• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00712 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 were not shown unpatentable because Walker was not prior art and Kelly did not teach limitations 1[d.i] and 1[d.ii].

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 5–10. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–9. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “evidence that Kelly teaches limitations 1[d.i] and 1[d.ii]. As Patent Owner persuasively argues, “the recorded information regarding particular game play events” of limitations 1[d.i] and 1[d.ii] refers to “memory to . . . record game play information regarding particular game play events” in limitation 1[b.ii], but Petitioner does not map “the game play events” identified in limitation 1[b.ii] to limitations 1[d.i] and 1[d.ii]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but largely reiterates its arguments from the Petition. However, none of these arguments or evidence demonstrates that the “game play events” in limitations 1[d.i] and 1[d.ii] are same the “game play events” that are allegedly stored in limitation 1[b.ii]. Even if we accept Petitioner’s contention that it was not identifying button presses or the “game identifier,” but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitations 1[d.i] and 1[d.ii]. See Pet. 29–33 (citing Ex. 1005, 25:23–24, 26:59–27:1, 32:27–33, 37:1–10, 38:66–39:7 40:33–45, 56:49–51, 57:27–33). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitations 1[d.i] and 1[d.ii]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 Claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 all depend (either directly or indirectly) from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–9, 13, 17, 18, 23, 25, 26, 28, and 29 would have been obvious over Kelly.” slip op. at 44

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “programmable variable parameter sets to achieve the mandated parameters,” we find that Patent Owner sufficiently explained “the notes from the 12/4/02 meeting reflect that the inventors proposed that their invention could raise the global payout percentage ‘to 75%’ – a mandated parameter – by ‘increas[ing] % of wins by the level 2,’ i.e., a secondary game level – a variable parameter.” See PO Resp. 28–32, 37, 38; Ex. 2016; Ex. 2017 ¶¶ 23–24, 41–42; Ex. 2012 ¶ 90, 63–64. Indeed, Mr. Crevelt confirmed that that a POSITA would unequivocally regard disclosure of “win rate[s]” and “global payout percentage[s]” as disclosing the claimed “mandated parameters” that are achieved by utilizing variable parameters. See Ex. 2020, 15:7–18:4, 19:14–21:16, 24:25–25:15 (global payout percentages), 21:18– 24:24 (win rates).” slip op. at 33

  Patent outcomesUS 11,393,279 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,393,279
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCNo claims unpatentable
  PTAB · Oct 14, 2026 · IPR2025-00708 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 were not shown unpatentable over Kelly or Walker and Schneier.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art (“POSITA”). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. Based on the testimony of Mr. Crevelt, we determine that a person of ordinary skill in the art would have had at least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 14 (citing Ex. 1003 ¶¶ 62–65). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’336 patent Specification and the asserted prior art references, based on our review of the record. Patent Owner states that “[f]or the purposes of this response, Patent Owner does not dispute Petitioners’ proposed level of skill, and under any level of skill a POSITA would not understand the asserted Grounds to raise any unpatentability issue,” and “this POR and supporting declarations apply Petitioner’s proposed level of skill.” PO Resp. 8. Thus, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’336 patent and the asserted prior art, and we apply it in our obviousness analysis below.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no terms require express construction to resolve the parties’ disputes in this case. See id. slip op. at 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “b) Walker Priority Date Under Dynamic Drinkware, the Petitioner is required to show that “the provisional application provides support for the claims of the patent or published application.” In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025). Thus, Petitioner must show that (1) at least one claim of Walker is supported by its provisional (U.S. Provisional Application No. 60/378,289 (the “’289PROV”) and (2) the specific subject matter relied upon as prior art is supported by the ’289PROV. Id. Petitioner does provide a detailed explanation about how the ’289PROV supports claim 1 of Walker. See Reply 6–12. However, as Patent Owner argues, Petitioner fails to show that the ’298PROV provides support for the specific subject matter relied on in Walker. See Sur-Reply 3–8. Petitioner only explains how the ’298PROV discloses “predetermined criteria” but does not provide any other explanation for how the other subject matter relied on in Walker is supported by the ’298PROV. Thus, we find that Petitioner has failed to show that Walker is entitled a priority date before May 1, 2003. See Riggs, 131 F.3d at 1384 (noting while “a prior art patent or published application cannot be accorded the benefit of its provisional application’s filing date absent a showing that the provisional application provides support for the claims of the patent or published application,” the challenger must also show that “the specific portions of the patent specification identified and relied on” to demonstrate purported invalidity have written description support).” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We find that Petitioner has failed to show by a preponderance of the evidence that Kelly teaches limitation 1[f]. As Patent Owner persuasively argues, “the game play events” of limitation 1[f] refers to “game play events” in limitation 1[d], but Petitioner does not map “the game play events” identified in limitation 1[d] to limitation 1[f]. In its Reply, Petitioner does not dispute Patent Owner’s assertion, but merely reiterates its arguments from the Petition. See Reply 23–24, 26. However, none of these arguments or evidence demonstrates that the “game play events” in limitation 1[f] are same the “game play events” that are allegedly stored in limitation 1[d]. Even if we accept Petitioner’s contention that it was not identifying button presses, but rather includes “game states and game events in the game process,” Petitioner provides no evidence or even arguments that what it has identified here relates to what it has identified for limitation 1[f]. See Pet. 25–26 (citing Ex. 1005, 25:23–24, 32:27–33, 40:33–45, 56:49–51). For these reasons, Petitioner has failed to show by a preponderance of the evidence that Kelly teaches or suggests limitation 1[f]. Accordingly, we find that Petitioner has failed to show that claim 1 would have been obvious over Kelly. 2. Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 Claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 all depend from claim 1. See PO Resp. 16 (explaining that the arguments for independent claim 1 also apply to the dependent claims inherent the deficiencies asserted with respect to the independent claims). We find Patent Owner’s arguments availing, as explained above. Accordingly, we find that Petitioner has failed to show by a preponderance of the evidence that claims 3–5, 12, 13, 18–20, 22, 24–26, 29, 42, 44–47, and 50 would have been obvious over Kelly.” slip op. at 40

  Patent outcomesUS 8,529,336 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 8,529,336
• Qiagen Sciences, LLC v. Tecan Genomics, Inc.All claims unpatentable
  PTAB · May 12, 2026 · IPR2025-00026 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–10 are unpatentable: claims 1–3 and 5–10 are anticipated by Porreca and obvious over Schmitt and McCloskey; claims 4 and 7 are also obvious over the listed Illumina combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “On the initial trial record, we agreed with Patent Owner that one of ordinary skill in the art would have had experience with next generation sequencing, but were not persuaded that this would only be possible in the field of molecular biology. Instead, we found that a person of ordinary skill would have had either (1) a Ph.D. in the field of chemistry, molecular biology, or biochemistry or (2) a B.S. or M.S. degree with three to five years of experience working in any of those fields. Inst. Dec. 8. We specifically found that “[t]he person of ordinary skill would have had experience with next generation sequencing methods and a working knowledge of how those methods functioned.” Id. at 8–9. Patent Owner now submits that it does not dispute the definition of a person of ordinary skill in the art as laid out in the Institution Decision. PO Resp. 13. Reviewing the entire trial record, we maintain the same definition of a person of ordinary skill in the art and note that it is consistent with the skill level reflected in the disclosures of the ’357 patent and prior art. We further note that the skill level does not affect our analysis or our final decision.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In the Institution Decision, the Board adopted Petitioner’s construction of the term “adaptor.” Inst. Dec. 9. Patent Owner does not dispute this construction. PO Resp. 13–14. During oral argument, Petitioner argued that claim 1 requires “an adapter to be ligated onto a target DNA, and that adapter needs to have two different sequences of DNA that are used for identification” including a “socalled identifier that's one to eight nucleotides in an indexing site.” Tr. 6:19–7:2. Patent Owner, again, did not dispute this characterization of “adaptor.” See generally Tr. Based on the entirety of the trial record, we continue to apply Petitioner’s construction of the term “adaptor,” although we note that it does not affect our analysis.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the entirety of the trial record, we do not agree with Patent Owner’s reading of either the claims or the prior art because Patent Owner takes too narrow a view of both. First, based on the plain language of Porreca, we find it uses a combination of the sequence reads of the target sequence and differentiator tag sequences to determine whether there is duplication. See Ex. 1006 ¶¶ 139–140, 143, 148, 153. All that the claim requires is that the method identifies sequence reads with identical identifier and target sequences as duplicates. Because claim 1 contains the transition “comprising,” the claim is still satisfied if the category of identified duplicate reads contains identical labels and also contains more. Patent Owner admits that the identifier and target sequence do not have to be used simultaneously. Tr. 46:16–48:4. Instead, Patent Owner challenges whether Porreca uses the required elements in combination as recited in the challenged claims. Based on the record before us, we agree with Petitioner’s position especially in view of the open-ended nature of the claims and Patent Owner’s own admission that there is no temporal requirement for the use of target sequences and differentiator tag sequences. Specifically, we find that Porreca teaches using the combination of the target sequences and the differentiator tag sequence to determine whether particular sequence reads are unique or PCR duplicates. See Ex. 1006 ¶¶ 139–140, 143, 148, 153. The use of both such sequences meet the claim limitations. This finding is consistent with the prosecution history of the ’357 patent and how the applicant and examiner interpreted the claims. See Ex. 1013, 69–70, 78–79. Second, we find the disclosure of Porreca sufficient to demonstrate to an ordinarily skilled artisan that “collapsing” is done by comparing target sequences and differentiator tag sequences. Porreca specifically explains that: after multiple reads have been collected for a given locus, it is possible that due to bias (e.g., caused by PCR amplification steps), a large fraction of the reads are derived from a single originating molecule. This would skew the population of target sequences observed, and would affect the outcome of the genotype call.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We do not agree with Patent Owner for at least two reasons. First, Patent Owner fails to address the fact that Schmitt cites to McCloskey 2007. We find that the citation of McCloskey 2007 in Schmitt indicates that the ordinarily skilled artisan would have considered the teachings of McCloskey to be highly relevant to the teachings of Schmitt and would have considered them to be both useful in the field of sequencing. See Ex. 1005 ¶ 6. Second, Patent Owner fails to explain or even identify the purported structural differences between Schmitt and McCloskey that would prevent the teachings of McCloskey from being relevant to Schmitt. In addition, we credit the testimony of Dr. Metzker that one of ordinary skill in the art would have understood the benefits of adding a barcode to target sequences and would have looked to McCloskey and the batch-stamps it teaches because both Schmitt and McCloskey are in the same field and address the same problems. See Ex. 1003 ¶¶ 110, 114. Accordingly, we find that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill in the art at the critical time would have had sufficient reason to combine the teachings of Schmitt and McCloskey to arrive at challenged claim 1.” slip op. at 48

  Patent outcomesUS 11,098,357 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,098,357
• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.All claims unpatentable
  PTAB · Apr 8, 2026 · IPR2024-01504 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–4, 6, 7, 9, and 10 are unpatentable under § 102 over Bielas and § 103 over Iafrate and Kivioja and Bielas.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “On the initial trial record, we agreed with Patent Owner that Petitioner’s asserted level of ordinary skill in the art is higher than warranted when Petitioner argues that a person of ordinary skill “further would have had specific experience with implementing and designing library preparation methods.” Pet. 21–22. We disagreed with Patent Owner, however, that an ordinarily skilled artisan only needs to “have had experience with DNA sequencing methods” (see Prelim. Resp. 8) because an artisan with experience based only on pre-NGS sequencing methods would not qualify as a person of ordinary skill. Instead, we found that a person of ordinary skill would have had either (1) a Ph.D. in the field of chemistry, molecular biology, or biochemistry or (2) a B.S. or M.S. degree with three to five years of experience working in any of those fields. Inst. Dec. 9. We specifically found that “[t]he person of ordinary skill would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned.” Id.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “1. “indexing site” Petitioner argues that the ’357 patent defines “indexing site” as a sample index, specifically, “a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing.” Pet. 23 (citing Ex. 1004, 4:40–44). Patent Owner did not disagree initially with Petitioner’s proposed construction other than to argue that no claim requires construction. Prelim. Resp. 9. In our Institution Decision, we noted that the ’357 patent states: An indexing site is a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing. the ’357 patent to provide a definition for “indexing site,” and we construed the term in accordance therewith. The parties do not dispute this definition and we maintain that construction for our analysis here. See PO Resp. 9; Reply 6–14.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In some embodiments, duplicate sequencing reads are differentiated from one another as being true duplicates versus apparent or perceived duplicates. Apparent or perceived duplicates may be identified from sequencing libraries and using conventional measures of duplicate reads (i.e., reads were mapped using bowtie), where all reads with the same start and end nucleic acid coordinates were counted as duplicates. True duplicates may be identified from sequencing libraries having had an identifier site introduced through ligation to differentiate between fragments of DNA that randomly have the same start and end mapping coordinates. Ex. 1004, 14:21–31; see id. at Fig. 5; see also Example 1, 18:6-15 (When evaluating two million random reads, the apparent duplicates were found to comprise 39% of all reads. However, the true duplicates, identified through The methods employing the use of an identifier site were found to considerably increase the resolution of the true number of duplicates within the pool of reads.). The ’357 patent also discloses in Example 5: “Any read that has identical sequence to any other read is identified as a duplicate and removed from the population, thus, only a single copy is retained within the file.” Ex. 1004, 20:60–62. Analyzing the patent disclosure in light of the parties’ arguments, we determine that “duplicates” in claim 1 of the ’357 patent means the sequences possess an identical sequence for both the identifier and the length of the sequence read that is obtained. Additionally, we agree with the parties that there is no temporal requirement for “identifying sequence reads” using the identifier and the target sequence, and the two do not have to be used simultaneously. Rather, based on both Examples 1 and 5 of the ’357 patent, the claims only require that the two data points be used for “identifying sequence reads.”” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “4. “comprising” The Board preliminarily construed “comprising” as an open-ended transition that is not limited to the listed steps. See Inst. Dec. 13 (citing Vivid Techs., Inc., 200 F.3d at 811). Patent Owner agrees that the “comprising” transitional phrase of the challenged claims leaves open the possibility that additional steps can be included in the method, but argues that it should not “be interpreted so broadly as to effectively eliminate the step of identifying duplicates as claimed.” PO Resp. 18. Patent Owner argues that a “broad interpretation of the claims cannot be read to include a method in which the identifying duplicates step only identifies sequences with PCR or SBS errors and does not identify duplicates in the manner include only identification of reads without duplicate sequences (those that contain PCR or SBS errors) makes this limitation superfluous and cannot be the correct interpretation.” Id. Patent Owner argues that the proper construction of the claims (1) covers a method of identifying sequence reads that are identical as duplicates through a process that uses both the identifier and at least a portion of the target sequence, and (2) does not exclude methods that include a step of identifying PCR errors in addition to the claimed step of identifying duplicates. Id. at 19. Petitioner agrees with Patent Owner and states “[a]ll claim 1 requires is that two sequences are identified as duplicates using the claimed method, even if the method identifies as duplicates additional sequences that are not 100% identical.” Reply 14 (citing Ex. 1124, 55:11–57:3; Ex. 1117). The Board agrees with the parties and we construe “comprising” as an open-ended transition, meaning the claims require, but are not limited to, the listed steps.” slip op. at 16

  Patent outcomesUS 11,098,357 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,098,357
• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.No claims unpatentable
  PTAB · Apr 6, 2026 · IPR2025-00016 · APJ Zhenyu Yang · IPR · Final written decision

  The Board found claims 1–3, 5–12, and 14–19 not shown unpatentable because Meyer did not disclose the claimed enrichment, which the obviousness grounds did not supply.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “for purposes of this Decision, we find a POSA would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had knowledge of how those methods functioned. Id. at 12.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “As an initial matter, we acknowledge that the definition “to process so as to add or increase the proportion of a desirable ingredient” has two possible interpretations. In the first interpretation, “add or increase” shares the same object “the proportion of a desirable ingredient.” When the proportion of one ingredient goes higher, the proportion of at least another ingredient would necessarily go lower. Thus, the enrichment process under this interpretation results in a higher proportion of the desirable ingredient relative to other ingredients. Patent Owner adopts this interpretation. See PO Resp. 17 (“In the context of preparing a sequencing library, [Patent Owner] Tecan proposes that a nucleic acid sequence of interest is ‘enriched’ when the proportion of nucleic acid fragments containing the sequence of interest is increased relative to other nucleic acid fragments in the sample.”). According to Patent Owner, “amplifying the one or more oligonucleotide extension products . . . thereby enriching the nucleic acid sequence of interest, by generating amplified products comprising the enriched nucleic acid sequence of interest” in step (c) means “increas[ing] the proportion of the nucleic acid sequence of interest relative to the nucleic acid fragments in the solution not containing the sequence of interest by amplifying the oligonucleotide extension product and its complement.” Id. at 19–20. Under the second interpretation, the object for “add” is “a desirable ingredient,” whereas the object for “increase” is “the proportion of a desirable ingredient.” This interpretation is broader than the first one in that the result of the enrichment process not only encompasses a higher proportion of the desirable ingredient relative to other ingredients, but also more desirable ingredient in raw number.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Dr. Sims. As explained above, the amplification step must result in at least some enrichment of the sequence of interest, even though it does not have to be the only cause. See supra Section II.C.2.b. Indeed, Petitioner acknowledges that “at least some of the enrichment must result from the recited steps.” Reply 12. Because Meyer’s enrichment for mRNA using the SMART protocol occurred before any recited steps of claim 1, we find it does not meet the claimed “enrichment” under our construction.” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “shown that Meyer discloses step (c) of claim 1, and Petitioner does not address that limitation in this ground, we find Petitioner has not met its burden to show that claims 8, 17, and 18 would have been obvious over Meyer. F. Alleged Obviousness over Meyer and Siebert Claim 2 depends from claim 1, and further recites “the nucleic acid fragment comprises genomic DNA.” Petitioner asserts that claim 2 would have been obvious over the combination of Meyer and Siebert. Pet. 62–65. Petitioner relies on Siebert for teaching the additional limitation recited in claim 2 only. Id. Because Petitioner has not shown that Meyer discloses step (c) of claim 1, and Petitioner does not rely on Siebert for teaching that limitation, we find Petitioner has not met its burden to show that claim 2 would have been obvious over the combination of Meyer and Siebert.” slip op. at 34

  Patent outcomesUS 10,876,108 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,876,108
• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.No claims unpatentable
  PTAB · Apr 6, 2026 · IPR2025-00015 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3 and 5–22 were not shown unpatentable because Meyer does not disclose the claimed enrichment, and the other grounds rely on Meyer for that limitation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “for purposes of this Decision, we find a POSA would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. Id. at 14. After institution, Patent Owner states that, for purposes of this proceeding, it adopts the Board’s definition of a POSA. PO Resp. 18. After reviewing the record developed during trial, we see no reason to change our finding on this issue. As we stated in the DI, our “definition of a POSA is consistent with the skill level reflected in the disclosures of the ’012 patent and prior art.” DI 14.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “to “enrich” means to “increase[] relative to the rest of the fragments.” Tr. 12:25–26. The panel asked: “In the starting material, there are three components, A, B, C, that say it’s 30 percent, 50 percent and 20 percent. You do PCR and it -- they all get amplified and the end result is still 30 percent, 50 percent, and 20 percent. Anything got enriched?” Id. at 12:18–21. Petitioner responded that “petitioner’s position is that in that situation, there is no enrichment.” Id. at 12:22–23. In other words, Petitioner does not disagree with Patent Owner that mere increase in the raw number is not enrichment. See also id. at 13:7–9 (“[W]e would agree that if it is truly unbiased amplification, that does not result in an increase in the proportion, and so that does not meet the plain meaning of enrich.”). We find the record, including the testimony from all three declarants, supports Patent Owner’s argument. See Sur-reply 1–5 (citing Ex. 1125, 283:1–6, 286:22–287:14; Ex. 1126, 170:18–171:1; Ex. 2037, 150:18–22, 173:15–17; Ex. 2038 ¶ 95), 8 (citing Ex. 1125, 271:10–15; Ex. 2037, 188:22–189:1). Thus, we adopt Patent Owner’s proposal that “a nucleic acid sequence of interest is ‘enriched’ when the proportion of nucleic acid fragments containing the sequence of interest is increased relative to other nucleic acid fragments in the sample.”9 See PO Resp. 19.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Dr. Sims. As explained above, the amplification step must result in at least some enrichment of the sequence of interest, even though it does not have to be the only cause. See supra Section II.C.2.b. Indeed, Petitioner acknowledges that “at least some of the enrichment must result from the recited steps.” Reply 12. Because Meyer’s enrichment for mRNA using the SMART protocol occurred before any recited steps of claim 1, we find it does not meet the claimed “enrichment” under our construction.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “F. Alleged Obviousness over Meyer and Siebert Claim 2 depends from claim 1, and further recites “the nucleic acid fragment comprises genomic DNA.” Petitioner asserts that claim 2 would have been obvious over the combination of Meyer and Siebert. Pet. 69–72. Petitioner relies on Siebert for teaching the additional limitation recited in claim 2 only. Id. Because Petitioner has not shown that Meyer discloses step (d) of claim 1, and Petitioner does not rely on Siebert for teaching that limitation, we find Petitioner has not met its burden to show that claim 2 would have been obvious over the combination of Meyer and Siebert. G. Alleged Obviousness over Meyer and Kelley Claim 9 depends from claim 1, and further recites “the barcode sequence is 12 nucleotides in length.” Petitioner asserts that claim 9 would have been obvious over the combination of Meyer and Kelley. Pet. 72–74. Petitioner relies on Kelley for teaching the additional limitation recited in claim 9 only. Id. Because Petitioner has not shown that Meyer discloses step (d) of claim 1, and Petitioner does not rely on Kelley for teaching that limitation, we find Petitioner has not met its burden to show that claim 9 would have been obvious over the combination of Meyer and Kelley. H. Alleged Obviousness over Meyer, Caruccio, and Bronner Each of claims 15 and 17–19 depends from claim 1. Claim 15 further recites “the second strand of the partial duplex adaptor is ligated to a 3′ end of the nucleic acid fragment.” Claim 17 recites “[t]he method of claim 1, further comprising performing bridge amplification of the annealed strand after step e).” Claim 18 further recites “the sequencing comprises use of four labeled reversible terminators.” And claim 19 further recites “the sequencing comprises semiconductor sequencing.” Petitioner asserts that claims 15 and 17–19 would have been obvious over the combination of Meyer, Caruccio, and Bronner. Pet. 75–80. Petitioner relies on Caruccio and Bronner for teaching the additional limitation recited in claims 15 and 17–19 only. Id. Because Petitioner has not shown that Meyer discloses step (d) of claim 1, and Petitioner does not rely on Caruccio and Bronner for teaching that limitation, we find Petitioner has not met its burden to show that claims 15 and 17–19 would have been obvious over the combination of Meyer, Caruccio, and Bronner.” slip op. at 38

  Patent outcomesUS 10,036,012 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,036,012
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Nov 21, 2025 · IPR2025-00906 · APJ Justin T Arbes · IPR · Institution

  The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedOther

    “2019),2 a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 14 (citing Ex. 1003 ¶¶ 39–42). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 7. Based on the record presented, including our review of the ’434 patent and the types of 2 Petitioner states that it “assumes for purposes of [its Petition] that the claims are entitled to the earliest claimed priority date—November 5, 2019.” Pet. 14; see Ex. 1001, code (60). problems and solutions described in the ’434 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “no claim terms need be construed.” Pet. 10. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted

    “Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 49. He explains in detail how, based on his experience, emails sent to a 3GPP email exploder were accessible on the email archive immediately after being sent. Id. ¶¶ 44–60, 72–80. That explanation is supported by screenshots from various websites and other corroborating evidence. See Ex. 1008 ¶¶ 44–60, 72–80. The November 3, 2019, email with 3GPP-38.213-CR as an attachment is currently available to the public via the email archive, with no login, password, or membership required to access it. Id. ¶¶ 44, 74; see Kyocera, 545 F.3d at 1351 (“[ETSI] specifications themselves were visible to any member of the interested public without requesting them from an ETSI member. Further, ETSI did not impose restrictions on ETSI members to prevent them from disseminating information about the standard to non-members.”). The metadata for the file indicates that it was created and last modified one day before the email was sent. Ex. 1008 ¶ 76. And Mr. Rodermund discusses one example where a listserv email was uploaded to the archive just minutes after being sent. Id. ¶¶ 50–51. Although that example is from 2025 rather than 2019, it provides some support for his opinion that the same “near contemporaneous” timing would have been the case in 2019 as well. See id. ¶ 52. Immediately making emails like the one with the 3GPP-38.213-CR change request available on the email archive is consistent with 3GPP’s overall purpose of making standards documents available “so that engineers and other individuals would have ready access to them when developing and implementing cellular networks and devices.” See id. ¶ 35; Kyocera, 545 F.3d at 1351 (finding that the “primary purpose of the [standard at issue] was to develop a system interoperable across national borders,” which “made it crucial to grant access to any interested parties”); Cradlepoint, Inc. v. Sisvel Int’l S.A., IPR2020-01103, Paper 46 at 13–14 (PTAB Jan. 18, 2022) (finding, based on the preponderance of the evidence, that “testimony concerning [a 3GPP] email exploder and listserv provide further support for a conclusion of public accessibility because it tends to show that 3GPP was known beyond its members, that the meetings were widely publicized, and that 3GPP documents were, in general, widely available”). Finally, Mr. Rodermund explains in detail how a person of ordinary skill in the art could have accessed the email with 3GPP-38.213-CR, using the indexing of the email archive. See Ex. 1008 ¶¶ 49, 53–60. We are persuaded that Mr. Rodermund’s testimony and supporting evidence are sufficient at this stage. Patent Owner will have the opportunity to cross-examine Mr. Rodermund and explore the bases for his statements. And our ultimate determination of the weight to be given to his testimony will be based on the complete record at the end of trial. Based on the totality of the evidence currently in the record, Petitioner has established a reasonable likelihood that 3GPP-38.213-CR is a prior art printed publication under 35 U.S.C. § 102(a)(1).” slip op. at 20

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “is that Petitioner has not shown sufficiently that 3GPP-38.213-CR and 3GPP-38.212-CR are prior art printed publications. Prelim. Resp. 2–10. We disagree on this record for the reasons explained above. See supra Section II.D.4. Patent Owner does not dispute Petitioner’s arguments regarding the limitations of claim 1 or Petitioner’s asserted motivation to combine the references. See Prelim. Resp. 2–10. Petitioner’s contentions are supported by the testimony of Dr. Mandayam and are persuasive based on the current record. See Pet. 14–48; Ex. 1003 ¶¶ 52–67, 81–113. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over 3GPP-38.213, 3GPP-38.213-CR, and 3GPP-38.212-CR. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a).” slip op. at 28

  Claim construction§ 102 anticipationcites KSR · Graham
  Patents in suitUS 10,965,434
• American Airlines, Inc. / Southwest Airlines Co. v. Intellectual Ventures II LLCInstitution denied
  PTAB · Nov 18, 2025 · IPR2025-00782 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “An inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’469 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that: [A] POSITA would have had at least a bachelor’s degree in computer science, computer engineering, business information systems, software engineering, or systems engineering and at least two years of experience in computer networking or telecommunications. Ex.1002 ¶21; see also Ex.1001 (1:14-31). Additional education could substitute for professional experience. Ex.1002 ¶21. Significant work experience could substitute for formal education. Ex.1002 ¶21. Pet. 7–8. Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner states that it “do[es] not believe explicit construction is required to resolve this Petition.” Pet. 7. Patent Owner proposes constructions for “Internet,” “access the Internet,” “subscriber access website.” Prelim. Resp. 12–15. On this record and for purposes of this decision, we determine that no claim terms require express construction. D. Alleged Anticipation of Claims 1, 2, 10, 11, and 24–28 by Bruner and” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable

    “We find Patent Owner’s argument to be persuasive. Petitioner does not explain adequately how Bruner discloses the positional requirement of a subscriber access unit being coupled between the satellite dish and the router. Accordingly, Petitioner has not shown sufficiently for purposes of institution that Bruner anticipates independent claim 24. Although, for the obviousness challenge, Petitioner contends that Clark discloses a wireless router (for limitation 24c), Petitioner relies solely on Bruner for the “between” limitation. See Pet. 17 (“Bruner and/or Bruner in view of Clark both disclose each limitation of claim 24c, including a router (e.g., Bruner’s ‘ADS’ and Clark’s ‘wireless router’)”); id. at 18–19 (the discussion of the “between” limitation 24d asserting that “Bruner discloses claim 24d,” with no mention of Clark). Furthermore, Petitioner merely asserts that both Bruner and Clark disclose a router. See id. at 17–18. Petitioner, however, does not indicate clearly which is used in the proposed combination, does not describe the configuration of a proposed combination or a proposed modification of Bruner’s system, and fails to set forth an adequate and persuasive reason with rational underpinning as to why a person of ordinary skill in the art would have modified Bruner’s system to arrive at the positional requirement of the subscription access unit being coupled between the satellite dish and a router. See id. at 13–14 (motivation section for this ground); id. at 18–19 (addressing the “between” limitation 24d). Accordingly, Petitioner has not shown a reasonable likelihood of prevailing on its challenge to independent claim 24 as obvious over Bruner in view of Clark.” slip op. at 14

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,324,469
• Bizlink Technology, Inc. v. Anderson Power Products, Inc.Some claims unpatentable
  PTAB · Nov 7, 2025 · IPR2024-00687 · APJ Lisa L Tsang · IPR · Final written decision

  Claims 1–3 and 7–12 are unpatentable; claim 4 is not shown unpatentable because Winkler does not establish that its insulating barriers press against each other when partially disconnected.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “We agree with Patent Owner’s first argument that a level of ordinary skill in the art that encompasses an individual having experience with electrical circuits but not electrical connectors is not consistent with the technology and descriptions in the ’017 patent. See PO Resp. 7. The field of the invention of the ’017 patent is “electrical connectors, and more particularly, . . . an electrical connector that suppresses arcing if connected or disconnected while current is flowing.” Ex. 1001, 1:7–9. Consistent therewith, the challenged claims are directed to “[a]n electrical connector pair” and recite structural features of the electrical connector pair. Id. at 4:20–56, 5:1–20.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We find that the intrinsic evidence supports maintaining our construction in the Institution Decision that “insulating” means “electrically insulating.” See Dec. 11–12. In particular, we agree with Patent Owner’s argument that the insulating barriers would be unable to be configured to “block[] substantially all through-air arcing paths between the first and second electrical contacts,” as claimed, unless they were electrically insulating. See Ex. 1001, 4:36–44. Moreover, as Patent Owner avers, our interpretation of “insulating” as it applies to the first and second insulating barriers should be the same as for the first and second housings. See Digital Biometrics, 149 F.3d at 1345 (“whatever interpretation we assign [to a word used in a claim] should encompass both uses because the same word appearing in the same claim should be interpreted consistently” (citation omitted)).” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Ex. 2001 ¶ 102. Accordingly, we find Dr. Eldering’s testimony persuasive as to this issue and determine that the diagram shows what an ordinarily skilled artisan would have reasonably inferred Winkler to disclose when the connectors are partially disconnected. Compare Ex. 1004, Fig. 2, with Pet. 33; see also Ex. 1004, 3:14–27 (discussing the process by which the connectors are engaged with each other).” slip op. at 44

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Id. at 3:27–37 (emphasis added). These wall portions 58 are located between the distal ends of the terminals and where Petitioner proposes to add a printed circuit board or wiring board to Winkler. See id. at Fig. 2; Pet. 44–46 (diagrams showing Winkler as modified to have a printed circuit board or wiring board). As such, movement of Winkler’s terminals appears to be mostly limited to within their respective receiving pockets. Given the above teachings, we fail to see how Petitioner’s proposed modification would have meaningfully interfered with the degree of freedom of movement required by Winkler’s terminals. Notably, Mr. Locati’s testimony regarding this issue is conclusory. See Ex. 2001 ¶ 120. Because movement of Winkler’s terminals occurs primarily in the receiving pockets, we also do not discern how the solder joint of Petitioner’s proposed modification would experience undue stress or risk breaking due to that movement. See Ex. 1004, 1:47–55, 3:14–37, Fig. 2; Pet. 44–46. This is particularly true in view of Winkler’s teaching that each cylindrical end portion may be soldered to a cable. See id. at 2:6–10; see also Pet. 43 (arguing that Winkler teaches soldering to a cable but not specifically to a printed circuit or wiring board). Accordingly, we determine that Petitioner has shown by a preponderance of the evidence that claim 8 would have been obvious over the combined teachings of Winkler and Handbook.” slip op. at 55

  Patent outcomesUS 8,808,017 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,808,017
• Toyota Motor Corp. v. Emerging Automotive LLCSome claims unpatentable
  PTAB · Oct 21, 2025 · IPR2024-00786 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 10, 11, 13–16 were held unpatentable: claims 10, 11, 13, 15, and 16 as anticipated by Xiao, and claim 14 as obvious over Xiao and Singh.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “arguments, we agree with Patent Owner’s proposed construction that requires the server to conduct a compatibility check. We start with the express claim language. Claim 10 recites: determining, by the server, applicable settings for the selected vehicle, the applicable settings being settings that are preferred to be set as identified from the user profile and are compatible with settings that are settable in the selected vehicle. Ex. 1001, 33:10–14 (emphases added). The express claim language requires that the server determine applicable settings. Those applicable settings, determined by the server, must also be compatible with vehicle settings. As such, the plain and ordinary meaning of the claim language expressly requires that the server make a determination of applicable settings that are defined as being compatible with vehicle settings.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’268 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, or closely related field, with at least two-to-four-years-experience in cloud services for settings customization, or a Master’s degree in electrical engineering, computer science, or equivalent.” Pet. 12 (citing Ex. 1009 ¶ 82). Patent Owner does not address the level of ordinary skill in the art. See, generally PO Resp. For purposes of this Decision, we adopt Petitioner’s proposal because it is reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable

    “However, contrary to Dr. Almeroth’s testimony and Petitioner’s position, Xiao’s server already does not attempt to command vehicles to do things they cannot do. Xiao teaches that server 118 generates commands for command codes that exist and are settable in the vehicle. Ex. 1010 ¶¶ 102– 103. As such, if there is no corresponding automobile setting, then Xiao’s server would not list those command codes for retrieval and would not send a command based on that retrieved command code to control the automobile systems to achieve the operator’s desired settings because that command code is not in the database. Our understanding of Xiao is further supported by Dr. Almeroth’s testimony: By listing them in the table of automobile command code information 606, Xiao shows that there are particular settings compatible with particular automobiles and particular desired settings. Thus, Xiao demonstrates the necessarily present characteristic that certain settings (e.g., commands) are compatible with certain automobiles. Ex. 1009 ¶ 96 (emphases added). We note that Dr. Malek further explains “the nonsensical result achieved by the combination would be that Xiao’s server, at best, in response to the command request issued by the operator, could ‘look up’ a command code to apply a vehicle-specific setting to that automobile 112, only to find that there is ‘none.’” We agree with Dr. Malek that there is a “None” command code in Xiao’s database when Xiao’s database already stores settings that are known to be settable in a specific vehicle per the operator’s preferences. Ex. 2011 ¶ 135. Thus, based on the complete record, we determine that Petitioner has not demonstrated by a preponderance of the evidence that Xiao in combination with Hayashi render claim 10 obvious.” slip op. at 79

  • BurdenNot shown unpatentable

    “Anticipation is not an ipsissimis verbis test, but “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal, 814 F.2d at 631. Petitioner and Dr. Almeroth both acknowledge that Xiao discloses operators on the same account. Pet. 40–41; Ex. 1009 ¶ 170. But Petitioner and Dr. Almeroth do not explain sufficiently how Xiao discloses these operators have sub-user accounts. Petitioner further contends Xiao discloses plurality of accounts. Pet. Reply 18–19 (citing Ex. 1024, 33:1–44:10, 45:22–46:2); Ex. 1010 ¶ 65. Again, Petitioner has not adequately explained how the plurality of accounts includes sub-user accounts because Xiao discloses generally that multiple operators of a vehicle are on the same, single account. Ex. 1010 ¶ 66.” slip op. at 65

  Patent outcomesUS 9,171,268 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,171,268

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.