unexplained leap from the single battery cell of Sato to the heat-retaining battery module of Hallaj as a classic example of impermissible hindsight reconstruction driven not by any teaching in the prior art, but by the claim requirement of a “plurality” of cells implemented in a battery pack. Pet. 36–38; Reply 13. Patent Owner, by contrast, comes forward with persuasive evidence, which we credit, showing that one of ordinary skill in the art would not have been led to arrange a plurality of Sato’s cells in the heat-retaining battery module of Hallaj because such a modified battery pack would have been unsuitable for use as a replacement for the capacitors in Fohr. Specifically, we credit the testimony of Dr. Blomgren, who cogently explains why a person of ordinary skill in the art would not have been led to the proposed modification. Ex. 2147 ¶¶ 79–85.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are not persuaded by Dr. Riley’s testimony that Fohr effectively teaches that both lithium-based battery cells and capacitors can achieve the 20 Amp Limitation, on a theory that “it’s actually the tool that draws the power” and “the right lithium cell” would be “a drop in replacement for this application.” Ex. 2169, 121:12–16 (Dr. Riley’s deposition testimony); Resp. 17. Dr. Riley readily admitted an unfamiliarity with capacitors, and identified no suitable “drop in” ready lithium cells available at the time of the invention. Ex. 2169, 121:11–122:4 (“[I]f I had a cell that could do similar things, I’d certainly swap it in there.”). On that point, we find more credible Dr. Blomgren’s testimony that “there is no guarantee that a given pack of battery cells can provide the current that a tool tries to draw.” Resp. 17 (citing Ex. 2147 ¶ 60).” slip op. at 13
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,944,173 - PTAB · Dec 7, 2015 · IPR2015-01438 · APJ Michael R Zecher · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute review of claims 1–3 and 8–12.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“they have settled their disputes regarding the ’104 patent. Paper 7, 2. The parties further represent that there are numerous related matters in the United States District Court for the Northern District of California that have been dismissed with prejudice or stayed pending final determination of two related inter partes reviews involving U.S. Patent No. 7,550,870 B2 (“the ’870 patent”). Id. at 3. Based on the joint requests filed by the parties in the two proceedings involving the ’870 patent, those cases have been terminated. Avocent Huntsville Corp. v. Cyber Switching Patents, LLC, Cases IPR2015-00690 & IPR2015-00725 (PTAB Dec. 7, 2015) (Paper 33 in each proceeding). Lastly, the parties do not represent that the ’104 patent is involved in any other proceedings before the Office. See generally id. at 2–4. Under these circumstances, we determine that it is appropriate to terminate this proceeding without rendering any further decisions. See 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 7,672,104 - PTAB · Sep 12, 2014 · IPR2014-00551 · APJ Scott E Kamholz · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding as to all parties because they settled and the proceeding was at an early stage.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“While the parties may agree to settle their issues related to the involved patent, the Board is not a party to the settlement and may determine independently any question of patentability. 37 C.F.R. § 42.74(a).” slip op. at 2
- Adverse judgmentOther
“In view of the parties’ settlement agreement made in connection with the termination in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), we determine that it is appropriate to terminate the involvement of Petitioner. Moreover, we determine that it also is appropriate to terminate the proceeding with respect to Patent Owner, because of the early stage of the proceeding. As a result, it is appropriate to enter judgment in the form of termination. See 37 C.F.R. § 42.2. Accordingly, it is ORDERED that the joint motion to terminate IPR2013-00551 is granted, and this proceeding is hereby terminated as to all parties, including Petitioner Apex Medical Corp. and Patent Owner ResMed Limited; and” slip op. at 3
None - PTAB · Sep 12, 2014 · IPR2013-00516 · APJ Scott E Kamholz · IPR · Order
The Board granted the parties’ joint motion and terminated IPR2013-00516 as to all parties before deciding patentability.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“In view of the parties’ settlement agreement made in connection with the termination in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), we determine that it is appropriate to terminate the involvement of Petitioner. Moreover, we determine that it also is appropriate to terminate the proceeding with respect to Patent Owner, because we have not yet decided the merits of this proceeding, and the record is not yet closed. As a result, it is appropriate to enter judgment in the form of termination. See 37 C.F.R. § 42.2. Accordingly, it is ORDERED that the joint motion to terminate IPR2013-00516 is granted, and this proceeding is hereby terminated as to all parties, including Petitioner Apex Medical Corp. and Patent Owner ResMed Limited; and” slip op. at 3
NonePatents in suitUS 7,997,267 - PTAB · Sep 12, 2014 · IPR2013-00512 · APJ Scott E Kamholz · IPR · Order
The Board granted the joint motion to terminate IPR2013-00512 as to all parties and dismissed Patent Owner’s motion to amend as moot.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties filed a joint motion to terminate the instant proceeding (Paper 37 (“Mot.”)) and a true copy of their written settlement agreement (Ex. 2041) made in connection with the termination, in accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). The parties also jointly requested that their settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 36. For the reasons provided below, the joint motion to terminate is granted. The joint request that the settlement agreement be treated as business confidential information is also granted.” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsOther
“Patent Owner has already filed a Response (Paper 17) and Motion to Amend (Paper 18), and Petitioner has filed a Reply (Paper 31) and Opposition (Paper 32), but the record is not yet closed, and the Board has not yet decided the merits of this proceeding. The parties represent that the ’772 patent is the subject of an exclusion order issued in ITC investigation No. 337-TA-879, as well as a stayed district court action, ResMed Inc. et al v. Apex Medical Corp. et al., No. 8:13-cv-00498 (C.D. Cal.). Mot. 5-7. The parties further represent that these matters are covered by the settlement agreement. Id. at 6, 7. In view of the parties’ settlement agreement made in connection with the termination in accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), we determine that it is appropriate to terminate the involvement of Petitioner. Moreover, we determine that it also is appropriate to terminate the proceeding with respect to Patent Owner, because we have not yet decided the merits of this proceeding, and the record is not yet closed. As a result, it is appropriate to enter judgment in the form of termination. See 37 C.F.R. § 42.2.” slip op. at 2
NonePatents in suitUS 7,487,772 - PTAB · Sep 11, 2014 · IPR2013-00511 · APJ Scott E Kamholz · IPR · Order
The Board granted the joint motion to terminate IPR2013-00511 as to all parties before deciding the merits, and granted confidential treatment of the settlement agreement.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The parties filed a joint motion to terminate the instant proceeding (Paper 28 (“Mot.”)) and a true copy of their written settlement agreement (Ex. 2018) made in connection with the termination, in accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74(b). The parties also jointly requested that their settlement agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 29. For the reasons provided below, the joint motion to terminate is granted. The joint request that the settlement agreement be treated as business confidential information is also granted.” slip op. at 2
NonePatents in suitUS 7,159,587
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.