- Inari Agriculture, Inc. v. Corteva Agriscience LLCNo claims unpatentablePTAB · Nov 18, 2025 · IPR2024-01014 · APJ Zhenyu Yang · IPR · Final written decision
Petitioner did not show claims 1–8 unpatentable because they are entitled to the 2004 priority date, making Barbour unavailable as prior art.
RulingsFinal written decision- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Entitled to earlier dateDecided for patent owner
“For a claim to a biological material, the enablement requirement of § 112, first paragraph, does not require such assured access to a microorganism deposit as of the filing date; what is required is assurance of access (to the microorganism culture by the public upon issuance of a patent on the application) prior to or during the pendency of the application, so that, upon issuance of a U. S. patent on the application, the public will, in fact, receive something in return for the patent grant. Feldman, 517 F.2d at 1355. Patent Owner has persuaded us that such exception not only applies to a deposit, but also extends to a biological material known and readily available. See 52 Fed. Reg. 34080, 34081. In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art.” slip op. at 15
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art. Because all of Petitioner’s challenges rely on Barbour (Pet. 6), all those challenges fail.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable
“In this case, it is undisputed that TC1507 germplasm was known and readily available to the public by Barbour’s publication date in 2006 (Pet. 49–53), years before the 2014 issuance date of the ’378 patent (Ex. 1001, code 45). Thus, based on the record developed through trial, we agree with Patent Owner that the 2004 application satisfies the enablement requirement as of its application date in 2004. PO Resp. 16–18 (citing 52 Fed. Reg. 34080, 34081). As a result, the challenged claims are entitled to the 2004 priority date and, thus, Barbour does not qualify as prior art. Because all of Petitioner’s challenges rely on Barbour (Pet. 6), all those challenges fail.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“would understand that the term “‘flanked by’ permits overlap between the expression cassette and the DNA sequence it is flanked by.” Pet. 24–26. Patent Owner does not propose any claim construction. PO Resp. 6–7. On this record and for purposes of this Decision, we see no need to expressly construe any claim term.” slip op. at 9
Patent outcomesUS 8,901,378 not shown unpatentableClaim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 8,901,378 - Duration Media LLC v. Rich Media Club LLCNo claims unpatentablePTAB · Aug 19, 2024 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–10 were not proven unpatentable under either §103 ground because the evidence did not show the claimed viewability determination.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s challenges to the patentability of the claims of the ’329 patent: a person that would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience being in the field of internet advertising.” slip op. at 10
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b). Section 311(b) provides: “A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed cancel the claims of the ’329 patent on the basis of Badros, Harkins, and Krassner. Pet. 11. Petitioner did not base its request, in whole or in part, on the Krassner publication. Id. Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 13
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner responds that, contrary to Patent Owner’s argument, “Harkins teaches that its invention can be used in web pages.” Pet. Reply 18 (citing Ex. 1004 ¶30). Although Petitioner’s citation is off by one paragraph, Petitioner’s response about what Harkins teaches is correct. See Ex. 1004 ¶29 (“The present invention may be implemented for provision of virtually any type of advertising (e.g., print, radio, television, Internet, billboard, etc.) via any type of advertising medium (e.g., newspaper, magazine, radio broadcast, Web pages, billboards, etc.) without departing from the scope of the present invention.”). We find that Harkins is from the same field based on its express statement that it is applicable to “virtually any type of advertising” and “any type of advertising medium,” including “Web pages.” Ex. 1004 ¶29. Further, even if this were insufficient to place Harkins in the same field as the ’329 patent, we find that Harkins is reasonably pertinent to the particular problems with which the ’329 patent inventors were involved. In sum, we find that Harkins is analogous art to the ’329 patent.” slip op. at 19
- Strike new argumentNew argument disregardedGranted
“Paper 60 (“PO Mot. To Exclude”), 9–10.6 Patent Owner is correct in this regard and, thus, we grant Patent Owner’s Motion to Exclude with respect to the testimony in the second Smedley Declaration and the Madansky Declaration opining that Badros teaches the determination limitation. Paper 60, 9–12. Petitioner, in its Opposition to the Motion to Exclude, argues that Patent Owner’s arguments about the “viewability test” were “surprising.” Paper 62, 8. We are not persuaded by Petitioner’s argument. The “viewability test” is a claim limitation. Petitioner should have anticipated that Patent Owner would argue that limitation. See In re Gardner, 449 F. App’x 914, 916 (Fed. Cir. 2011) (“This court has held that when evaluating claims for obviousness under 35 U.S.C. § 103, all the limitations of the claims must be considered and given weight.” (citing Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983)); Univ. of Strathclyde v. 6 Patent Owner’s Motion to Exclude seeks to exclude, in part or in whole, Exhibits 1020–1022, 1025–1030, and 1034–1040, which were submitted with Petitioner’s Reply, of which Exhibits 1026 and 1027 are the declaration by Dr. Madansky and the second declaration by Dr. Smedley, respectively. Mot. To Exclude. The Motion to Exclude also seeks to exclude “Exhibits” 1017 and 1018, which are not filed or of record in this case but which are referenced in the Reply. Id. For example, Exhibit 1017 is the Krassner publication, which Petitioner unsuccessfully moved to add to the record as supplemental information. See Paper 21, 3 n.1 (expunging the Krassner publication and stating that it “need not -- and indeed may not -- be re-filed under a new exhibit number”). Apart from the portions of Dr. Smedley’s second declaration and Dr. Madansky’s declaration opining that Badros teaches the “determination” limitation, we dismiss the Motion to Exclude as moot. obviousness determination generally requires a finding that “all claimed limitations are disclosed in the prior art’.” (citing PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1194 (Fed. Cir. 2014)). Petitioner argues that “[v]iewability tests were well known for well over a decade prior to the ’329 patent’s priority date.” Reply 9. If that were the case, then Petitioner should have made its argument in the Petition. Section 312(a) of Title 35 is titled “Requirements of Petition,” and it specifies that a petition must identify, among other things, “the evidence that supports the grounds for the challenge to each claim, including . . . (B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions.” 35 U.S.C. § 312(a)(3); see also 37 C.F.R. § 42.104(b)(4)–(5) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon; and . . . the supporting evidence relied upon to support the challenge.”). Thus, “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Board’s Consolidated Trial Practice Guide, 73 (Nov. 21, 2019).7 Dr. Smedley’s testimony in his second declaration, that “Badros discloses Patent Owner’s ‘viewability test’” (Ex. 1027 ¶11), is clearly evidence to make out a prima facie case of unpatentability. The same is true of Dr. Madansky’s testimony that she agrees with Dr. Smedley in this regard. Ex. 1026 ¶4.” slip op. at 25
Patent outcomesUS 11,443,329 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,443,329 - EMC Corporation v. Acqis LLCNo claims unpatentablePTAB · Mar 8, 2016 · IPR2014-01469 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 24 and 31–33 were not shown unpatentable because Petitioner failed to prove obviousness over either asserted reference combination, including failure to establish Bogaerts as prior art.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Interconnect (PCI) bus transaction” to mean “a data signal communication with an interconnected peripheral component.” Pet. 13. Patent Owner agrees with the construction in the Decision on Institution that the claim term “Peripheral Component Interconnect (PCI) bus transaction” means “Peripheral Component Interconnect (PCI) industry standard bus transaction.” PO Resp. 21–22. We see no reason now to deviate from the construction in the Decision on Institution. The evidence indicates that the term “Peripheral Component Interconnect (PCI) bus transaction” refers to a particular industry standard, not just any communication with an interconnected peripheral component. Industry literature and dictionaries use the proper noun “Peripheral Component Interconnect” and the abbreviation “PCI” to refer to a particular industry specification for a local bus. See, e.g., Ex. 2001, 1; Ex. 2002, 6–7; Ex. 2003, 7–8. The challenged claims recite “Peripheral Component Interconnect” as a proper noun and abbreviate it as “PCI,” indicating that the challenged claims use those terms consistent with the understood industry meaning. Ex. 1001, col. 27, ll. 24–25, col. 28, ll. 35–36; see Azure Networks, LLC v. CSR PLC, 771 F.3d 1336, 1348 (Fed. Cir. 2014). The written description similarly uses the abbreviation “PCI” to refer to a particular industry standard, and uses the common noun “peripheral bus” to refer to a generic peripheral bus. Compare Ex. 1001, col. 19, ll. 31–33 (“the present invention may interface two PCI or PCI-like buses”), with id. at col. 7, ll. 4–6 (“Additionally, the host controller is coupled to a clock control logic, a configuration signal, and a peripheral bus.”) (emphasis added). Petitioner and Petitioner’s declarant, Mr. Bruce Young, acknowledge that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. Ex. 1003 ¶ 58; Ex. 2006, 1, 3; Ex. 2031, 16:8–12. The evidence Petitioner identifies in support of its proposed construction is the claim construction order issued in ACQIS LLC v. Appro International, Inc., No. 6:09-cv-00148 (E.D. Tex. Feb. 3, 2011). Pet. 12–13 (citing Ex. 1013). In that case, though, the parties did not appear to dispute that the term “Peripheral Component Interconnect (PCI)” refers to an industry standard. See Ex. 1013, 7 (“The parties’ primary dispute is whether the term is limited to the conventional, parallel PCI Local Bus, and, therefore excludes PCI Express bus architecture and bus transaction protocol.”). Moreover, the district court subsequently reconsidered its construction and clarified that the term “PCI bus transaction” refers to a PCI industry standard bus transaction. Ex. 1030, 8–10. Therefore, we construe the claim term “Peripheral Component Interconnect (PCI) bus transaction” to mean “Peripheral Component Interconnect (PCI) industry standard bus transaction,” and we construe the claim term “PCI bus transaction” to mean “PCI industry standard bus transaction.”” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Horst outputs address and data bits of a PCI bus transaction in serial form over the TNet links. Pet. 31–34. Petitioner’s argument is not persuasive. The TNet processor interface in Horst translates a CPU transaction into a TNet transaction. Ex. 1009, 5 (“The interface to the destination CPU or I/O device provides mapping and validation hardware translating this virtual TNet address to the appropriate physical memory address.”), Figs. 5, 7; Ex. 2021 ¶ 94 (“The TNet Processor Interface generates TNet transactions from CPU front-side bus transactions.”). The TNet processor interface then encodes the TNet transaction using an 8B/9B encoder so that it can be output over the 9-bit serial TNet links. Ex. 1003 ¶¶ 48, 146; Ex. 1009, 3, Figs. 3, 4 (showing “8B/9B encoder”), Table 1; Ex. 2021 ¶ 105. Petitioner does not identify persuasive evidence indicating that either the CPU transaction or the TNet transaction is a PCI industry standard bus transaction. Pet. 31–34 (citing Ex. 1009, 3–8, Figs. 2, 3, 5, 7–9, Table 1; Ex. 1003 ¶¶ 159[24C(i)], 159[24C(iv)], 159[24C(v)], 159[31B(i)], 159[31B(iii)]); Ex. 2021 ¶ 129. Thus, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form. Petitioner points out that, after a TNet transaction is communicated over the TNet links, a TNet bus interface in the console may use information in the TNet transaction to create a PCI industry standard bus transaction if a particular I/O device is connected to a PCI bus. Pet. 31–32 (citing Ex. 1009, 7, Fig. 8). But claims 24 and 31 require more than just communicating information over serial channels that subsequently might be used in the console to create a PCI industry standard bus transaction. Claims 24 and 31, when read in light of the specification, require that the information actually communicated over the serial channels includes address and data bits of a PCI industry standard bus transaction in serial form. Ex. 1001, col. 20, ll. 60–65, col. 21, ll. 15–21, col. 27, ll. 34–38, col. 28, ll. 34–39; Ex. 2022, 15:12–16:2, 22:11–16. As discussed above, the evidence identified in the Petition does not indicate that the information output by the TNet processor interface over the TNet links includes address and data bits of a PCI industry standard bus transaction in serial form.” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“The evidence identified by Patent Owner indicates that the date “2 October 1996” on Bogaerts is when it was submitted to the CERN/LHCC committee. Ex. 2021 ¶¶ 170, 171, 173; Ex. 2026, 12. Although it is possible that Bogaerts was available in the CERN Library at or around the same time, Petitioner has not shown that by a preponderance of the evidence. For example, Petitioner does not cite persuasive evidence indicating that the “Submitted by 2 Oct 1996” entry in the CERN Document Server record means that Bogaerts was available in the CERN Library on that date. Tr. 23:1–12, 25:5–25; Pet. Reply 21–25. In addition, Petitioner acknowledges that the CERN Document Server record itself was not created until December 18, 2014. Tr. 25:5–25; Ex. 2011, 439. Therefore, Petitioner has not shown sufficiently that Bogaerts is a prior art printed publication based on its availability in the CERN Library.” slip op. at 17
- ExcludeMotion to exclude, deniedDenied
“should be excluded for lack of authentication under Fed. R. Evid. 901. PO Mot. 2–6. Federal Rule of Evidence 901 requires that the proponent produce evidence sufficient to support a finding that an item is what the proponent claims it is. Here, Patent Owner does not dispute that Exhibit 1011 is what Petitioner claims it is, namely a reference entitled “RD24 Status Report: Application of the Scalable Coherent Interface to Data Acquisition at LHC.” Id. What Patent Owner disputes is whether Petitioner has shown by a preponderance of the evidence that Bogaerts is prior art with respect to the ’814 patent. Id. Patent Owner attempts to characterize this dispute as a question of authentication, arguing that Petitioner has not produced “evidence that [Exhibit 1011] is a true and correct copy of a publication that was publicly available as of the date asserted by Petitioner.” Id. at 3. But this is a question of sufficiency of proof, not admissibility. Therefore, Patent Owner’s Motion to Exclude Exhibit 1011 is denied.” slip op. at 20
Patent outcomesUS RE42,814 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham - TRW Automotive U.S. LLC v. Magna Electronics Inc.No claims unpatentablePTAB · Jan 6, 2016 · IPR2014-01347 · APJ Michael J Fitzpatrick · IPR · Final written decision
The Board held claims 1–3, 6–12, 16, 18–31, 33–39, 76–80, and 82–85 not unpatentable because it excluded Goldbeck for lack of authentication, defeating both obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Rule 901(a) states: “To satisfy the requirement of authenticating or identifying an item of evidence, the proponent must produce evidence sufficient to support a finding that the item is what the proponent claims it is.” Fed. R. Evid. 901(a). Thus, we first look to what TRW claimed Exhibit 1005 to be.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityNot reached
“Magna challenged the sufficiency of TRW’s evidence that Exhibit 1005 constitutes a prior art printed publication. See PO Resp. 48–50; see also 35 U.S.C. § 311(b) (“A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent . . . only on the basis of prior art consisting of patents or printed publications.”). TRW responded to Magna’s sufficiency of the evidence arguments by” slip op. at 4
Patent outcomesUS 8,508,593 not shown unpatentable§ 102 anticipationPatents in suitUS 8,508,593
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.