- SAP America, Inc. v. Cyandia, Inc.All claims unpatentablePTAB · Mar 13, 2026 · IPR2024-01433 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 are unpatentable as obvious over the PCT Publication and Austin-Lane.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” PO Resp. 9. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“device indicated by the session data” encompasses “determining a notification method based on” session data indicating the current state of the external device, where the current state of the device encompasses an online state as well as an offline state. See Pet. 53–54; Tr. 55:3–10 (The Board: “Are there any other states of an external device other than online or offline?” Patent Owner: “As far as I know, Your Honor, those are the only two[.]”), Tr. 65:24–66:1 (The Board: “When the claim says current state, they mean it’s online or offline?” Petitioner: “Correct.”), Tr. 20:23–21:8. The specification is consistent with the plain language of the claim in disclosing two examples of the claimed “current state,” namely, online and offline. Ex. 1101, 21:1–4. The specification discloses that the notification manager “queries session manager 456 to determine the user’s connectedness.” Id. at 21:6–8. The specification discloses that if the user is “online, notify by, for example, the user’s active session. If offline, notify by, for example, a txt [sic] message, call the user’s landline, call a friend of the user, and the like.” Id. at 21:1–4, 23:28–31.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Patent Owner’s expert witness, Dr. Goodrich, show written description support for providing a notification to an active external device, Patent Owner has not cited any portion of the 2009 Parent, nor any portion of the testimony of Dr. Goodrich, to show that the 2009 Parent provides written description support for determining a notification method by which to provide an alert to an external device based on the current state of the external device as offline. We highlight that Paragraphs 130 and 131 of the 2011 CIP Application disclose offline notification preferences for determining a notification method by which to provide an alert to an external device based on the current state of the external device as offline. Ex. 1110 ¶¶ 130–131. Specifically, paragraphs 130 and 131 describe that: the notification manager of the eventing and alerting subsystem 452 queries the configuration server 454 for the user's notification preferences and correlates these notification preferences with session manager 456 to determine the best notification method. That is, the notification manager queries the configuration server 454 and determines, for example, that the user has certain online notification preferences and certain offline notification preferences. If online, notify by, for example, the user's active session. If offline, notify by, for example, a txt message. . . . The notification manager of the eventing and alerting subsystem 452 then queries session manager 456 to determine the user's connectedness. Id. That is, if the user’s connectedness, or “current state” of the claimed external device, is offline, and the user’s offline notification preferences are “notify by txt message,” the notification manager will determine that the notification method for the external device having a current state of offline is by txt message. See id. Thus, the 2011 CIP Application describes a notification manager that queries a session manager to determine whether an external device is offline, and if the external device is offline, determines a notification method for providing an alert on the external device based on the current status of the external device as offline and the user’s offline notification preferences. Although we find this written description support for the determining limitation in the 2011 CIP Application, we do not find this written description support in the 2009 Parent.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As to the “determining a notification method” limitation (1.10), Petitioner asserts that Austin-Lane teaches determining: (1) the user device(s) to send the notification to (e.g., phone, PDA, notebook computer, desktop computer); (2) the communication protocol to use to send the notification, i.e., how to send the notification (e.g., SMTP (for email), SMS (for texts), HTTP (for web browsers)); and (3) the type of alert to provide, i.e., how to present the notification, (e.g., text, an icon, a pop-up window, a video, an email, an audible or tactile alarm), based on the current state of the at least one external device indicated by the session data (“presence information”), which may include whether and on which device(s) the user is online and/or whether and on which applications the user has an active session. Id. at 53 (internal citations omitted) (citing Ex. 1105 ¶¶ 4, 5, 29, 32, 33, 39, 46, 48, 61, 79, Fig. 1). We highlight that paragraph 61 of Austin-Lane discloses that: The type preferences 650 may include preferences for various notification types. . . . [A]uction alert #1 660 defines the following delivery precedence 663: (1) a web browser (if the user is online), (2) an IM client (if the user is online), (3) a mobile phone #1, (4) a PDA, (5) a mobile phone #2, (6) a pager, and (7) an email inbox. Ex. 1105 ¶ 61; see id. ¶¶ 74–77 (Describing that one of several notification methods for delivering an alert to a user’s device is determined based on the current state of the user’s device as online or offline). Thus, Austin-Lane describes determining a notification method by which to provide an alert on an external device based on the current state of the external device as online as well as offline.” slip op. at 29
Patent outcomesUS 8,751,948 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 8,751,948 - Avation Medical, Inc. v. Emkinetics, Inc.All claims unpatentablePTAB · Jan 7, 2026 · PGR2024-00043 · APJ Ryan H Flax · PGR · Final written decision
Claims 1–39 are unpatentable under Grounds 1–10; Petitioner did not prove lack of enablement under Ground 11, and Patent Owner’s motion to exclude was denied.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“REAL PARTIES-IN-INTEREST Petitioner identifies Avation Medical, Inc. as the real party-in-interest. Pet. x. Patent Owner identifies EMKinetics, Inc. as the real party-in-interest. Paper 5, 1; Paper 6, 1. Neither party contests the other’s assertions on this. C.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSA at the time of the claimed invention would have had an undergraduate degree in the field of biomedical engineering or a related discipline, such as electrical engineering, and at least two years of experience in the design and/or analysis of biomedical devices. Additional work experience could substitute for a formal degree and vice versa. Ex.1003, ¶21. Pet. 20 (citing Ex. 1003). Patent Owner does not contest this proposed definition or offer an alternative. See generally Resp. We accept and use Petitioner’s uncontested definition of the ordinarily skilled artisan, which appears to comport with the level of skill in the art reflected in the prior art of record and the ’943 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may]” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same claim construction standard that is used to construe patent claims in a civil action in federal district court. 37 C.F.R. § 42.200(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). Petitioner states that, “no terms require construction for purposes of this Petition.” Pet. 21. Patent Owner presents no express position on claim construction. See generally Resp. We do not expressly construe any claim terms. E.” slip op. at 20
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedReference is prior artDecided for petitioner
“question, based on factual findings. VidStream, 981 F.3d at 1063–64. Moreover, public accessibility is the touchstone in determining whether a reference is a printed publication and such depends on whether the reference was available to interested, ordinarily skilled persons exercising reasonable diligence, which is determined on a case-by-case basis. Id. at 1065. Particularly pertinent here is that “[w]hen there is an established publisher there is a presumption of public accessibility as of the publication date.” Id. Hulu (which cites VidStream on this issue) concerned, inter alia, whether certain asserted references were shown to be publicly available and could be considered as prior art. Hulu, 2021 WL 487622. Hulu holds that, although testimonial evidence is one way to prove public accessibility, there are also a variety of hallmarks of publication and other evidence that may be considered as a totality of the evidence to determine if an asserted reference was publicly accessible and prior art. Id. at *10–13, 21. Facts to be considered in analyzing the issue, other than testimonial evidence, include, for example, whether there is an established publisher, a copyright date/notice, other publication-related dates (impression, printing, etc.), an ISBN number, citations to the reference before (and to a lesser degree, after) the priority date at issue corroborating its availability and/or that the publisher was established, and whether the reference’s “purpose of publishing . . . was ‘dialogue with an intended audience.’” Id. at *10–21 (citing Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021)).” slip op. at 30
Patent outcomesUS 11,844,943 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 11,844,943 - PTAB · Dec 10, 2025 · PGR2025-00054 · APJ Ryan H Flax · PGR · Institution
The Board instituted PGR on claims 1–16 on all four grounds, finding at least one claim more likely than not unpatentable based on obviousness, indefiniteness, or lack of written description.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in a post-grant review. We institute a post-grant review only if the information presented in the petition filed under 35 U.S.C. § 321, if unrebutted, shows that it is more likely than not that at least one claim challenged in the petition is unpatentable. 35 U.S.C. § 324. On the existing record, we conclude that Petitioner demonstrates it is more likely than not that Petitioner would prevail in showing that at least one challenged claim of the ’781 patent is unpatentable under a presented ground. See generally Pet. Therefore, we grant institution of post-grant review. Our reasoning is discussed below.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“STANDING Petitioner states that it certifies that: (1) the ’781 patent is available for post grant review because its earliest claimed effective filing date is October 9, 2018, and the patent issued less than nine months ago, on December 3, 2024; and (2) Petitioner is not barred or estopped from requesting a post grant review on the grounds in this petition. Pet. 5. This is sufficient. See 35 U.S.C. § 100(note)(A)–(B), § 321; 37 C.F.R. § 42.204(a). Patent Owner does not contest standing. See generally Prelim. Resp. B. REAL PARTIES-IN-INTEREST Petitioner states that “[t]he real parties-in-interest are Petitioner Straumann USA, LLC and its affiliates Institut Straumann AG and JJGC Indústria e Comércio de Materiais Dentários S.A.” Pet. 3. Patent Owner raises no objection and itself identifies “Smart Denture Conversions, LLC is the real party-in-interest.” Paper 4, 2; see generally Prelim. Resp. C.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 ¶ 42. And, as set forth above, Patent Owner asserts that, for the sake of its present arguments, it matters not which of the two proposed definitions we use for this proceeding. Prelim. Resp. 21. 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 ’781 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). This issue may be further developed at trial by the parties, if desired. C.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“same claim construction standard that is used to construe patent claims in a civil action in federal district court thus, by default, we 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.” 37 C.F.R. § 42.200(b); Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner indicates that None of the claim terms of claims 1–16 need to be construed to determine the patentability issues presented in this petition. The petition applies the ordinary meaning of the claim language as it would be understood by a POSA after reading the ’781 patent. Ex. 1002, ¶130. Petitioner will propose a construction if Patent Owner argues or the Board determines that one is required for any term. Pet. 31 (citing Ex. 1002). And, Patent Owner presents no express position on claim construction at this point. See generally Prelim. Resp. At this stage of the proceeding, we do not expressly construe any claim terms; however, this position is preliminary and we may change it based on the fully developed record at trial.8 D.” slip op. at 19
Claim construction§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 12,156,781 - 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 - Xencor, Inc. v. Merus N.V.InstitutedPTAB · Sep 26, 2025 · IPR2025-00605 · APJ Tawen Chang · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Desjarlais or Moore or obvious over Lazar alone.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“SAS, 138 S. Ct. at 1356. Thus, because we determine, based on the arguments and evidence on the present record, that there is a reasonable likelihood Petitioner would prevail with respect to claim 1, we institute an inter partes review of all challenged claims under each Ground presented in the Petition. Id.; see also 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). III. CONCLUSION For the reasons provided above, we find that Petitioner has demonstrated a reasonable likelihood of showing at trial that at least one of the challenged claims of the ’859 patent is unpatentable under at least one ground. Accordingly, we institute inter partes review of all challenged claims based on all the Grounds presented in the Petition.” slip op. at 49
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“As Petitioner points out, the cited disclosure in the ’935 provisional does not “mention[] positions 364 and 368 together as a pair of positions for potential mutations on two chains.” Pet. 28 (citing Ex. 1002 ¶¶ 109–19). Although Patent Owner is correct that examples or actual reduction to practice are not required for adequate written description and “[a] specification may . . . contain a written description of a broadly claimed 34 invention without describing all species that [the] claim encompasses,” Prelim. Resp. 15 (quoting Ariad Pharms., 598 F.3d at 1352 and Cordis Corp. v. Medtronic AVE Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003)), the ’935 provisional must still “reasonably convey[] to those skilled in the art that the inventor[s] had possession of the claimed subject matter” as of the relevant date. Regeneron Pharms., Inc. v. Mylan Pharms. Inc., 127 F.4th 896, 914 (Fed. Cir. 2025); Ariad, 598 F.3d at 1351. In this case, Table A of the ’935 provisional discloses a list of CH3 domain interface residues and identifies, for each interface residue in heavy chain A, the contacting residue in the corresponding chain B. Ex. 1030, 17, Table A. Table A does not, however, describe any particular substitutions or pairs of substitutions that should be made to the CH3 domains. See, e.g., Pet. 28 (citing Ex. 1002 ¶¶ 109–119). Table 7 of the ’935 provisional does identify specific amino acid substitutions in CH3 domains, including substitutions resulting in a positively charged residue at position 364 (e.g., S364K) and a negatively charged residue (e.g., L368D) at position 368. Ex. 1030, 52, Table 7. Patent Owner argues that this table “discloses specific positions for ‘identification of novel charge pair mutants.’” Prelim. Resp. 13 (citing Ex. 2010 ¶ 48). As Petitioner points out, however, while Example 13 of the ’935 provisional relates to identification of novel charge pair mutants, Table 7 itself was only a “first step” in this identification process. Ex. 1030, 51:6–17. In this step, “many interface contact residues in the IgG CH3 domain were scanned one by one or in groups for substitutions that would result in repulsion of 35 identical heavy chains” so that identified substitutions can then be used to generate antibodies “by engineering matched pairs of CH3 residues in one or more IgG heavy chains – CH3 regions” in follow up experiments. Id. Accordingly, Table 7 does not appear to describe heterodimer combinations, such as those that would result from a pairing of chains with different substitutions. Pet. 29–30 (citing, e.g., Ex. 1002 ¶¶ 111–118). As Petitioner further points out, the follow up experiments testing the matched pairs of CH3 residues did not include paired substitutions at positions 364 and 368. Id. at 29–31. Patent Owner points to disclosure in the ’935 provisional describing, as a distinguishing feature of its invention, the substitution of non-charged or neutral amino acids in wildtype CH3 with charged residues, which according to the ’935 provisional has the “advantage that at least one additional charge-charge interaction in the CH3 interface is created.” Prelim. Resp. 12 (citing, e.g., Ex. 2010 ¶¶ 42–48). For the same reasons discussed above, Petitioner has sufficiently established, for purposes of institution, that such disclosure would not reasonably convey to an ordinarily skilled artisan that the inventors had possession of the entire genus of heterodimeric antibodies comprising CH3 domains wherein a non-charged amino acid is replaced with a charged residue so as to create an additional charge-charge interaction in the CH3 interface. In this regard, we also note that “a description that merely renders the invention obvious does not satisfy the [written description] requirement.” Ariad, 598 F.3d at 1352.” slip op. at 34
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“adequately describes a heterodimeric antibody comprising the recited charged residues at the recited positions of the CH3 domains, i.e., “a positively charged amino residue at position 364” at a first CH3 domain and “a negatively charged amino acid residue at position 368” of the second CH3 domain. Having considered the evidence of record at this preliminary stage of the proceeding, and for the reasons set forth below, we are persuaded that Petitioner has shown sufficiently, for purposes of institution, that the ’935 provisional does not provide adequate written description support for claim 1 of the ’859 patent and that, accordingly, Desjarlais and Moore qualify as prior art to that claim. As Petitioner points out, the cited disclosure in the ’935 provisional does not “mention[] positions 364 and 368 together as a pair of positions for potential mutations on two chains.” Pet. 28 (citing Ex. 1002 ¶¶ 109–19). Although Patent Owner is correct that examples or actual reduction to practice are not required for adequate written description and “[a] specification may . . . contain a written description of a broadly claimed 34 invention without describing all species that [the] claim encompasses,” Prelim. Resp. 15 (quoting Ariad Pharms., 598 F.3d at 1352 and Cordis Corp. v. Medtronic AVE Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003)), the ’935 provisional must still “reasonably convey[] to those skilled in the art that the inventor[s] had possession of the claimed subject matter” as of the relevant date. Regeneron Pharms., Inc. v. Mylan Pharms. Inc., 127 F.4th 896, 914 (Fed. Cir. 2025); Ariad, 598 F.3d at 1351.” slip op. at 34
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The ’859 patent does not provide an explicit definition of “immunoglobulin class.” Nevertheless, we do not construe that term to require “two heavy chains with four domains, VH, CH1, CH2, and CH3, and two Fab arms.” As an initial matter, the Specification teaches that antibodies include, 16 e.g., IgE and IgM — which have an additional CH4 domain in their heavy chains — as well as functional derivatives and/or fragments of known antibody isotypes. Ex. 1001, 11:44–48. Patent Owner’s proposed construction, which limits antibodies to those having two Fab arms and “two heavy chains with four domains, VH, CH1, CH2, and CH3,” excludes these embodiments and cannot be correct. Moreover, the ’859 patent defines antibody as containing “one or more domains” that bind an epitope on an antigen. Ex. 1001, 11:39–44. Thus, an antibody does not require two Fab arms as in a native immunoglobulin molecule.12 The ’859 patent also describes a preferred embodiment as “Ig-like molecules.” Id. at 11:49–52. Thus, we look to the definition of “Ig-like molecule” in the ’859 patent, i.e., “a proteinaceous molecule that possesses at least one immunoglobulin (Ig) domain,” to inform our understanding of the phrase “immunoglobulin class of proteins.” Ex. 1001, 11:4–6. Accordingly, we further construe “immunoglobulin class of proteins” to mean proteinaceous molecules comprising at least one domain that is derived from or shares sequence homology with an immunoglobulin domain.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,926,859 - SAP America, Inc. v. Cyandia, Inc.InstitutedPTAB · Apr 7, 2025 · IPR2024-01433 · APJ Jason W Melvin · IPR · Institution
The Board instituted review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 based on the PCT publication and Austin-Lane under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner’s Sotera stipulation will eliminate the overlap between this proceeding and invalidity at the district court. Unlike the other, related IPRs for which we discretionarily deny review (e.g., IPR2024-01432, -01495, & -01496), this proceeding does not involve references that fundamentally convey the same information as may be presented as system art in the Texas litigation. In light of the stipulation and nature of the asserted ground, we conclude that this ground strongly favors institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that the claim language reads on Austin-Lane’s disclosure of determining “a presentation method of the notification” such as “using an instant message to the notebook computer” (Ex. 1105 ¶¶ 39, 46), in combination with teachings regarding the device to which the notification is sent and the protocol used to deliver it. We further conclude that Petitioner has provided an adequate reason that skilled artisans would have looked to Austin-Lane’s teachings and combined them with the system described in the PCT publication, as discussed. We have further reviewed the uncontested aspects of the challenge to claim 1 (Pet. 43–58) and determine that Petitioner is reasonably likely to prevail proving obviousness of claim 1. IV. CONCLUSION For the reasons discussed above, we conclude that Petitioner has shown a reasonable likelihood of prevailing with respect to unpatentability of at least one claim. Accordingly, we institute inter partes review. V. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 of the ’948 patent is instituted on the grounds raised in the Petition; and” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had a bachelor’s degree in electrical engineering, computer science, or equivalent, with two or more years of experience developing and implementing graphical user interfaces for controlling server-based applications, including handling asynchronous notifications generated by those applications and web services, such as portal systems, or an equivalent amount of relevant work or research experience” and “would have been familiar with common approaches for presenting information on a graphical user interface, including various layouts for presenting multiple elements, such as icons, widgets, windows, etc.” Pet. 14–15. Petitioner describes further capabilities that such a person of ordinary skill in the art would have had. Id. at 15–16. Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” Prelim. Resp. 14. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Should either party believe that the definition of ordinary skill in the art affects a disputed issue in the trial, it should point out how and identify any potential dispute about the level of skill.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We do not agree. Petitioner notes that certain disclosures added to the April 2011 CIP application describe a “notification manager” to “determine the best alert notification method.” Pet. 27 (quoting Ex. 1110 ¶ 131; citing id. ¶¶ 90–93, 130–132, 145–147, 160). That does not mean that Petitioner construes the claim language to require determining the best method, only that disclosing a mechanism that “determine[s] the best alert notification method” provides written-description support for a requirement to “determin[e] a notification method.” Petitioner is clear in its position that the May 2009 application “does not describe how to determine a notification method or how to use ‘session data’ in the manner required by this claim limitation.” Pet. 27–28. Patent Owner asserts that the May 2009 application discloses “determining a notification method” through a channel alert server that can “determine the active devices of the subscriber . . . to provide a visual or auditory alert in the channel.” Prelim. Resp. 32 (quoting Ex. 1106 ¶ 39). That disclosure appears to address the claim language requiring an alert “based on the current state of the at least one external device indicated by the session data.” It does not, however, address the claim language “determining a notification method.” Patent Owner recognizes that Petitioner asserts disclosures in the prior art for “determining which devices to send the alert to, the protocols used to send the alert, and how alerts are presented.” Id. at 34 (emphasis omitted). But when Patent Owner asserts that the May 2009 application discloses determining how alerts are presented, it points to paragraphs that do not support the assertion. Id. at 35 (citing Ex. 1106 ¶¶ 23, 39). The first, paragraph 23, states that a “trigger may cause the information channel to change its appearance or to take other actions that may be implemented by the developer” and that “one action that may be implemented is to provide a notification to the user.” Ex. 1106 ¶ 23. Nothing about that indicates the system determines how an alert is presented. The second, paragraph 39, states that the channel alert server may “provide a visual or auditory alert in the channel” and that the “alert can appear as defined on other platforms.” Nothing about that indicates the system determines how an alert is presented. Patent Owner has not shown how the May 2009 application discloses a determining a notification method, as claimed. In Patent Owner’s view, Petitioner admits that the May 2009 application (which is the same as the asserted PCT publication) describes determining a delivery mechanism because Petitioner compares it to Austin-Lane, stating that the PCT publication “already includes a channel alert server that determines the active devices of the user and delivers an alert to the user’s device” and “discloses setting the same type of alert (stock alert) and presenting it in the same way (visually) as Austin-Lane.” Prelim. Resp. 35 (quoting Pet. 54) (emphasis omitted). But simply delivering an alert does not necessarily mean the notification method for that alert was determined. We conclude that Petitioner’s statement does not show the PCT publication discloses “determining a notification method” as claimed.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,751,948 - Cimbria Srl v. 3u Vision SrlInstitutedPTAB · Sep 20, 2024 · PGR2024-00018 · APJ Kevin W Cherry · PGR · Institution
The Board instituted PGR on claims 1–15 and all petitioned grounds, finding a reasonable likelihood that claims 1–3, 6, and 10 are obvious over ElMasry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’947 patent is eligible for post-grant review, and has shown it is more likely than not that at least one challenged claim of the ’947 patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’947 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have a B.S. degree in Electrical Engineering, Physics, Chemistry, or an equivalent field, and at least 2-3 years of academic or industry experience in engineering related to optical sorting systems.” Pet. 17 (citing Ex. 1009 ¶ 21). Patent Owner did not file a Preliminary Response to the Petition and, therefore, at this point, does not contest Petitioner’s definition for one of ordinary skill in the art. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’947 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Having considered the record, we determine that no express claim construction is necessary for any claim terms for the purposes of rendering a decision to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). At this stage, we find it unnecessary to resolve whether “electronic control unit” and “processing module” should be construed as mean plus function limitations under § 112(f), because it is possible to address the obviousness grounds presented whether or not these limitations are so construed, and even if the claims were indefinite in the manner Petitioner contends. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (noting indefiniteness of a means-plus-function limitation does not always render it impossible to adjudicate a prior-art challenge). We direct the parties to address the construction of these claim terms and Petitioner’s interpretation during trial.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We have reviewed Petitioner evidence and citations and, on the current record, we find that Petitioner has shown that it is more likely than not that ElMasry teaches all the limitations of claim 1, without need for any modification. Thus, we find that Petitioner has shown that it is more likely than not that claim 1 would have been unpatentable as obvious over ElMasry.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 11,666,947 - Apple Inc. v. Aire Technology LimitedAll claims unpatentablePTAB · Dec 15, 2023 · IPR2023-00188 · APJ Brian J Mcnamara · IPR · Final written decision
Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable under the stated obviousness grounds; the motion to amend with substitute claims 23–26 is denied.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein. Having considered the arguments and evidence of record, we” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Further, although Patent Owner is correct in stating that Guthery discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17
- 112 supportMotion to amend, deniedDenied
“In light of the full record before us, including Patent Owner’s arguments at the Oral Hearing, we now consider whether the proposed amended claim properly encompasses a device other than the reader performing the claimed selection. We agree with Petitioner’s contention, that the “claim doesn’t tell us . . . which element performs the selection,” and that “[t]his difference . . . divorces the claim from the functionality described in the specification.” Opp. 3–4 (citing Ex. 1002, 290 (Spec. ¶ 21)). Dr. Phinney’s testimony supports this contention. Ex. 1026 ¶ 12. We do not give weight to the arguments by Patent Owner’s attorney at the Oral Hearing, because attorney argument cannot take the place of objective evidence. Gemtron Corp., 572 F.3d at 1380. This is especially true here, where the specification discloses that the reader makes the selection, but does not disclose that any other device makes or would be capable of performing the selection. Patent Owner has not shown, nor do we find, support in the disclosure of the ’706 patent for a device other than the reader performing or capable of performing a selection. Thus, based on Patent Owner’s position that the proposed claim amendment would encompass non-reader devices making the selection, the proposed amendment adds new matter and is impermissible. See Gentry Gallery Inc. v. Berkline Corp., 134 supporting disclosure, and therefore . . . a narrow disclosure will limit claim breadth.”). Accordingly, Patent Owner has not shown, nor do we find, support for “wherein after selection of one of the plurality of applications, subsequent communication between the reading device and the selected application takes place without requiring any further steps” as recited in independent proposed substitute claims 23, 25, and 26. Due to the lack of support in the original disclosure of the ’706 patent for this limitation, proposed substitute claims 23, 25, and 26, and claim 24 by virtue of its dependency from claim 23, seek to introduce new subject matter.” slip op. at 40
Patent outcomesUS 8,581,706 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,581,706 - Apple Inc. v. Aire Technology LimitedAll claims unpatentablePTAB · Dec 15, 2023 · IPR2022-01137 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable as obvious; the motion to amend with proposed substitute claims 23–26 is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, 1994). Petitioner submits that the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction. Pet. 13–14. Although we may discuss the scope of the claim language during our analysis, we agree that no specific construction is necessary for us to reach our decision.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17
Patent outcomesUS 8,581,706 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,581,706 - Walmart Inc. / Current Lighting Solutions, LLC v. Power Concepts, LLCAll claims unpatentablePTAB · Sep 15, 2023 · IPR2022-00569 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–14 are unpatentable; the contingent motion to amend proposing claims 15–28 and the motion to exclude are denied.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“of the claimed “light emitting diode.” Looking at the intrinsic evidence, neither the claim nor the specification defines the light emitting diode as including an integrated lens. With respect to Dr. Bretschneider’s analysis of Dowling’s lens described in paragraph 24, we disagree with Dr. Bretschneider’s conclusion that Dowling’s lens does not teach a lens as claimed. Ex. 2076 ¶ 431 (citing Ex. 1007 ¶ 24).” slip op. at 31
- 112 supportMotion to amend, deniedDenied
“electriciaan” and not a “licensed electrician.” Opp. 3–4 (citing Ex. 1002, 25 ¶¶ 6–7, 32 ¶¶ 46, 48). Instead, Petitioner argues that “the disclosure lacks the term ‘licensed electrician,’ lacks a definition of ‘licensed electrician,’ and lacks an explanation of what type of electrical connection would be allowed without the assistance of a licensed electrician.” Id.; Ex. 1035 ¶¶ 76–79) (emphasis omitted). Accordingly, Petitioner argues that the original application does not support proposed substitute claims 23 and 28. See id. We are persuaded by Petitioner’s argument. The ’295 and ’447 applications describe a “skilled” electrician, not a “licensed” electrician. Patent Owner does not show that one of ordinary skill in the art would interpret these to be equivalent. Accordingly, we find that proposed substitute claims 23 and 28 adds new matter. Proposed substitute claim 24 depends from claim 23 and thus includes the same new matter.” slip op. at 63
- Disclosure Requirements (§112) › Definiteness (Nautilus)Indefinite
“electrician. See id. (citing Ex. 1002, 25 ¶¶ 6–7). Petitioner’s declarant, Dr. Ducharme, attests that a “licensed electrician is an individual who has obtained a license from a regulatory authority such as a state or local government.” Ex. 1035 ¶ 85. The licensing standards set forth “differ depending upon a given industry” and “change over time.” Id. Accordingly, Petitioner asserts that “one skilled in the art is left to speculate as to what type of electrical wirings require a licensed electrician and which do not — there is no reasonable certainty of the scope of the claimed invention, as the standard requires.” Opp. 5–6 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)). We are persuaded by Petitioner’s argument that proposed substitute claims 23 and 28 are indefinite. Specifically, we agree that there is no reasonable certainty as to the definition of a licensed electrician, nor how to adapt wiring for series connection without the required assistance of a licensed electrician. Accordingly, we find that proposed substitute claims 23 and 28 are indefinite. Proposed substitute claim 24 depends from claim 23 and thus includes the same indefinite limitation.” slip op. at 64
Patent outcomesUS 10,429,041 unpatentable§ 112 disclosurecites Phillips · NautilusPatents in suitUS 10,429,041
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.