- Medtronic, Inc. v. Moskowitz Family LLCInstitutedPTAB · Aug 20, 2026 · IPR2026-00162 · APJ John A Squires · IPR · Director review
The Director granted the petition and instituted inter partes review of claims 8, 9, 13, and 17–21 based on Palmatier.
RulingsDirector review decision- Director reviewOther
“Before JOHN A. SQUIRES, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. DECISION Granting Institution of Inter Partes Review” slip op. at 1
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“1 US 9,445,919 B2, issued Sept. 20, 2016 (Ex. 1057). 2 At this preliminary stage, Petitioner establishes a reasonable likelihood that Palmatier anticipates or renders obvious the challenged claims (Pet. 22–66), and Patent Owner does not challenge Petitioner’s showings as to Palmatier.” slip op. at 2
- BurdenDecided for petitioner
“1 US 9,445,919 B2, issued Sept. 20, 2016 (Ex. 1057). 2 At this preliminary stage, Petitioner establishes a reasonable likelihood that Palmatier anticipates or renders obvious the challenged claims (Pet. 22–66), and Patent Owner does not challenge Petitioner’s showings as to Palmatier.” slip op. at 2
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“Patent Owner does present some evidence of conception, diligence, and constructive reduction to practice, but Petitioner persuasively disparages that evidence on the preliminary record. For example, Patent Owner relies on April and May 2011 emails exchanged between two or more of the named inventors (Exs. 2027–2031, 2056, 2057, 2059) and a declaration from one of the named inventors, Dr. Nathan Moskowitz (Ex. 2024), to show conception of the claimed subject matter. Prelim. Resp. 8–61. Patent Owner also relies on Dr. Moskowitz’s declaration and emails (Exs. 2045, 2049, 2050) to show reasonably continuous diligence leading up to the filing of a provisional patent application. Id. at 63–66. Petitioner asserts that the documentary evidence does not show conception of the claimed “ridges,” in part, because a key email attachment regarding an embodiment for ridges has not been provided. Pet. Reply 1–4. Petitioner also asserts that Patent Owner’s relies on the declaration testimony from only one named inventor, which is vague and should be the subject of cross-examination. Id. Given these disputes, during trial, the parties are free to develop the record as to the asserted prior conception and diligent reduction to practice of the claimed subject matter, relative to Palmatier’s filing date.” slip op. at 3
§ 102 anticipationPatents in suitUS 12,011,367 - PTAB · Apr 15, 2026 · IPR2025-00103 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on each obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record and for the reasons explained below, we institute an inter partes review of claims 1–15 of the ’766 patent on all challenges in the Petition. Upon consideration of the Petition and the evidence of record, for the reasons given below we determine there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’766 patent. Accordingly, we institute an inter partes review of claims 1–15 of the ’766 patent based upon the asserted grounds of unpatentability set forth in the Petition. Pet. 1.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“If Petitioner succeeds in establishing these limitations lack written description support in the priority applications, then the challenged claims will not receive the benefit of the priority applications’ earlier filing dates and Singh129 will qualify as prior art. On the present record, we are not directed to adequate written description support for the limitations reciting receiving data from a “shortrange wireless enabled data capture device” or “use[s] HTTP” to upload/transfer “new-data along with user information” to a user data publishing website, and wherein “the user information corresponds to a user identifier.” See Pet. 12. Even if support for these limitations is found in Singh906, beyond the initial incorporation by reference, “Singh906 is not mentioned or otherwise referenced in the specification” of the ’766 patent, and on the current record, we are not otherwise apprised of disclosure within the four corners of the specification that demonstrates possession of the system or mobile application as claimed. For the above reasons, we determine that Petitioner has demonstrated a reasonable likelihood that the challenged claims lack adequate written description support, and thus that Singh129 qualifies as prior art to the challenged claims.” slip op. at 23
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artOther
“If Petitioner succeeds in establishing these limitations lack written description support in the priority applications, then the challenged claims will not receive the benefit of the priority applications’ earlier filing dates and Singh129 will qualify as prior art. On the present record, we are not directed to adequate written description support for the limitations reciting receiving data from a “shortrange wireless enabled data capture device” or “use[s] HTTP” to upload/transfer “new-data along with user information” to a user data publishing website, and wherein “the user information corresponds to a user identifier.” See Pet. 12. Even if support for these limitations is found in Singh906, beyond the initial incorporation by reference, “Singh906 is not mentioned or otherwise referenced in the specification” of the ’766 patent, and on the current record, we are not otherwise apprised of disclosure within the four corners of the specification that demonstrates possession of the system or mobile application as claimed. For the above reasons, we determine that Petitioner has demonstrated a reasonable likelihood that the challenged claims lack adequate written description support, and thus that Singh129 qualifies as prior art to the challenged claims.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues that a person of ordinary skill in the art would have been motivated to look to the features of both Singh129 and Singh906 when considering an improved publishing system. Pet. 16. Further, Petitioner points out that Singh129 incorporates by reference the ’802 application, published as Singh906. Id. According to Petitioner, a person of ordinary skill in the art would have been motivated to modify Singh129’s system to add Singh906’s user authentication credentials to Singh129’s user preferences to give the “user more control over the publishing of their multimedia content.” Id. at 17 (citing Ex. 1030 ¶ 456). Petitioner cites four additional reasons for a person of ordinary skill in the art to modify Singh129 with Singh906 including solving a known problem, avoiding sending authentication credentials to publish content, virtual spaces provided for clients in Singh906, and that authentication credentials would have been an obvious design choice. Id. at 17–18 (citing Ex. 1009 ¶ 47, Figs. 2, 5; Ex. 1010 ¶¶ 17, 18, 27; Ex. 1030 ¶¶ 457–461). Petitioner also asserts a person of ordinary skill in the art would have had a reasonable expectation of success for the modification of Singh129 with Singh906. Pet. 18. Petitioner argues “the proposed combination would have required no more than the application of known techniques (using authentication credentials and HTTP in accordance with Singh906) to a known system (Singh129’s system) in the same field of endeavor (media publishing) and from the same assignee (CellSpinSoft) to obtain the benefits described above.” Id. (citing Ex. 1030 ¶ 461). Based on the record before us, we find sufficient the argument and evidence that the combination of Singh129 and Singh906 teaches or suggests all of the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine features from Singh906 into Singh129 with a reasonable expectation of success, for the reasons discussed in the Petition. See Pet. 16–19. We have also reviewed Petitioner’s contentions with respect to dependent claims 2–15, and find the same for these claims. See id. at 28–38.” slip op. at 25
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,900,766 - PTAB · Apr 15, 2026 · IPR2025-00102 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted review of claims 1–10 on both obviousness grounds, finding a reasonable likelihood that Petitioners would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 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.” For the reasons explained below, we institute an inter partes review of claims 1–10 of the ’121 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time the invention was made. See Graham, 383 U.S. at 17–18. Petitioners contend that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”) would have had: at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field consumer electronics, with exposure to digital camera technology and wireless communications. Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6 (citations omitted) (citing Ex. 1030 (Lett Decl.) ¶¶ 94–95). Because Petitioners’ proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioners assert that no express constructions are required to institute review and find the challenged claims unpatentable. See Pet. 7. We find it unnecessary to construe any claim term to decide whether Petitioners satisfy the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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))). Any final written decision entered in this case may include express claim constructions, or may include discussion of claim scope that differs from that provided in our analysis in this Decision. Any final claim constructions will be based on the full trial record.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“E. Ground 1 – Alleged Obviousness Over Hiroishi, Kahn, Endsley, and Bluetooth Petitioners assert that claims 1–10 are unpatentable as obvious over the combination of Hiroishi, Kahn, Endsley, and Bluetooth. Pet. 16–65. After considering Petitioners’ arguments and cited evidence, we find that for purposes of institution, Petitioners have shown a reasonable likelihood of establishing that claims 1–10 are unpatentable as obvious over the combination of Hiroishi, Kahn, Endsley, and Bluetooth.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,234,121 - PTAB · Jan 14, 2026 · IPR2025-01191 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds because the petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . 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 the current record, and for the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim, and we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. PATENT OWNER’S 35 U.S.C. § 325(D) ARGUMENTS Patent Owner presents arguments directed to discretionary considerations under 35 U.S.C. § 325(d) and requests the Petition be denied based on these arguments. Prelim. Resp. 2–16. However, Patent Owner’s § 325(d) arguments are untimely under the “Interim Director Discretionary Process,”6 and, as such, will not be considered by the Board. See Section I.C. (“The . . . patent owner should not present discretionary considerations in the . . . Patent Owner Preliminary Response (POPR)”); Section I.E. (“[A] Board panel will issue a decision on institution addressing the merits and other non-discretionary considerations.”). 5 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide#step1 6 https://www.uspto.gov/patents/ptab/interim-director-discretionary-process.” slip op. at 38
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Petitioner bears the burden of establishing that Wang is a printed publication. Medtronic, 891 F.3d at 1380. The determination of whether a document is a “printed publication” “involves a case-by-case inquiry into the facts and circumstances surrounding the reference's disclosure to members of the public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, IPR2018-01039, Paper 29 at 13.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“A claim is unpatentable as anticipated under 35 U.S.C. § 102 “if each and every limitation is found either expressly or inherently in a single prior art reference.” WhitServe, LLC v. Computer Packages, Inc., 694 F.3d 10, 21 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998)). An anticipatory reference must also “disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,822,165 - PTAB · Dec 3, 2025 · IPR2025-01026 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–20 on all petition challenges because the Baliarda-543 challenges met the reasonable-likelihood threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “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) (2024). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we 1 Petitioner filed a confidential version of the Petition as Paper 3 and a public version of the Petition as Paper 4. We cite to the public version of the Petition. institute an inter partes review of claims 1–20 in the ’677 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill as of the ’677 patent’s effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 11 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 40. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 17. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’677 patent as well as the asserted references. See, e.g., Ex. 1001, 1:26–6:47, 42:47–44:61, code (57); infra §§ III.E.1–III.E.2.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term, phrase, or limitation requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Although “Dou does not require its ‘diversity antenna architecture’ to provide spatial diversity,” Dou nevertheless requires a wireless device with some type of diversity antenna architecture. See, e.g., Ex. 1013 ¶¶ 14, 17–18, 22–24, 30, 32–34, codes (54), (57), claims 1 and 16. As an example, Dou’s independent claim 1 covering a “wireless device” requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 1. As another example, Dou’s independent claim 16 covering a “wireless device” also requires a “first diversity antenna” and a “second diversity antenna.” Id. at claim 16. As yet another example, Dou’s Abstract describes a “wireless device” including a “first diversity antenna” and a “second diversity antenna.” Id. at code (57). Petitioner does not explain how the proposed combination provides anything other than spatial diversity. See Pet. 33–35; Prelim. Reply 1–3; Ex. 1007 ¶¶ 118–124. Based on the current record, we agree with Patent Owner that with Ciais-Quadband’s antenna used for Dou’s two antennas 206 and 208, the two identical quadband antennas would have:” slip op. at 46
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,031,677 - PTAB · Dec 3, 2025 · IPR2025-01016 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on all challenged claims 1–13 and all petition grounds, finding a reasonable likelihood that Jurik anticipates at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’373 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’373 patent on the grounds stated in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“[a] person of ordinary skill in the art (“POSITA”) at the time of the assumed effective filing date (March 30, 2023), would have had at least a B.S. degree in mechanical or electrical engineering and would have had at least two years of practical experience designing lighting systems. Alternatively, a POSITA would have at least two years of undergraduate training in a physical science (e.g., engineering or physics) and at least four years of practical experience designing lighting systems. Pet. 10 (citing Ex. 1004 ¶¶ 31–32). Patent Owner did not file a Preliminary Response. For the purposes of this Decision, we apply Petitioner’s currently uncontested definition except for the term “at least” because it may cause ambiguity resulting in potentially encompassing those with more than ordinary skill in the art. With that qualification, Petitioner’s proposal appears consistent with the problems addressed in the ’373 patent and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner did not file a Preliminary Response. We determine, at this stage of the proceeding, that we need not construe any claim terms to resolve the controversy before us. 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))). The parties are free to address the construction of any claim term in subsequent authorized briefing during trial. If either party chooses to present claim construction arguments, the arguments should be in a separately delineated portion of the brief labelled accordingly.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation under 35 U.S.C. § 102, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). However, this is not an ipsissimis verbis test, i.e., identity of terminology is not required. See In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 8
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 11,988,373 - Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 25, 2025 · IPR2025-00860 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Dilley, Pai, and Wang combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’573 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks. Work experience can substitute for formal education and additional formal education can substitute for work experience. Pet. 12 (citing Ex. 1006 ¶ 70). Patent Owner asserts that “the Board does not need to resolve the appropriate level of skill for a POSA [person of ordinary skill in the art] for purposes of deciding institution because the Petition fails under any articulation of a POSA.” Prelim Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’573 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no claim terms need to be expressly construed by the Board and all terms should be given their ordinary meaning. Pet. 12. Patent Owner agrees that the Phillips standard applies. Prelim. Resp. 10. We determine that we need not expressly construe any claim terms at this juncture. 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 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We consider the disclosures of the Provisional Application, which refer to cases 1 and 2, in which requests are redirected to an origin server for lower popularity content and to a parent server for medium popularity content at steps 522 and 524 as shown in Figure 5, respectively, wherein the edge server receives a redirect from the popularity service without a “followme” flag. See Ex. 1011 ¶¶ 43, 44. The Provisional Application also discloses that, by comparison, if there is a “follow-me” redirect sent to the edge server, it obtains and caches a resource as shown at step 528 for higher popularity content. Id. ¶ 44. On this record, as Patent Owner asserts, these disclosures are consistent with technical reasons provided in the Provisional Application for instructing the edge server not to cache unpopular resources. See Ex. 1011 ¶¶ 68–69. In light of these disclosures, we preliminarily find support for Dr. Shenoy’s testimony that, even with the words “instruction to not cache” are not literally recited in the Provisional Application, caching and not caching are alternative options that indicate the instruction to the edge server that will be implemented for each option. See Ex. 2014 ¶ 56. Further, these disclosures provide support for Dr. Shenoy’s testimony that the disclosures “reasonably convey to those skilled in the art that Patent Owner had possession of the edge server receiving an instruction to not cache the resource (and instead simply forward the redirect).” Id. In re Johnson states that “it is not true that the factual context out of which the question under § 112 arises is immaterial. Quite the contrary. Here, . . . the ‘written description’ in the [] specification supported the claims in the absence of the limitation, and that specification, having described the whole, necessarily described the part remaining.” See Johnson, 558 F.2d at 1019. This is consistent with M.P.E.P. § 2173.05(i) which states, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” M.P.E.P. § 2173.05(i). Further, “the failure of the specification to specifically mention a limitation that later appears in the claims is not a fatal one when one skilled in the art would recognize upon reading the specification that the new language reflects what the specification shows has been invented.” All Dental Prodx, LLC v. Advantage Dental Prod., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). Even though we do not discern that the Provisional Application explicitly discloses an “instruction to not cache,” at least on this preliminary record, and for the purposes of this Decision, there is positive recital of instructions to cache in the Provisional Application and Petitioner has provided sufficient supporting evidence that caching and not caching are alternative options. Further, there is sufficient evidence, in the context of the disclosures of written description support in the Provisional Application, providing support for Dr. Shenoy’s testimony that Patent Owner had possession of an edge server receiving an instruction to not cache the resource. Nonetheless, we invite additional briefing on these issues, including issues relating to alternative options of caching and not caching. On this preliminary record, we find that the ’573 patent has a priority date of April 2, 2008, which predates the earliest possible date on which Newton-471 could be effective as prior art, September 30, 2014 (the date on which the earliest application in the priority chain of Newton-471 was filed). Accordingly, we preliminarily find that Newton-471 is not prior art to the challenged claims. Thus, on the present record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 1–20 are anticipated by Newton-471.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,924,573 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 21, 2025 · IPR2025-00906 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedOther
“2019),2 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 14 (citing Ex. 1003 ¶¶ 39–42). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 7. Based on the record presented, including our review of the ’434 patent and the types of 2 Petitioner states that it “assumes for purposes of [its Petition] that the claims are entitled to the earliest claimed priority date—November 5, 2019.” Pet. 14; see Ex. 1001, code (60). problems and solutions described in the ’434 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged 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), including 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. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 10. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; 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 [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 49. He explains in detail how, based on his experience, emails sent to a 3GPP email exploder were accessible on the email archive immediately after being sent. Id. ¶¶ 44–60, 72–80. That explanation is supported by screenshots from various websites and other corroborating evidence. See Ex. 1008 ¶¶ 44–60, 72–80. The November 3, 2019, email with 3GPP-38.213-CR as an attachment is currently available to the public via the email archive, with no login, password, or membership required to access it. Id. ¶¶ 44, 74; see Kyocera, 545 F.3d at 1351 (“[ETSI] specifications themselves were visible to any member of the interested public without requesting them from an ETSI member. Further, ETSI did not impose restrictions on ETSI members to prevent them from disseminating information about the standard to non-members.”). The metadata for the file indicates that it was created and last modified one day before the email was sent. Ex. 1008 ¶ 76. And Mr. Rodermund discusses one example where a listserv email was uploaded to the archive just minutes after being sent. Id. ¶¶ 50–51. Although that example is from 2025 rather than 2019, it provides some support for his opinion that the same “near contemporaneous” timing would have been the case in 2019 as well. See id. ¶ 52. Immediately making emails like the one with the 3GPP-38.213-CR change request available on the email archive is consistent with 3GPP’s overall purpose of making standards documents available “so that engineers and other individuals would have ready access to them when developing and implementing cellular networks and devices.” See id. ¶ 35; Kyocera, 545 F.3d at 1351 (finding that the “primary purpose of the [standard at issue] was to develop a system interoperable across national borders,” which “made it crucial to grant access to any interested parties”); Cradlepoint, Inc. v. Sisvel Int’l S.A., IPR2020-01103, Paper 46 at 13–14 (PTAB Jan. 18, 2022) (finding, based on the preponderance of the evidence, that “testimony concerning [a 3GPP] email exploder and listserv provide further support for a conclusion of public accessibility because it tends to show that 3GPP was known beyond its members, that the meetings were widely publicized, and that 3GPP documents were, in general, widely available”). Finally, Mr. Rodermund explains in detail how a person of ordinary skill in the art could have accessed the email with 3GPP-38.213-CR, using the indexing of the email archive. See Ex. 1008 ¶¶ 49, 53–60. We are persuaded that Mr. Rodermund’s testimony and supporting evidence are sufficient at this stage. Patent Owner will have the opportunity to cross-examine Mr. Rodermund and explore the bases for his statements. And our ultimate determination of the weight to be given to his testimony will be based on the complete record at the end of trial. Based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that 3GPP-38.213-CR is a prior art printed publication under 35 U.S.C. § 102(a)(1).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“is that Petitioner has not shown sufficiently that 3GPP-38.213-CR and 3GPP-38.212-CR are prior art printed publications. Prelim. Resp. 2–10. We disagree on this record for the reasons explained above. See supra Section II.D.4. Patent Owner does not dispute Petitioner’s arguments regarding the limitations of claim 1 or Petitioner’s asserted motivation to combine the references. See Prelim. Resp. 2–10. Petitioner’s contentions are supported by the testimony of Dr. Mandayam and are persuasive based on the current record. See Pet. 14–48; Ex. 1003 ¶¶ 52–67, 81–113. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a).” slip op. at 28
Claim construction§ 102 anticipationcites KSR · GrahamPatents in suitUS 10,965,434 - PTAB · Nov 21, 2025 · IPR2025-00956 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–12 under all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We institute an inter partes review only if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions in view of the existing record, we conclude that Petitioner demonstrates a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’992 patent is unpatentable under the presented grounds. See Pet. Therefore, we grant institution of inter partes review. Our reasoning is discussed below. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“These two proposed definitions of the ordinarily skilled artisan share many consistencies, for example, the types of degrees and experience such a person would have had, but differ in the number of years of experience. Petitioner proposes the ordinarily skilled artisan would have had at least five years of experience and Patent Owner proposes at least three years (which would necessarily include five years, too). Patent Owner also proposes that the ordinarily skilled artisan would have consulted a dentist, oral surgeon, prosthodontist, or periodontist with experience in dental implants and prosthetics. At this point, we find little meaningful difference between the two proposed definitions. In fact, neither does Patent Owner’s witness, Mr. Leinsing, who states that his “opinions would not change under either definition.” Ex. 2011 ¶ 40. Thus, at this stage, we accept and use Petitioner’s proposed definition of the ordinarily skilled artisan, which, unlike Patent Owner’s, does not implicate reliance on the knowledge of people other than the individual ordinarily skilled artisan. Petitioner’s definition appears to comport with the level of skill in the art reflected in the prior art of record and the ’992 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). This parties may further developed this issue at trial, if desired. C.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board interprets claim terms in an inter partes review using the same claim construction standard that is used to construe patent claims in a civil action in federal district court. 37 C.F.R. § 42.100(b). In construing claims, district courts and the Board here, by default, give claim terms their ordinary and customary meaning, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“Here, the first claim limitation at issue is broad, i.e., different thread pattern/profile between a definite and a temporary screw, and the Specification’s and priority applications’ disclosure is narrow and specific, asymmetric buttress style threads in a temporary screw and symmetrical threads in a definite screw (are different). Any apparent predictability in or maturity of the relevant field here must be contrasted with the fact that the Specification, considering the ’992 patent itself or any of the identified priority applications, never once even discusses the (claimed) concept of specifically differing the thread style between a temporary and a definitive screw. Any differences in thread style are not called out by the disclosure, but are described and can be discerned only in relation to the respective threads’ functionality, i.e., Fig. 75’s temporary screw 190 has buttress-style threading so it can be pulled out rather than unscrewed from the abutment; Fig. 9’s definitive screw 75 has male threads that fill the female threads of the abutment 8 for a secure permanent engagement. Ex. 1001, 15:23–30, 21:25–44, 23:3–36; Ex. 1012, 97–98, Figs. 9, 75. And, although it is possible for a single disclosed species to provide written description support for a claimed genus, “a sufficient description of a genus . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350; see also Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1344 (Fed. Cir. 2013). That does not appear to be the case here—the present record does not support that the described asymmetrical buttress, serrated style of different temporary screw threading (relative to that of the definitive screw and regardless of the direction of the threads for rotation) is sufficiently representative of the genus’s “different” thread patterns/profiles. See, e.g., Ex. 1006 (a buttress style thread does not function the same as a buttress reverse or 75º joint profile or rounded, or trapezoidal thread).” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 11,937,992 - PTAB · Nov 19, 2025 · IPR2025-00915 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–30 on both asserted § 103 grounds, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to determine whether or not to institute an inter partes review. Paper 12, 2–3. We, thus, have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the Preliminary Response, and all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’621 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’621 patent on the grounds stated in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, supported by Dr. Bajaj’s testimony (Ex. 1003 ¶¶ 24–27) submits that a person of ordinary skill in the art “would have been someone knowledgeable of and familiar with computer cluster systems and cluster computing techniques” in June 2006. Pet. 12. According to Petitioner, a person of ordinary skill in the art would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent training, and approximately two years of experience working in the field of cluster computing or parallel processing and would be knowledgeable regarding high-level scientific computing languages. Additional work experience can substitute for specific educational background, and vice versa. Id. (citing Ex. 1003 ¶¶ 24–27). Patent Owner does not address Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed level of ordinary skill in the art because it appears consistent with the problems address in the ’621 patent and the cited prior art. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “submit[s] that no claim term requires express construction.” Pet. 12–13. Patent Owner does not address claim construction in the Preliminary Response. We determine, at this stage of the proceeding, that we need not construe any claim terms to resolve the controversy before us. 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 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“6. Printed Publication Status of Petitioner’s Asserted Prior Art The Federal Circuit instructs that “[t]o qualify as a printed publication, a reference ‘must have been sufficiently accessible to the public interested in the art.’” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016) (citing In re Cronyn, 890 F. 3d 1158, 1160 (Fed. Cir. 1989)). “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (citing Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F. 3d 1340, 1350 (Fed. Cir. 2008)). Further, the question of whether a document qualifies as a “printed publication” for the purposes of 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to a member of the public.” Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). At this stage of the proceeding, Petitioner “must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential). The reasonable likelihood standard “is lower than the ‘preponderance’ standard to prevail in in a final written decision.” Id.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,563,621
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.