- Smaxtec Inc. / Smaxtec Animal Care GmbH v. St Reproductive Technologies, LLCAll claims unpatentablePTAB · Jan 16, 2026 · IPR2024-01067 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 5–7, 9, and 10 are unpatentable: claims 5 and 6 are anticipated by Harvey and Riskey, claim 7 is obvious over Harvey and Rettedal, and claims 9 and 10 are obvious over Harvey and …
RulingsFinal written decision- BurdenNot shown unpatentable
“Considering the entire record, we determine that Petitioner “did not make out its obviousness case in its petition” and its arguments on reply “effectively abandoned its petition in favor of a new argument.” Wasica at 1286. To the extent Petitioner asserts the claims would have been obvious over Harvey and Riskey in the Petition, it does so using a merely conclusory statement that “[t]o the extent Patent Owner alleges that either Harvey or Riskey fails to teach any claim element, that element is provided by the other reference.” See Pet. 42; Wasica at 1286. And, as discussed in our Institution Decision, the Petition at a minimum does not explain what reference is the primary versus second reference, and what elements should be combined to reach the claimed invention. See Sisvel, 82 F.4th at 1364. reference to be modified with Riskey’s bolus and data compression. See Pet. Reply 15–17. Rather than explaining how its original petition was correct, Petitioner’s subsequent arguments amount to an entirely new theory of prima facie obviousness absent from the Petition. See Wasica, 853 F.3d at 1286; see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute”). We decline to engage in this new argument. Accordingly, we determine that Petitioner has not met is burden to show that claims 5 and 6 would have been obvious over Harvey and Riskey. G. Asserted Obviousness of Claim 7 over Harvey and Rettedal” slip op. at 54
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Riskey discloses “said sensor signal varies based on a corresponding change in one or more physiological parameters of said ruminant animal” (limitation 5[B]). We find Riskey’s description of temperature sensors to be persuasive evidence on this issue. Riskey discloses sensors for measuring changing animal characteristics, e.g., temperature, over time. Ex. 1005 ¶¶ 35, 44; see also id. ¶¶ 75, 76 (detecting temperature changes). We further credit Dr. Young’s testimony that one skilled in the art would understand that generated sensor signals, e.g., temperature, would change over time, whereby the sensor signal varies based on any corresponding change in the ruminant physiological parameter that the signal represents. Ex. 1002 ¶¶ 84, 85; see Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“This modest flexibility in the rule that ‘anticipation’ requires that every element of the claims appear in a single reference accommodates the reference; that is, where technological facts are known to those in the field of the invention.”). We consider Dr. Kan’s testimony that Riskey is silent as to details about the sensor signal, but are not persuaded because the testimony appears to contradict Riskey’s disclosure of a bolus including sensors for monitoring changes in animal characteristics, generating animal characteristic messages, i.e., signals, and wirelessly transmitting data corresponding to the monitored characteristics. See Ex. 2006 ¶¶ 170–174; Ex. 1005 ¶¶ 25, 63, 67, 68, 75–78, 101. Given Riskey’s express description of monitoring animal characteristics over time, we agree with Petitioner’s argument that Riskey discloses that said sensor signal varies based on changes to the animal’s physiological parameters.” slip op. at 16
- Skill levelSkill level board ownOther
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) as of the claimed priority date would have “had at least a bachelor’s degree in electrical engineering or a related or equivalent field, and three or more years of experience researching, developing, designing and/or evaluating sensor systems for humans or other animals.” Pet. 5 (citing Ex. 1002 ¶ 35) (emphasis added). Patent Owner does not contest Petitioner’s characterization of the level of skill in the art. See PO Resp. 12 (citing Ex. 2006 ¶¶ 19–20). On the entire record, we determine this level of skill, with the exception of the open-ended phrases “at least” and “or more,” which we remove from Petitioner’s proposal, comports with the qualifications a person 5 In the present record, neither party presents arguments or evidence relating to secondary considerations.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc), i.e., as construed in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term 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.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Neither party expressly seeks a specific claim construction or definition for any claim term. See Pet. 10; PO Resp. 12. To the extent Patent Owner seeks to interpret claim 7 in view of the Specification, we address that argument in our discussion of claim 7, below. See infra, § III.G.3. For purposes of this Decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). D. Asserted Anticipation of Claims 5 and 6 by Riskey” slip op. at 11
Patent outcomesUS 10,231,644 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,231,644 - Smaxtec Inc. / Smaxtec Animal Care GmbH v. St Reproductive Technologies, LLCAll claims unpatentablePTAB · Nov 20, 2025 · IPR2024-00875 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 1–4, 6, and 17–20 are unpatentable under the Trevarthen and Laitinen-based obviousness grounds; claim 6 was not shown unpatentable over Trevarthen alone.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“statistics in the absence of evidence of unique downloads or individuals. Even if the download numbers do not exactly represent unique downloads by unique individuals, the evidence shows that Trevarthen was downloaded to some extent, and therefore distributed, prior to the filing date of the ’206 patent. Accordingly, we find this evidence weighs in favor of Trevarthen’s public accessibility.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“construction issues: (1) the interpretation of limitations 1[E] and 17[F] relating to entering sensed and stored information into “at least one logical expression,” and (2) “implanted in an animal.” Inst. Dec. 19. We are persuaded by Petitioner’s argument that it would have been obvious to combine sensed and stored information into the same “at least one logical expression,” for the reasons set forth below. Accordingly, we need not construe limitations 1[E] and 17[F], relating to “at least one logical expression.”4 We discuss our construction of “implanted in an animal” below.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundNot shown unpatentableMixed
“would have viewed Trevarthen as a cohesive disclosure of specific improvements to existing dairy farms, as opposed to disparate teachings of unrelated systems. Trevarthen itself proposes “a framework for the use of RFID on dairy farms” including “enhancements and ideas which could be considered as future additions to further add value” for utilizing RFIDs in farm management beyond the Cochrane farm ear-tag RFIDs. Ex. 1005, 99. The enhancements include RFID boluses (id.), milk meters to detect illness (id. at 115), and temperature monitoring by RFID (id. at 121–122). Considering the entire record, Trevarthen itself describes improvements that apply “the predictable use of prior art elements according to their established functions.” See KSR, 550 U.S. at 417. Accordingly, we find that Petitioner has shown a that one skilled in the art would have been motivated to” slip op. at 33
- ExcludeNot reached
“IV. EVIDENTIARY ISSUES Patent Owner moves to exclude Exhibits 1040, 1041, and 1044.” slip op. at 81
Patent outcomesUS 9,844,206 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,844,206 - Smaxtec Inc. / Smaxtec Animal Care GmbH v. St Reproductive Technologies, LLCAll claims unpatentablePTAB · Nov 20, 2025 · IPR2024-00885 · APJ Jamie T Wisz · IPR · Final written decision
Claims 1–4 and 15–25 are unpatentable: claims 1–2 are anticipated by Trevarthen, and the challenged claims are also obvious over the listed combinations.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner”) filed a Petition requesting an inter partes review of claims 1–4 and 15–25 (the “challenged claims”) of U.S. Patent No. 8,823,515 B2 (Ex. 1001, “the ’515 patent”). Paper 1 (“Pet.”). ST Reproductive Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 10, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-Reply (Paper 13, “Prelim. Sur-Reply”). Upon consideration of these filings and the preliminary evidence of record, we determined that Petitioner had demonstrated a reasonable likelihood that it would prevail with respect to at least one of the challenged claims of the ’515 patent (Paper 16, “Institution Decision” or “Inst. Dec.”). Thus, we instituted review with respect to all of the challenged claims. slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“statistics in the absence of evidence of unique downloads or individuals. Even if the download numbers do not exactly represent unique downloads by unique individuals, the evidence shows that Trevarthen was downloaded, and therefore distributed, prior to the filing date of the ’515 patent. Accordingly, we find this evidence weighs in favor of Trevarthen’s public accessibility.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“retrieves sensed animal temperature information from the RFID device” and “further teaches that these temperature measurements are analyzed to detect ‘fluctuations,’ ‘a rise,’ and/or ‘anomalies’ that might indicate illness or oestrus.” Id. at 16 (citing Ex. 1005, 121–122). Accordingly, Petitioner asserts that a “POSA would understand that to perform such analysis, the animal temperature information for each animal is necessarily stored in the” slip op. at 36
- ExcludeMotion to exclude, deniedOther
“Patent Owner moves to exclude Exhibits 1040, 1041, and 1044. Paper 36. We do not rely on any of Exhibits 1040, 1041, and 1044 to decide this matter. Thus we dismiss Patent Owner’s motion to exclude as moot.” slip op. at 82
Patent outcomesUS 8,823,515 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,823,515 - Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00368 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–9 are unpatentable as anticipated by Horie; the Board did not reach the alternative obviousness ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The definition of a person having ordinary skill in the art that we adopted in the Institution Decision is supported by the testimony of Dr. Akl. Ex. 1003 ¶ 22. Patent Owner states that it agrees with that definition, while also proposing a broader definition that includes those with other qualifications. PO Resp. 2. Although Patent Owner argues that “the supporting evidence [for its addition] is broadly present in the case, namely, in the Patent-in-Suit and the associated intrinsic evidence” (PO Sur-reply 3 n.6), Patent Owner does not direct us to any specific portion of the record. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Additionally, while Patent Owner proposes expanding the definition, Patent Owner has not explained how that difference would materially affect the outcome of this proceeding. PO Resp. 2; PO Sur-reply 3 & nn. 4, 6. Dr. Akl uses Petitioner’s definition in his testimony (Ex. 1003 ¶¶ 22, 23) and Patent Owner makes no argument regarding how, if we adopted Patent Owner’s broader definition, Dr. Akl’s conclusions would be affected. Patent Owner’s use of its definition does not describe the conclusions of one “educated in general physics” differently to one of ordinary skill as defined by Petitioner. PO Sur-reply 6. Patent Owner does not present declarant testimony regarding knowledge of one of ordinary skill in the art under any definition.3 For these reasons, we maintain the definition of a person having ordinary skill in the art we adopted in the Decision on Institution: a person having ordinary skill in the art would have had experience in the hardware and software used in the field of securely transmitting and processing authorization requests over wired and wireless networks, such as requests for the processing of financial transactions, and a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have one or two years of experience with wired and wireless 3 See infra footnote 5. as financial transactions. Less experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Having analyzed the arguments and the evidence cited by Patent Owner, we do not agree. We begin with the claim language, which does not further describe the two transmission channels, let alone contradict the plain meaning. Ex. 1001, 6:5–19. Dependent claims also shed no additional light. Certain claims further specify transmission-channel-related requirements: that the first transmission channel be “selected from the group consisting of wireless and landline channels” (claim 7); that the request received via the first transmission channel be “provided via the Internet” (claim 5); or that the notifying step (via a second transmission channel) comprise “sending an SMS message to the customer (claim 2). Id. at 6:20–21, 6:28–29, 6:33–35. No claims further restrict claim 1 by describing both transmission channels. Id. Claim 9 requires that the notification be “substantially concurrent,” but nothing in the record establishes that substantially concurrent authorization and notification would require non-overlapping transmission channels, or that an overlap in the transmission channels, even if it did “encumber” the authorization process with the notification process, would prevent the processes from being “substantially concurrent.” While Patent Owner presents arguments about “the gist” of the invention (PO Resp. 4) and describes “an immediate separation of the two processes” as being disclosed by Figures 1 and 2 of the ’564 patent’s specification, we do not see in the specification an indication of a special disavowal of a broader scope. See Phillips, 415 F.3d at 1316–1317; PO Resp. 13 (“The specification of the ‘564 Patent does not express any intent to impart a novel meaning to the term distinct.”). Although we agree with Patent Owner that Figure 1 illustrates transmission channels that are separate and non-overlapping, we do not see any indication that this is more than a description of preferred embodiments or that there was a limitation of the invention to these embodiments, and our reviewing court “has repeatedly ‘cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). The specification similarly does not support that Figure 2 is intended as limiting.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Because we do not adopt Patent Owner’s construction (including considering its arguments regarding speed and security of transmissions in the ’564 patent), and instead adopt a construction encompassing overlapping between distinct transmission channels, see supra Section II.C.1, we determine that the requirement of limitation 1d that “the second transmission channel [must be] distinct from the first transmission channel” is disclosed by the different connections, different hardware elements, and independent operation of the two transmission channels identified in Horie, even though they overlap to some extent. Ex. 1006 ¶¶ 44, Fig. 1; Ex. 1003 ¶¶ 224–227; see PO Resp. 9. Lastly, Horie discloses that the authorization of a transaction occurs without requiring a response from the customer. Ex. 1006 ¶¶ 57, 58, 73; Ex. 1003 ¶¶ 232–233. For these reasons, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of claim 1 was anticipated by Horie.” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“Obviousness Over Horie Petitioner additionally argues that each of claims 1–9 are obvious over Horie. Pet. 38–43. Because we determine that the challenged claims are anticipated by Horie, we do not address the parties’ arguments regarding those claims based on an alternate ground. See Boston Sci. Scimed, Inc. v. Cook Gp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (“We agree that the Board need not address issues that are not necessary to the resolution of the proceeding.”).” slip op. at 34
Patent outcomesUS 8,783,564 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,783,564 - Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00369 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1–2 and 6–7 as anticipated, and claims 3–5 as obvious over Horie and Kobayashi.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time the invention was made “would have a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related study, and would have at least one or two years of experience with wired and wireless networks used to securely process requests for authorization of activity such as financial transactions.” Pet. 7–8 (citing Ex. 1003 ¶ 22). Additionally, Petitioner contends that “[l]ess experience is necessary with additional education (e.g., a Master’s degree), and likewise, less education is necessary with additional work experience (e.g., 5–6 years).” Id. Patent Owner does not oppose or comment on Petitioner’s definition of a POSITA. We determine this level of skill, with the exception of the open-ended phrase “at least,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’706 patent and the prior art of record.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“construction.” Pet. 8. However, Petitioner explains the term “merchant’s” recited in independent claims 1 and 6. Id.; see Ex. 1001, 5:54, 5:56, 6:52. The possessive term “merchant’s” is not followed by a subject noun. See id. Petitioner contends that during prosecution of the parent patent, U.S. Patent No. 7,357,310 B2, “the applicant explained that the ‘secure network and the ‘payment guarantee’ channel are illustrated between the acquirer 8 [sic] and the modem 5 of the merchant’s terminal.’” Id. (citing Ex. 1013, 45). Accordingly, Petitioner asserts that both instances of “merchant’s” should be read as “merchant’s terminal.” Id. Institution Decision (Inst. Dec. 11), Petitioner adds that Patent Owner in a related proceeding explained “the expression may refer to anything in possession of, or under the control of the merchant, as the use of the possessive form implies.” Pet. Reply 2 (citing IPR2024-00367, Paper 10 (Patent Owner Response), 4)10. This explanation accords with Petitioner’s argument that “merchant’s” includes least a “merchant’s terminal.” Accordingly, we are persuaded by Petitioner’s argument and interpret “merchant’s” as at least including a “merchant’s terminal.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We need not construe explicitly any other claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating 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))).” slip op. at 12
- BurdenDecided for petitioner
“Petitioner argues that Horie anticipates claims 1 and 2. Pet. 21–30. As discussed above, Patent Owner has not presented any arguments in a Response. The burden however remains on Petitioner, so we examine the Petition’s contentions to determine if they show by a preponderance of the evidence that the claims are unpatentable. For the reasons set forth below, Petitioner has shown by a preponderance of the evidence that Horie anticipates claims 1 and 2.” slip op. at 12
Patent outcomesUS 7,954,706 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,954,706 - Askeladden L.L.C. v. Calabrese Stemer LLCAll claims unpatentablePTAB · Jun 17, 2025 · IPR2024-00367 · APJ Scott B Howard · IPR · Final written decision
Claims 1–4 are unpatentable as anticipated by Horie; the Board did not reach the alternative obviousness ground and dismissed Petitioner’s motion to exclude as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We maintain the definition of a person having ordinary skill in the art that we adopted in the Institution Decision. First, it is supported by the testimony of Dr. Akl. Ex. 1003 ¶ 22. Second, Patent Owner states that it adopts that definition. PO Resp. 3. Third, to the extent Patent Owner proposes expanding the definition, Patent Owner has not explained how that difference would materially affect the outcome of this proceeding. Id. Fourth, Patent Owner does not point to sufficient evidence to support its position. Id. Although Patent Owner argues that “the supporting evidence [for its addition] is broadly present in the case, namely, in the Patent-in-Suit and the associated intrinsic evidence,” Patent Owner does not direct us to any specific portion of the record. See id. We decline to search the record to find the evidence that supports it. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As discussed below, Petitioner has shown by a preponderance of the evidence that Horie anticipates claims 1 under Patent Owner’s proposed construction. See Section II.E.3. Because we only construe limitations “to the extent necessary to resolve the controversy,” we do not expressly construe this limitation. See Nidec, 868 F.3d 1017 (quoting Vivid, 200 F.3d at 803).” slip op. at 12
- ExcludeMotion to exclude, deniedDenied
“preserved the objection by filing a timely motion to exclude. Mot. Exclude. Specifically, Petitioner argues that we should exclude Exhibit 2001 for three reasons: (1) it is untimely and prejudicial (37 C.F.R. §§ 42.23(b), 42.53(b); Fed. R. Evid. 403), (2) hearsay (Fed. R. Evid. 802), and (3) the best evidence rule (Fed. R. Evid. 1002). Id. The Stemer Declaration is used only to support Patent Owner’s arguments with respect to secondary considerations.5 PO Sur-reply 19–22; Ex. 2001; Ex. 2002. Because we do not reach obviousness, see infra Section II.F, we do not consider the Stemer Declaration, and we therefore dismiss the motion to exclude as moot.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
Patent outcomesUS 7,357,310 unpatentableClaim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 7,357,310 - PTAB · Feb 4, 2025 · IPR2024-01214 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–22 and all asserted grounds, finding a reasonable likelihood that Thurler anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . 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.”). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “would have had a relevant technical degree in 5 At this stage of the proceeding, the parties have not directed us to any such objective evidence. Mechanical Engineering, Fluid Engineering, or the like, and 2-3 years of experience researching, designing, manufacturing, or assessing [energy suppression devices (“ESD”)], though less education may be sufficient with additional experience, and vice versa.” Pet. 1. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for petitioner
“Thus, both the ’750 patent and its prosecution history support Petitioner’s contention that a “radially serpentine” fluid flow is one in which the fluid flows back and forth around a radius of the off axis chamber. We see no support, however, for Petitioner’s assertion that a serpentine flow requires two or more changes of direction. See Pet. 17. Petitioner states that “‘back and forth’ movement requires at least two changes in direction. Specifically, to come ‘back,’ an object must have first gone ‘forth.’” Pet. 17; see also Ex. 1013 ¶ 130 (presenting essentially identical assertions). However, both Petitioner and its witness, Mr. Nixon, identify only a single change in direction – from “forth” to “back.” Neither Petitioner nor Mr. Nixon provide any support for their assertions that two changes of direction are required, and we decline to adopt this aspect of Petitioner’s interpretation of “radially serpentine.” Instead, we interpret “back and forth,” as used in the ’750 patent, to be satisfied by only a single change in direction.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“We disagree with Petitioner’s interpretation of Superguide. There, the Federal Circuit “conclude[d] that the plain and ordinary meaning of . . . the phrase ‘at least one of’ means ‘one or more.’” Superguide, 358 F.3d at 886 (citing Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999)). The court then considered what the phrase modified and determined that, because “[t]he phrase ‘at least one of’ precedes a series of categories of criteria, and the patentee used the term ‘and’ to separate the categories of criteria,” the phrase “connotes a conjunctive list” and required selecting at least one value for each category. Id. (emphasis added). For example, in SuperGuide, the claim phrase “storing at least one of a desired program start time, a desired program end time, a desired program service, and a desired program type” was interpreted as requiring storing at least one desired program start time, at least one desired program end time, and so forth. Id. at 884, 886. Neither courts nor the Board has interpreted SuperGuide as setting forth a per se rule that the use of “at least one of” followed by “and” necessarily connotes a conjunctive list, and both courts and the Board have found SuperGuide inapplicable when the listed items following “at least one of” are not categories containing many possible values. See Apple Inc. v. CPC Patent Techs. PTY, Ltd., IPR2022-00601, Paper 31 at 28 (PTAB Sept. 27, 2023) (collecting cases). Here, Petitioner does not persuade us that “axially serpentine” and “radially serpentine” are categories. Notably, for each of these terms, both Petitioner and Mr. Nixon provide only a single example of such a fluid pathway. See Pet. 18; Ex. 1013 ¶ 134. Such identification of only a single instance does not persuade us that these terms identify categories of criteria. See Superguide, 358 F.3d at 886 (“Each category is further comprised of many possible values.”). Accordingly, for the foregoing reasons and on this preliminary record, we interpret “at least one of” as recited in the claims of the ’750 patent to have its plain and ordinary meaning of one or more.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,286,750 - PTAB · Jan 27, 2025 · IPR2024-00965 · APJ Zhenyu Yang · IPR · Institution
Instituted review of claims 1–6 on all asserted grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of all challenged claims based on the ground raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“We agree with Patent Owner that testimony from a “custodian with any personal knowledge of arXiv.org or its regular practices” would have strengthened Petitioner’s argument that Gloor is prior art. See Prelim. Resp. 20; see also, e.g., Murray & Poole Enters. LTD v. Institut De Cardiologie De Montreal, IPR2023-01064, Paper 49 (PTAB Jan. 14, 2025) (considering testimony regarding the internet archive service known as the Wayback Machine (https://web.archive.org/) in determining public accessibility). At the institution stage, however, Petitioner needs to show that Gloor qualifies as prior art by “a reasonable likelihood” standard. See Hulu, LLC, v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential) (“[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.”). We find that, for purposes of institution, Petitioner has met its burden to show a reasonable likelihood that Gloor was publicly accessible before the priority date of the ’200 patent. To prevail in this inter partes review, Petitioner must meet the preponderance of the evidence standard. See 35 U.S.C. § 316(e). Thus, we encourage the parties to fully develop the record during trial to facilitate the ultimate resolution of this issue.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“institution under § 325(d). Prelim. Resp. 21–29. Under 35 U.S.C. § 325(d), in determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 11
§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 11,768,200 - PTAB · Jan 27, 2025 · IPR2024-00964 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–8 based on both asserted obviousness grounds: Parameswaran with Gloor and Parameswaran with Bentley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of all challenged claims based on the ground raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with Patent Owner that testimony from a “custodian with any personal knowledge of arXiv.org or its regular practices” would have strengthened Petitioner’s argument that Gloor is prior art. See Prelim. Resp. 27; see also, e.g., Murray & Poole Enters. LTD v. Institut De Cardiologie De Montreal, IPR2023-01064, Paper 49 (PTAB Jan. 14, 2025) (considering testimony regarding the internet archive service known as the Wayback Machine (https://web.archive.org/) in determining public accessibility). At the institution stage, however, Petitioner needs to show that Gloor qualifies as prior art by “a reasonable likelihood” standard. See Hulu, LLC, v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential) (“[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.”). We find that, for the purposes of institution, with Dr. Gloor’s declaration and the supporting exhibits attached therein, Petitioner has met this burden. To prevail in this inter partes review, Petitioner must meet the preponderance of the evidence standard. See 35 U.S.C. § 316(e). Thus, we encourage the parties to fully develop the record during trial to facilitate the ultimate resolution of this issue.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“detailed analysis to support its argument that the combination of Parameswaran and Gloor teaches or suggests each limitation of claim 1. Pet. 23–36. Petitioner also contends that an ordinarily skilled artisan would have been motivated combine the teachings of the two references and would have had a reasonable expectation of success in doing so. Id. at 36–45. Patent Owner counters that the combination does not teach or suggest two limitations, namely the amplifying and discarding steps of the method. Prelim. Resp. 18–24. Patent Owner also challenges Gloor’s prior art status. Id. at 24–28. Based on the current record, we find Petitioner’s argument with respect to the amplifying and discarding steps more persuasive. With respect to the remaining limitations, we find persuasive Petitioner’s analysis on the prior art’s teachings. We also find persuasive Petitioner’s analysis on the motivation to combine and reasonable expectation of success. For the purposes of institution, we adopt those analyses as our own. We address Patent Owner’s counterarguments below.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“cross-over events (id. at 18–21). Based on the current record, we find Petitioner’s argument more persuasive. Petitioner relies on the combination of Parameswaran and Gloor as teaching the amplifying step. See Pet. 31–33. As such, Patent Owner cannot show non-obviousness “by attacking references individually.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Patent Owner argues that “because Parameswaran used pyrosequencing on the surface of beads in a Roche 454 sequencer, it does not disclose the formation of clusters.” Prelim. Resp. 21 (citing Pet. 31). Petitioner, however, relies on Gloor for teaching “amplifying said nucleic acid templates on a surface of a flow cell thereby to form clusters.” Pet. 31–32. Patent Owner does not challenge this reliance. See generally Prelim. Resp. Patent Owner contends that Petitioner “equat[es] the claimed chimeric sequences with ‘mismatched’ or ‘misassigned’ sequences containing an ‘unexpected’ pair of forward and reverse barcode motifs identified in Parameswaran.” Prelim. Resp. 18–19. But, according to Patent Owner, “Petitioner does not point to any disclosure in Parameswaran identifying these “mismatched” motifs as chimeric sequences—as opposed to mere sequencing or sample handling error—nor does Petitioner cite any disclosure in Parameswaran regarding such sequences resulting from cross-over events.” Id. at 19. We find Patent Owner’s characterization of Petitioner’s argument inaccurate. As we understand it, Petitioner does not “equat[e]” the claimed chimeric sequences with “mismatched” sequences in Parameswaran. Instead, as Patent Owner acknowledges, “Petitioner argues that ‘sequences with mismatched barcode motifs’ in Parameswaran ‘include chimeric sequences resulting from cross-over events.’” Id. (quoting Pet. 32) (emphasis added).” slip op. at 14
§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,041,852 - PTAB · Jan 13, 2025 · IPR2024-01156 · APJ Jeffrey N Fredman · IPR · Institution
The Board instituted inter partes review of claims 1–30 on all grounds, finding it more likely than not that the claims are unpatentable.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the current record, there is no controversy over the meaning of any of the claim terms and neither party identifies a claim construction that would impact our analysis. We therefore find that, at this stage of the proceeding, there are no terms that need claim construction. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts (without opposition): A person of ordinary skill in the art (“POSA”) at the time of invention would have a working knowledge of microbiology and would have been involved in developing testing methodologies for analysis of samples such as food products (“validation methodologies”). The POSA would most likely have an advanced degree in microbiology, food science, or animal science and at least two years of work experience but may alternatively have a bachelor’s degree in those areas and at least four years of experience with validation methodologies. The POSA would have been familiar with relevant scientific literature and industry regulations, directives, and guidelines relating to validation methodologies.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Determining whether claims are anticipated involves a two-step analysis. The first step involves construction of the claims of the patent at issue. Claim construction is a question of law reviewed de novo.” In re Aoyama, 656 F.3d 1293, 1296 (Fed.Cir.2011). “The second step [of an anticipation analysis] involves comparing the claims to the prior art. Anticipation is a question of fact reviewed for substantial evidence.” In re Aoyama, 656 F.3d at 1296. “A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012). A reference may anticipate inherently if a claim limitation that is not expressly disclosed “is necessarily present, or inherent, in the single anticipating reference.” Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“The motivation-to-combine analysis is a flexible one. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed,” [but the] “analysis ‘need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’” Intel Corp. v. PACT XXP Schweiz AG, 61 F.4th 1373, 1379–80 (Fed. Cir. 2023) (quoting KSR, 550 U.S. at 418, 420 (emphasis added)). “[I]f there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine,” because KSR explains that “if a technique has been used to improve one device [or method], and a person of ordinary skill in the art would recognize that it would improve similar devices [or methods] in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 1380 (quoting KSR, 550 U.S. at 417; and Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021)). If addressing a known problem, the prior art combination need not be “the best option, only . . . a suitable option.” Id. (quoting Intel, 21 F.4th at 800 (emphasis original)).” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,845,486
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.