- Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.All claims unpatentablePTAB · Oct 5, 2026 · IPR2025-00438 · APJ Lilan Ren · IPR · Final written decision
Claims 1–5, 7–13, and 16–20 are unpatentable; the Board found the challenged claims unpatentable on the grounds set out in its conclusions and summary table.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s definition of the level of ordinary skill in the art, and Petitioner’s definition appears consistent with the disclosures of the ’466 patent and the prior art of record. Accordingly, we adopt Petitioner’s definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 12
- BurdenUnpatentable
“Decision under 35 U.S.C. § 318(a) as to the patentability of the challenged claims of the ’466 patent. For the reasons discussed below, we determine Petitioner has established by a preponderance of the evidence that claims 1– 5, 7–13, and 16–20 of the ’466 patent are unpatentable.” slip op. at 2
Patent outcomesUS 10,569,466 unpatentableNonecites Phillips · KSR · GrahamPatents in suitUS 10,569,466 - Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.Some claims unpatentablePTAB · Sep 28, 2026 · IPR2025-00531 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–11 and 13–15 are unpatentable over the stated obviousness grounds; claim 12 was not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner filed a Petition (Paper 2, “Pet.”) requesting institution of an inter partes review of claims 1–15 of the ’698 patent. Discretionary denial of institution was determined to be not appropriate in this proceeding, and the proceeding was referred to the Board. Paper 10. Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims 1–15 of the ’698 patent on all presented challenges. Paper 11 (“Inst. Dec.”), 15.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73 (2025). For the reasons that follow, we determine that Shenzhen Tuozhu Technology Co., Ltd. (“Petitioner”) has shown by a preponderance of the evidence that claims 1–11 and 13–15, but not claim 12, of U.S. Patent No. 9,168,698 B2 (Ex. 1001, “the ’698 patent”) are unpatentable.” slip op. at 2
Patent outcomesUS 9,168,698 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,168,698 - Shenzhen Root Technology Co., Ltd. v. Willow Blossom Holdco Limited And Willow Innovations, Inc.All claims unpatentablePTAB · Sep 25, 2026 · IPR2025-00554 · APJ Barry L Grossman · IPR · Final written decision
Claims 17–19 and 21–33 are unpatentable as obvious under each asserted § 103 ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Env’t Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“according to the Phillips standard,” and that “no formal claim constructions are necessary for purposes of resolving controversies in this proceeding. Pet. 3. We agree. Given the lack of dispute on this record, we do not perceive the need to construe any claim limitation. 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. American Science & 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 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find Mr. Bauer’s testimonial evidence persuasive and undisputed as to why a person of ordinary skill, a degreed engineer with two years of experience designing human breast pump equipment, would modify Furrer to use a battery as a power source, and have a reasonable degree of confidence that it would work successfully.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Mr. Bauer’s testimonial evidence persuasive and undisputed as to why a person of ordinary skill, a degreed engineer with two years of experience designing human breast pump equipment, would modify Furrer to use a battery as a power source, and have a reasonable degree of confidence that it would work successfully. Concerning the proposed combination of Furrer and Alvarez, Mr. Bauer testifies why a person of ordinary skill would combine Furrer and Alvarez, explaining that: a POSITA6 would have turned to the teachings of Alvarez to implement Furrer’s vacuum pump using a conventional pump controller having a portable, battery-powered pump to not only increase portability and to allow the user to move about when using the device but also to provide improved control for the system. Ex. 1003 ¶ 138. Mr. Bauer also testifies: a POSITA would have recognized that Alvarez advantageously provides details for such a conventional vacuum pump suitable for safely and controllably delivering negative pressure using a “[c]ontroller 115 [that] “houses the power source and drive mechanism for pumping device 100, and also contains hardware for various functions, such as controlling pumping device 100, milk production quantification, and communication with other devices. 6 “POSITA” is a patent law acronym for a “person of ordinary skill in the art.” Id. ¶ 139 (citing Ex. 1005 ¶ 69). Mr. Bauer further explains that Alvarez discloses that a “pump unit2100 [disclosed in Alvarez] preferably include[es] a controller and processor 2104 as well as a motor 2102 for actuating the device.” Id. (citing Ex. 1005 ¶ 115); see also id. ¶¶ 140–142 (providing “second,” “third,” and “fourth” reasons why a person of ordinary skill would have been motivated to combine Furrer and Alvarez). Mr. Bauer concludes from his analysis that “a person skilled in the art” slip op. at 26
Patent outcomesUS 11,806,454 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,806,454 - Clearwater Paper Corporation v. Graphic Packaging International LLCAll claims unpatentablePTAB · Sep 23, 2026 · IPR2025-00878 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–3 and 11 are unpatentable as anticipated by Cleveland and obvious over Nakagawa and over Nakagawa combined with Tanner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have at least a bachelor’s degree in mechanical or chemical engineering, materials science, polymer science, or equivalent coursework, at least a year of experience developing paper-based laminates involving the application of polymer coatings to a substrate, and the appropriate industry familiarity with biodegradability standards and degradability techniques [and] . . . [l]ess work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa. Pet. 16 (citing Ex. 1003 ¶ 50). Clearwater’s definition is uncontested, and we apply that definition here, as it accords with the level of skill reflected in the asserted prior art and the problems addressed in the specification of the ’126 patent. C. Claim Construction” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have reviewed the cited testimony of Clearwater’s expert, including their calculations for arriving at a coat weight in Nakagawa that falls within the claimed range. See Ex. 1003 ¶¶ 132–33. We find that testimony, which is unrebutted, both credible and supported by the evidence of record. Thus, in light of Clearwater’s contentions, the cited portions of Nakagawa, and the unrebutted testimony of Clearwater’s expert, we are persuaded that Nakagawa discloses or otherwise suggests each and every element of claim 1. See Pet. 45–54, 60–64. Clearwater also persuades us that Cleveland discloses the additional subject matter of dependent claims 2, 3, and 11. See Pet. 64–66. Thus, we determine that Clearwater demonstrates that claims 1–3 and 11 are unpatentable as obvious over Nakagawa. F. Ground 3—Obviousness Over Nakagawa and Tanner” slip op. at 17
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“qualifies as prior art under 35 U.S.C. § 102(e)(1) “based on both its provisional and non-provisional filing dates.” Inst. Dec. 4 n.5. We were persuaded by Clearwater’s proof that Cleveland’s provisional (Ex. 1006) is “virtually identical” to Cleveland itself (Ex. 1005) and that the provisional provides written description support for at least claim 1 of Cleveland. See Pet. 18–21 (citing Ex. 1006, 2–6, 9). We were also persuaded by Clearwater’s showing that the provisional provides written support for the subject matter relied upon in Cleveland. Id. at 21–40 (citing Ex. 1006, 1–9). We are still persuaded by Clearwater’s showing. Thus, we see no reason to disturb our earlier finding that Cleveland is prior art to the ’126 patent.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“protectant layers has “a coat weight of from 5 to 30 lbs/3000 ft2.” As noted by Clearwater, Cleveland discloses a total coat weight for layers 14 and 16 as falling within the claimed range. Pet. 32–34 (citing Ex. 1005 ¶ 32). In particular, Cleveland discloses that “the coextruded layer of copolyester (irrespective of which side of the substrate the layer is disposed) is of a total coat weight of between about 10 and about 40 lb/3000 ft2 in any combination of between about 80/20 to 20/80 parts by weight of Ecoflex to Biomax,” of which “a total coat weight of 25 lb/3000 ft2 is preferred.” Ex. 1005 ¶ 32. As disclosed, Cleveland’s total coat weight range of 10–40 lb/3000 ft2 falls almost entirely within the claimed range, and the preferred total coat weight of 25 lb/3000 ft2 falls squarely within the claimed range. Thus, Cleveland satisfies claim elements [1.3.2] and [1.5.2]. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (“[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is anticipated if one of them is in the prior art.”) (citation omitted). As such, we find that Clearwater adequately demonstrates that Cleveland discloses all the elements of claim 1. 4. Dependent Claims” slip op. at 12
Patent outcomesUS 8,637,126 unpatentable§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,637,126 - Ajinomoto Co., Inc. v. Abtis Co., Ltd.No claims unpatentablePTAB · Aug 3, 2026 · IPR2025-00283 · APJ Lilan Ren · IPR · Final written decision
The Board cancelled claim 11 and granted substitute claims 14–16, finding Petitioner had not shown those claims unpatentable on any asserted ground.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“must determine whether the motion to amend meets the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4. In that regard, Patent Owner bears the burden of persuasion to show that: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter;” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“In this case, Patent Owner’s expert “Dr. Zhou signed the second declaration, stood behind its contents, and was available for cross-examination.” Paper 35, 4. Petitioner does not dispute this statement. Paper 39, 1. Petitioner does not identify any specific undue prejudice caused by Exhibit 2008. For example, Petitioner argues that “the failure to impress upon a witness that a statement is under oath goes to the heart of its reliability as evidence” and that “as the Board has recognized, hearsay is inherently unreliable” without specifying what statement in Exhibit 2008 lacks reliability. Paper 39, 4. Because Petitioner does not provide specific evidence of undue prejudice, we find Petitioner has suffered no such undue prejudice in this case. See Liquidia, 2021 WL 4860773 at *25. We therefore deny Petitioner’s Motion to Exclude on the basis of lack of authenticity. With regard to the assertion that Exhibit 2008 is hearsay, Petitioner objects to the exhibit because the testimony is based “on other informal and unpublished documents that are hearsay under FRE 802.” Paper 29, 1. Petitioner does not specify what such “informal and unpublished documents” are. See id. Federal Rule of Evidence 703 expressly states, “[a]n expert may base an opinion on fact or data in the case that the expert has been made aware of or personally observed.” The facts or data “need not be deny Petitioner’s Motion to Exclude on the basis of hearsay.” slip op. at 50
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable
“Petitioner’s argument is unpersuasive. Paragraph 59 of the ’503 application describes formula 8-1 but does not support Petitioner’s argument that other unknown formulas may be included in the recited modified heavy chains. Ex. 2003 ¶ 59. Petitioner’s hypothesis that the recited heavy chains may (or may not) encompass unknown formulas is also inapposite to the written description inquiry before us — that is, whether the inventor was in possession of the subject matter recited in claims 14–16 based on the disclosure including formulas 8-1, 8-2, and 8-3. See PowerOasis, 522 F.3d at 1306.” slip op. at 14
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)EnabledNot shown unpatentable
“These arguments in the Sur-Reply are unpersuasive to show a lack of enablement first and foremost because the arguments do not specifically provide evidence showing that any purported experimentation is undue. See Sur-Reply 2–8 (asserting, but without providing evidence under any specific Wands factors, that the examples and guidance in the specification do not extend to the broad scope of all antibodies); see Wands, 858 F.2d at 737. We again emphasize that the analysis of undue experimentation does not necessarily require every Wands factor to be explicitly addressed but the analysis must be based on “weighing many factual considerations” depending on the nature of the invention and underlying art. Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1336 (Fed. Cir. 2013). The assertion that the claim scope is broad alone does not suffice to show a lack of enablement based on the record before us. Moreover, as we note supra, Petitioner’s claim scope argument is based on the false premise that the scope of claims 14–16 is as broad as the claim term “antibody” without taking into account all other claim elements. For example, Petitioner does not disagree with Patent Owner’s statement that “[t]he ’675 Patent’s specification discloses the structural modification site, the chemistry used to modify that residue, and working examples demonstrating the modification” (Reply 2), but asserts only that “[t]he disclosure of SSFI that only binds to IgG1 Fc domains (SEQ ID NO:1) is . . . . inconsistent with the expansive scope of the claims.” Sur-Reply 5. Petitioner’s argument that the claims encompass proteins that lack a lysine reside at a 248 position improperly excludes from the claim language the “lysine residue at 248 position . . . [as] determined by the EU numbering system” that claims 14–16 require. As Dr. Zhou testifies, “each proposed lysine residue at position 248 (EU numbering) is covalently modified with a specific attachment with a terminal bio-orthogonal click-chemistry functional group. The specification describes targeted transfer of a chemical functional group to lysine 248” and when claims 14–16 are considered in their entirety, which includes all claim elements, “[a] POSA would understand the claim itself to limit the modified antibodies to those with lysine at position 248.” Ex. 2004 ¶ 48; Ex. 2008 ¶ 47. We also note that Patent Owner states “a POSA would understand that the phrase ‘one or more modified heavy chain’ encompasses antibodies within typical DAR distributions (i.e., fractional numbers) rather than requiring a distinct process for producing antibodies bearing modified heavy chains in exact integers.” Reply 2–3. Moreover, Patent Owner states that PepTalk Presentation demonstrates that “a POSA would understand antibody conjugation products to exist as mixtures rather than discrete whole number species” because PepTalk Presentation “presents DAR values as non-integer measurements, i.e. DARs of 1.8 and 1.9 reflecting such distributions.” Id. at 3 (citing Ex. 1007, 28). According to Patent Owner, “preparations having an average DAR of approximately 1.8 (commonly referred to in practice as ‘DAR2’) may reflect typical reaction distributions in which some antibodies contain two modified heavy chains while others contain fewer.” Id. at 3 (citing Ex. 2008 ¶ 46). Petitioner does not rebut these statements. See Sur-Reply 2–8. Based on the foregoing, the evidence before us does not show any” slip op. at 27
Patent outcomesUS 11,896,675 not shown unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,896,675 - Shenzhen Root Technology Co., Ltd. v. Willow Blossom Holdco LimitedAll claims unpatentablePTAB · Jul 30, 2026 · IPR2025-00560 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–29 are unpatentable under each asserted obviousness ground, including Chang and Fang, because Petitioner proved unpatentability by a preponderance of the evidence.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“Additionally, we note that Patent Owner did not cross-examine Mr. Ryan Bauer, who provided a detailed, 169-page expert report providing, on behalf of Petitioner, his opinions about the issues in this proceeding. See Exhibit 1003. Mr. Bauer’s testimonial evidence in this proceeding remains unrebutted.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had “bachelor’s degree in mechanical engineering or a similar field and at least two years of experience designing human breast pump equipment. More education could substitute for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 15–18). Mr. Bauer’s Declaration testimony states he considered some of the factors listed above. Ex. 1003 ¶ 17. Mr. Bauer testifies that based on his background and experience, in his opinion, the level of ordinary skill is as stated by Petitioner. Id. at 18. Based on the prior art, the sophistication of the disclosed technology in the ’381 patent, and Mr. Bauer’s undisputed testimony, we adopt Petitioner’s definition of the level of ordinary skill.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the Examiner construed the term “self- contained, in-bra wearable device” to mean “complete, or having all that is needed, in itself’ and is capable of being worn in a bra.” Pet. 8 (citing Ex. 1005, 2290).14 According to Petitioner, “[Patent Owner] did not dispute this construction, and Petitioner applies it herein.” Id. Petitioner contends that all other terms “should receive their plain and ordinary meaning.” Id. We do not perceive the need to construe any claim limitation. 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. American Science & 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 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“(3) 1[a][1] a diaphragm configured to prevent milk from reaching an air pump by forming a seal around its outer edge; Petitioner relies on Fang for the disclosure of a diaphragm, as stated in this clause. Pet. 25–26. Petitioner asserts the proposed combination of elements suggest a breast pump device that would have used a diaphragm pump including first and second diaphragm housing components and an elastic diaphragm, “in accordance with Fang’s suggestions.” Id. at 25. As also asserted by Petitioner, Fang discloses that flexible diaphragm 7 (i.e., a membrane) is configured to prevent milk from reaching the pump. Id. at 26 (citing Ex. 1009 ¶ 19 (“The elastic diaphragm 7 is used to prevent milk from flowing into the air pump main unit 8.”). Mr. Bauer testifies: The flexible diaphragm [diaphragm 7 in Fang] forms a watertight and airtight seal around its outer edge. In doing so, the diaphragm prevents the passage of milk from reaching the air pump and facilitates generation of negative pressure during operation. Fang also explains that the elastic diaphragm 7 deforms away from the nipple tunnel when a vacuum is created on a pumping chamber, which then creates negative air pressure in the nipple tunnel when a vacuum is created on a pumping chamber.” slip op. at 28
Patent outcomesUS 11,813,381 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,813,381 - Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.All claims unpatentablePTAB · Jul 22, 2026 · IPR2024-01095 · APJ Garth D Baer · IPR · Remand
On remand, the Board maintained its finding that claims 2 and 17 are unpatentable under §103 over Diekmann and Ma, and Suzuki and Ma.
RulingsRemand decision- RemandDecided for petitioner
“that is both n-doped and comprised of 8-hydroxy-quinolinolato-lithium (Liq). The district-court defendant’s first invalidity challenge relied primarily on Clix2, which lacked an n-doped ETL. Paper 48, 2, Paper 50, 3. Thus, the asserted combination required modifying Clix2’s non-doped ETL by adding an n-dopant. Clix2’s missing n-doped ETL appeared to be a focus at trial. See Ex. 2034, 917:1–18, 920:8–14. Here, in contrast, Petitioner proposed a more modest modification to materially different primary references, Suzuki and Diekmann, which both already have n-doped ETLs. See Paper 50, 2–3; Paper 54 8–9. As we explained in our Final Written Decision, because Patent Owner did not contest that Liq acts as an n-dopant in Ma, Petitioner’s combinations were obvious because they merely “substitute one known n-dopant for another to further the same goal of improving ETL conductivity.” Paper 54, 12. That simple-substitution analysis would not be the same when n-doping Clix2’s non-doped ETL. For this reason, we agree with Petitioner that the district-court Clix2-based combination “is a different combination with a materially different motivation-to-combine analysis,” as compared to the Diekmann/Suzuki and Ma combinations that are at issue here. Paper 50, 3.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Dependent claims 2 and 17 require an electron transport layer (ETL) that is both n-doped and comprised of 8-hydroxy-quinolinolato-lithium (Liq). The district-court defendant’s first invalidity challenge relied primarily on Clix2, which lacked an n-doped ETL. Paper 48, 2, Paper 50, 3. Thus, the asserted combination required modifying Clix2’s non-doped ETL by adding an n-dopant. Clix2’s missing n-doped ETL appeared to be a focus at trial. See Ex. 2034, 917:1–18, 920:8–14. Here, in contrast, Petitioner proposed a more modest modification to materially different primary references, Suzuki and Diekmann, which both already have n-doped ETLs. See Paper 50, 2–3; Paper 54 8–9. As we explained in our Final Written Decision, because Patent Owner did not contest that Liq acts as an n-dopant in Ma, Petitioner’s combinations were obvious because they merely “substitute one known n-dopant for another to further the same goal of improving ETL conductivity.” Paper 54, 12. That simple-substitution analysis would not be the same when n-doping Clix2’s non-doped ETL. For this reason, we agree with Petitioner that the district-court Clix2-based combination “is a different combination with a materially different motivation-to-combine analysis,” as compared to the Diekmann/Suzuki and Ma combinations that are at issue here. Paper 50, 3.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“that is both n-doped and comprised of 8-hydroxy-quinolinolato-lithium (Liq). The district-court defendant’s first invalidity challenge relied primarily on Clix2, which lacked an n-doped ETL. Paper 48, 2, Paper 50, 3. Thus, the asserted combination required modifying Clix2’s non-doped ETL by adding an n-dopant. Clix2’s missing n-doped ETL appeared to be a focus at trial. See Ex. 2034, 917:1–18, 920:8–14. Here, in contrast, Petitioner proposed a more modest modification to materially different primary references, Suzuki and Diekmann, which both already have n-doped ETLs. See Paper 50, 2–3; Paper 54 8–9. As we explained in our Final Written Decision, because Patent Owner did not contest that Liq acts as an n-dopant in Ma, Petitioner’s combinations were obvious because they merely “substitute one known n-dopant for another to further the same goal of improving ETL conductivity.” Paper 54, 12. That simple-substitution analysis would not be the same when n-doping Clix2’s non-doped ETL. For this reason, we agree with Petitioner that the district-court Clix2-based combination “is a different combination with a materially different motivation-to-combine analysis,” as compared to the Diekmann/Suzuki and Ma combinations that are at issue here. Paper 50, 3.” slip op. at 2
Patent outcomesUS 11,828,425 unpatentable§ 103 obviousnessPatents in suitUS 11,828,425 - Innoscience America, Inc. v. Infineon Technologies Americas Corp.No claims unpatentablePTAB · Jun 30, 2026 · IPR2025-00175 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–17 were not shown unpatentable because Petitioner failed to establish that Usui’s interconnect structure or Yu’s metal gate stacks satisfy the construed “electrode stack” limitation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA” or “POSA”) would have had “at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 80–82). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 1–76. Neither party explains why the outcome of this case would be affected by the adoption of the proffered definition of a person of ordinary skill in the art. In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 6–7. Because Petitioner’s definition of the level of skill in the art is consistent with the ’562 patent and the asserted prior art, we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“comprises the recited metals and has the recited thickness, which forms an electrical contact for use on a semiconductor device generally or a group III- V semiconductor in particular. This is consistent with our determination that “electrode stack” is a conductor that provides a path for current entering or leaving a medium such as a semiconductor device We disagree with Patent Owner that “electrode stack” as used in the challenged claims should be limited to the specific electrodes shown in the embodiments described in the Specification. See PO Resp. 4–9. Although the Specification describes embodiments using source, drain, and Schottky gate electrodes as electrical contacts, we see no reason to construe the term “electrode stack” itself to be limited to these components as Patent Owner proposes. Claims 1 and 13 expressly recite that electrode stacks comprise the claimed “electrical contact,” without expressly including or precluding any specific type of electrode. Ex. 1001, 5:54–63, 6:37–47. The Federal Circuit advises that the Specification “is not a substitute for, nor can it be used to rewrite, the chosen claim language. ‘Specifications teach. Claims claim.’” SuperGuide, 358 F.3d at 875 (quoting SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 n.14 (Fed. Cir. 1985) (en banc)). The Specification does teach electrical contacts that include source, drain, and Schottky gate electrodes, but claims 1 and 13 are directed to electrical contacts that are not expressly so limited. Patent Owner’s proposed construction would effectively rewrite the claim by adding limitations, which we decline to do under the guise of claim construction. See id. (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). In view of the foregoing, we construe the claim term “electrode stack” to mean “a conductor that provides a path for current entering or leaving a medium such as a semiconductor device.”” slip op. at 17
- Expert testimonyPetitioner expert discountedDecided for patent owner
“that the identified layers in Usui’s interconnect metallurgy structure form an “electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. See Pet. 11–12 (citing Ex. 1002 ¶¶ 89–91). Neither Petitioner nor Dr. Zhao, however, provide adequate explanation or evidence as to why Usui’s interconnect metallurgy structure forms an “electrode stack,” i.e., a conductor that provides a path for current entering or leaving a medium such as a semiconductor device. Dr. Zhao’s testimony merely repeats the disclosures in Usui and concludes, without further technical detail, explanation, or reference to objective evidence, that Usui’s Figure 8 discloses an electrode stack. Ex. 1002 ¶¶ 89–91. Dr. Zhao’s testimony sets forth Petitioner’s conclusory assertions as though they are facts, rather than setting forth facts and evidence in support of those assertions. Compare id. with Pet. 11–12. Absent underlying facts or evidence to support Dr. Zhao’s opinion, the cited testimony “adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In contrast, Patent Owner’s declarant Dr. Piner testifies, with evidentiary support, that interconnects (such as Usui’s interconnect metallurgy structure) and electrical contacts (such as that claimed in the ’562 patent) are not the same thing. See Ex. 2024 ¶¶ 63–70. For example, Dr. Piner explains: In other words, not all metals in a semiconductor device have the same purpose and could not be said to be interchangeable. By August 2009 it was well known to a POSA how to discern if a metal component in a transistor is an interconnect or serves as an electrical contact such as a gate contact or ohmic contact, based on the structure and functionality of the metal component. For example, interconnects are made up of metal strips and are deposited on insulators. EX-1011 (Mishra) at 216. Interconnects are low resistance conductors that can carry very high current densities. Id., 216, 217. Unlike Schottky contacts and ohmic contacts, interconnects do not provide non-linear IV response like Schottky contacts nor inject electrons and holes into semiconductors like ohmic contacts. Id., 218. As many of the references cited by Dr. Zhao illustrate, electrical contacts had their own highly complex design challenges. EX-1008 (Pearton), 41-59 (Pages 53-71 of 383) (discussing electrical contacts); EX-1017 (Kramer), 11-126 (Pages 18-130 of 151) (same). And while Dr. Zhao cites these as supporting a POSA’s knowledge of an electrical contact, none of these references describe electrical contacts as interconnects. Id. ¶ 71. Dr. Piner further testifies that Usui’s interconnect metallurgy structure is an interconnect, and not an electrical contact, because “Usui states that ‘[t]he structures fabricated by the process of the present invention are especially useful for forming electrical connections or wiring such as between active and/or passive devices of an integrated circuit structure.’” Id. ¶ 148 (citing Ex. 1004, 1:11–14) (alteration in original); see also id. ¶¶ 150– 151 (Dr. Piner testifying that Usui’s interconnect metallization structure is not an “electrode stack” under a broad definition of electrode). Dr. Piner’s testimony in this regard rebuts Petitioner’s and Dr. Zhao’s conclusory assertions to the contrary.” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“conductor that provides a path for current entering or leaving a medium such as a semiconductor device.” Thus, Petitioner must show that Usui’s layers 13–15, 18, and 19 provide a path for current entering or leaving a medium such as a semiconductor device. After reviewing the complete trial record, we are not persuaded that Petitioner has done so. Petitioner relies on the testimony of Dr. Zhao to support its contention that the identified layers in Usui’s interconnect metallurgy structure form an “electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. See Pet. 11–12 (citing Ex. 1002 ¶¶ 89–91). Neither Petitioner nor Dr. Zhao, however, provide adequate explanation or evidence as to why Usui’s interconnect metallurgy structure forms an “electrode stack,” i.e., a conductor that provides a path for current entering or leaving a medium such as a semiconductor device. Dr. Zhao’s testimony merely repeats the disclosures in Usui and concludes, without further technical detail, explanation, or reference to objective evidence, that Usui’s Figure 8 discloses an electrode stack. Ex. 1002 ¶¶ 89–91. Dr. Zhao’s testimony sets forth Petitioner’s conclusory assertions as though they are facts, rather than setting forth facts and evidence in support of those assertions. Compare id. with Pet. 11–12. Absent underlying facts or evidence to support Dr. Zhao’s opinion, the cited testimony “adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 21
Patent outcomesUS 8,686,562 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,686,562 - Luxottica Of America, Inc. v. E-Vision Smart Optics, Inc.Adverse judgmentPTAB · Jun 29, 2026 · IPR2025-01512 · APJ Arthur M Peslak · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment, cancelled claims 1–27, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request entry of adverse judgment against itself at any time during an inter partes review proceeding. See 37 C.F.R. § 42.73(b). Under these circumstances, entry of judgment adverse to the Patent Owner is appropriate as to claims 1–27 of the ’612 patent. Consequently, we grant Patent Owner's request for adverse judgment.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
NonePatents in suitUS 11,971,612 - Innoscience America, Inc. v. Infineon Technologies Americas Corp.No claims unpatentablePTAB · Jun 12, 2026 · IPR2025-00094 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 1–16 were not shown unpatentable under any asserted obviousness ground because Petitioner failed to establish the proposed modifications and combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design.” Pet. 5 (citing Ex. 1003 ¶¶ 67–69). Petitioner also argues that “[a]dditional education could substitute for professional experience and vice versa.” Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. PO Resp. 1–76. Neither party explains why the outcome of this case would be affected by the adoption of the proffered definition of a person of ordinary skill in the art. Accordingly, and because it appears to be consistent with the ’003 patent and the asserted prior art, we adopt Petitioner’s assessment of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes construing any claim terms. Pet. 6; Prelim. Resp. 1–76. In addition, as discussed below, we are able to determine the outcome of this proceeding without expressly construing any terms. Thus, we do not construe any terms for the purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“challenged claim. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). “This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.” KSR, 550 U.S. at 418–419. On the other hand, an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). However, a petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, a petitioner must articulate a reason why a person of ordinary skill in the art would have combined or modified the prior art references. In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1366 (Fed. Cir. 2017) (“In determining whether there would have been a motivation to combine prior art references to arrive at the claimed invention, it is insufficient to simply conclude the combination would have been obvious without identifying any reason why a person of skill in the art would have made the combination.”); Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”) (citing InTouch Techs., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014)). In arguing for the obviousness of claim 1 over the combination of Bonn and Mizuta, Petitioner argues that a person of ordinary skill in the art would have modified Bonn to perform high-frequency signal amplification. Pet. 19–25. In particular, Petitioner argues that a person of ordinary skill in the art “would have found it obvious to modify the circuit of Figure 1 [of Bonn] and use Figure 7’s structure for high frequency signal amplification in place of mixer 40,” followed by additional modifications to the circuit of Figure 1. Id. at 22–25. These additional modifications include removing LO port 55, removing FET 20 (along with voltage source 80, capacitors 16, 26, and 34, resistor 18, and inductors 22 and 24), removing capacitor 34 and shorting gate structure 324 to ground, and removing resistors 46 and 48 and shorting terminal 51 to ground. Id. According to Petitioner, the motivation for these modifications was that “Bonn . . . teaches using its dual gate structures for signal amplification without signal mixing.” Id. at 22 (citing Ex. 1006, 11:26–37). On the record developed at trial, we disagree. Bonn does, as Petitioner argues, teach that “the dual gate FET structure of the present invention can be tailored to provide superior performance over the prior art dual gate FET structures in high frequency signal mixing as well as other applications such as high frequency signal amplification.” Ex. 1006, 11:33–37. But the tailoring that Bonn refers to relates to changes to the structure of the field-effect transistor itself, not to the circuitry surrounding that transistor. Id. (teaching that the reason that “the dual gate FET structure of the present invention can be tailored” is that “the parameters such as gate width, dopant concentration, and channel depth, under each gate of the dual gate FET are individually adjusted for optimum performance”). Thus, although Bonn might have motivated a person of ordinary skill in the art to have made changes to the dual-gate FET itself, we are not persuaded that it would have motivated the additional changes to the circuit of Bonn’s Figure 1.” slip op. at 11
- Strike new argumentNew argument disregardedDecided for patent owner
“Mishra’s Figure 5 is a second gate in favor of a new position. Petitioner’s new argument is that a person of ordinary skill in the art would have found it obvious to connect the field plate of Mishra’s Figure 5 to the source instead of the gate, converting the field plate into a second gate. Compare Pet. 83 (equating “drain side gate” with “field plate 66, Figure 5”), 86–88 (identifying field plate 66 as a “second gate”), with Reply 21–22 (identifying only the embodiment of Mishra’s Figure 10 as a source-connected field plate), 22–23 (arguing that Mishra teaches that the Figure 5 embodiment “could be arranged as ‘a single transistor with a dual gate structure’”). Although “the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings,” Genzyme Therapeutic Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 1360, 1366 (Fed. Cir. 2016), the shifting of arguments is not, Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). Accordingly, Petitioner’s change of arguments here is inappropriate. Moreover, even if we were to consider Petitioner’s inappropriate new argument, we would conclude that Petitioner does not support the argument with sufficient evidence. “Whether [an obviousness ground] is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). Petitioner’s new argument relies on a person of ordinary skill in the art modifying the Figure 5 embodiment of Mishra to connect the field plate to the source rather than the gate. Reply 21–24. Petitioner does not, however, show that a person of ordinary skill in the art would have had a motivation to make this modification or a reasonable expectation that this combination would be successful. Id. Petitioner argues instead that “[n]o ‘reason’ is needed.” Id. at 24. Thus, Petitioner does not show by a preponderance of the evidence that claim 1 would have been obvious over the combination of Mishra and Ren.” slip op. at 19
Patent outcomesUS 8,264,003 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,264,003
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.