- PTAB · Nov 3, 2025 · PGR2025-00043 · APJ Sheridan K Snedden · PGR · Institution
Instituted PGR of claims 1–44 on all asserted grounds after finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the arguments and evidence presented by the parties, we determine Petitioner has demonstrated that it is more likely than not that at least one of the claims challenged in the Petition is unpatentable. A. Real Parties-in-Interest” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would be “someone with a graduate degree in organic chemistry, medicinal chemistry, pharmaceutical chemistry, or a related field, and four to six years of experience in the synthesis, purification, analysis, design, and/or formulation of pharmaceutical compounds and derivatives.” Pet. 7 (citing Ex. 1034 ¶ 21; Ex. 1033 ¶ 25). Petitioner also asserts that a person of ordinary skill in the art “would have worked with a team of professionals with training in related disciplines, such as pharmacology, pharmacokinetics, formulation, drug discovery and/or drug development as of the date of the claimed inventions.” Id. at 7–8.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Patent Owner attempts to distinguish the scope of the claims between the related ’334 patent and ’391 patent, where the claims of the ’334 patent recite a “an endoxifen composition encapsulated in an enteric capsule.” Prelim. Resp. 11. Patent Owner contrasts this with the scope of the claims of the ’391 patent and contends that the challenged claims are directed to “the underlying composition itself, where the enteric material is an ingredient of the composition combined with the endoxifen.” Id. To support its contentions, Patent Owner attempts to apply the doctrine of claim differentiation across patents, noting that [t]he related ’334 describes a composition where the enteric requirement is not part of the composition, reciting “[a]n oral formulation comprising an endoxifen composition encapsulated in an enteric capsule.” EX2014, cl.1. In other words, the enteric aspect of the ’334 claims is not part of the composition itself. In contrast, the ’391 requires “[a] composition comprising an endoxifen and an enteric material.”” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“distinguish the preamble language reciting “[a] composition comprising an endoxifen and an enteric material” from Ahmad. Prelim. Resp. 13–16. Specifically, Patent Owner contends that Petitioner’s arguments rely on Ahmad’s alleged disclosure of endoxifen encapsulated in enteric-coated capsules. Id. at 14. For example, Patent Owner contends that “every portion of Ahmad relied upon by Petitioner describes a ‘composition containing endoxifen’ that can then be coated with a separate external ‘enteric coating.’” Id. at 15. Patent Owner further contends that these disclosures fail to disclose an enteric material that is a component (with endoxifen) of the composition itself. At most, these disclosures purport to describe (1) a pharmaceutical composition of endoxifen (2) encapsulating the finished composition in a separate external enteric coating. See EX1003, 18:27-29 (“Enteric coating of capsules filled with composition art.”). Prelim. Resp. 15. Patent Owner therefore concludes that “Petitioner identifies no teaching in Ahmad that the enteric material is a component of the endoxifen composition, as claimed.” Id. at 16. Based on our preliminary construction of the term, “[a] composition comprising an endoxifen and an enteric material” discussed above, and, having considered the arguments and evidence presented by the parties at this stage of the proceeding, summarized above, we find that Petitioner has shown it is more likely than not that Ahmad discloses each limitation of claims 1 and 32 for the reasons stated in the Petition, which we adopt for purposes of this Decision. See Pet. 19–25; Ex. 1003, 2:24–40, 3:55–61, 8:47–63, 9:1–20, 11:17–23, 12:14–17, 18:19–29, 19:27–30; Ex. 1033 ¶¶ 54– 64. Accordingly, we find Petitioner has shown that it is more likely than not that claims 1 and 32 are anticipated by Ahmad.” slip op. at 16
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 12,071,391 - PTAB · Nov 3, 2025 · IPR2025-00799 · APJ Sheridan K Snedden · IPR · Institution
The Board instituted IPR on claims 1–21, finding a reasonable likelihood that claims 1–6, 16, 18, and 21 are anticipated by Liu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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) (2018). The Supreme Court has held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). After considering the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least 1 of the challenged claims of the ’151 patent is unpatentable.” slip op. at 2
- PTAB / AIA Trials › §315(e) estoppelNot reached
“On the current record, we tend to agree with Patent Owner that the issues presented in this proceeding concern Liu’s alleged inherency and the Form I or XRPD limitations recited in the challenged claims, which are obviousness grounds asserted in PGR2023-00043. Prelim. Resp. 35. That said, the parties are invited to address the issue of whether collateral estoppel applies in this proceeding based on the Final Written Decision of PGR2023- 00043 during trial. Regardless of whether collateral estoppel applies, however, we determine for the reasons below that Petitioner shows a reasonable likelihood of prevailing in its challenge that at least 1 of the challenged claims of the ’151 patent is unpatentable.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “all terms should be given their plain and ordinary meaning.” Pet. 10. Patent Owner does not propose construction of any terms. See generally Prelim. Resp. Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“H. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSA”) would be “someone with a graduate degree in organic chemistry, material science, medicinal chemistry, pharmaceutical chemistry, or a related field, and four to six years of experience in the synthesis, purification, analysis, design, and/or formulation of pharmaceutical compounds and derivatives.” Pet. 9. Petitioner also asserts that a person of ordinary skill in the art “would have worked with a team of professionals with training in related disciplines, such as pharmacology, pharmacokinetics, formulation, drug discovery Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp. We adopt Petitioner’s definition as it is consistent with the level of ordinary skill in the art as reflected by the prior art in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent the parties dispute the level of ordinary skill and its impact on the analysis of the challenged claims, we encourage the parties to address this issue further during trial.” slip op. at 8
Claim construction§ 102 anticipationPatents in suitUS 11,261,151 - PTAB · Aug 5, 2025 · IPR2025-00249 · APJ Christopher G Paulraj · IPR · Institution
The Board instituted inter partes review of claims 1–8 on all grounds in the Petition, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. §42.4(a). We may not institute an inter partes review “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). In this decision, we address the merits of the issues raised by the parties regarding claims 1–8 of the ’227 patent. For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one challenged claim of the ’227 patent is unpatentable, we institute an inter partes review of all challenged claims based on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“II. ANALYSIS A. Discretionary Denial under 35 U.S.C. § 325(d) Patent Owner filed a request for discretionary denial under 35 U.S.C. § 325(d). Paper 9. Petitioner opposed. Paper 9. The Acting Director denied the discretionary denial request. Paper 12 (June 26, 2025). Accordingly, we proceed with our analysis of the merits of Petitioner’s patentability challenges and do not address the discretionary denial arguments presented by the parties.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) relevant to the ’227 patent “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 20–21 (citing Ex. 1003 §II.C). Patent Owner does not dispute this skill level. Prelim. Resp. 10. At this stage of the proceeding and for purposes of our analysis in this Decision, we adopt Petitioner’s definition as that definition is consistent with the level of skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes a construction for any claim terms. Pet. 19; Prelim. Resp. 10. We also do not perceive a need to construe any claim terms of the ’227 patent for purposes of determining whether to institute trial. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 295, 803 (Fed. Cir. 1999) (holding that “only those terms need to be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,318,227 - PTAB · Aug 5, 2025 · IPR2025-00248 · APJ Christopher G Paulraj · IPR · Institution
The Board instituted IPR on claims 1–12 and all petition grounds, finding a reasonable likelihood that at least one claim is unpatentable, including based on Huang2’s inherent FFT symmetry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. §42.4(a). We may not institute an inter partes review “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).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“II. ANALYSIS F. Discretionary Denial under 35 U.S.C. § 325(d) Patent Owner filed a request for discretionary denial under 35 U.S.C. § 325(d). Paper 8. Petitioner opposed. Paper 10. The Acting Director denied the discretionary denial request. Paper 13 (June 26, 2025). Accordingly, we proceed with our analysis of the merits of Petitioner’s 2 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the’223 patent claims priority to a provisional application filed before the effective date of the applicable AIA amendments (March 16, 2013), we refer to the pre-AIA versions of the statutes throughout this Decision. 3 Huang et al., The involvement of integrin β1 signaling in the migration and myofibroblastic differentiation of skin fibroblasts on anisotropic collagen-containing nanofibers, 33 Biomaterials 1791-1800 (Feb. 2012) (“Huang2”) (Ex. 1005). A different reference by Huang, identified as “Huang1” in the Petition, was considered by the Examiner during prosecution. Pet. 15–17; Ex. 1008. 4 Kumbar et al., Electrospun nanofiber scaffolds: engineering soft tissues, Biomed. Mater. 3 (2008) (“Kumbar”) (Ex. 1006). 5 Lee et al., U.S. Patent Application No. US 2010/0331980 A1, Pub. Date December 1, 2011 (“Lee”) (Ex. 1011). patentability challenges and do not address the discretionary denial arguments presented by the parties.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) relevant to the ’223 patent “would be a Ph.D. student with a minimum of two years of experience in their faculty advisor’s laboratory” and would have an understanding of “electrospinning fibers, including for tissue engineering, tissue engineering techniques, and using/performing FFT analysis.” Pet. 18–19 (citing Ex. 1003 §II.C). Patent Owner does not dispute this skill level. Prelim. Resp. 10. At this stage of the proceeding and for purposes of our analysis in this Decision, we adopt Petitioner’s definition as that definition is consistent with the level of skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Simpson’s testimony at this preliminary stage. Dr. Simpson extensively discusses the FFT methodology used in the Ayres papers (for which he is the senior author), and we find these papers provide sufficient underlying facts, data, and technical reasoning to support his opinion regarding the inherent symmetry of the FFT output image. Ex. 1003 ¶¶ 38–51. Contrary to Patent Owner’s argument, the fact that the Ayres 2008 paper uses the term “typically” does not undermine Dr. Simpson’s conclusion. Ex. 1010, 609. In context, it is clear that the refenced statement only speaks to how the data is typically reported rather than whether the result itself would only be typical. Indeed, the same sentence goes on to explain that the reason why the data is typically reported only for 0–180° is because “the frequency plot is symmetric.” Id. We are also not persuaded by Patent Owner’s argument that Ayres 2008 undermines Dr. Simpson’s testimony regarding “typical[] practice” because it presents FFT analysis results plotted to 360°. Rather than undermining his testimony, the plot shown in Figure 1F of Ayres 2008 further confirms the symmetrical nature of the FFT results for aligned fibers. Moreover, the fact that there are minor variations at the tips of the two peaks shown in Figure 1F does not undermine or contradict the conclusion that the major peaks for aligned fibers will necessarily be about 180° apart. The challenged claims do not require a perfect repetition or identity of the major peaks in the FFT output plot. Additionally, Dr. Simpson’s own reproduced FFT analysis of the SEM image in Huang2’s Figure 1B using the methodologies described in the Ayres 2006 and Ayres 2008 papers, which shows major peaks at 90° and 270°, further confirms that the claimed FFT analysis result is an inherent feature of Huang2’s anisotropic fibers. Ex. 1003 ¶¶ 110–111. We do not find that Dr. Simpson’s testing violates 37 C.F.R. § 42.65(b), insofar as Dr. Simpson’s declaration sufficiently explains: (1) “why the test or data is being used”; (2) “how the test was performed and the data was generated”; (3) “how the data is used to determine a value”; (4) “how the test is regarded in the relevant art”; and (5) “any other information necessary for the Board to evaluate the test and data.” See Ex. 1003 ¶¶ 38–51 (explaining FFT methodology used by Dr. Simpson). Although Dr. Simpson’s declaration does not appear to spell out all the details of the particular protocol or the version of the ImageJ software he used, we find his explanation that he used the methodology described in Huang2 (which references the Ayres 2006 paper) and the ’223 patent (which references the Ayres 2008 paper) sufficient for purposes of institution. Even assuming there may be some differences in the specific FFT methodology used in the two Ayres papers, we do not find anything at this stage to indicate that any such differences would matter with regard to the claim requirement that the major peaks are about 180° apart, especially given that both papers confirm the symmetrical nature of the FFT output plot. Furthermore, while Patent Owner argues that Dr. Simpson does not account for certain aspects of the FFT analysis discussed in the Ayres 2006 and Ayres 2008 papers, there is no evidence at this stage that Dr. Simpson did not follow the protocol described in his own papers, or that he failed to account for any specific aspects that could make a meaningful difference with regard to the FFT analysis result.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,137,223 - PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “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). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree with Patent Owner. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,586,659 - PTAB · May 28, 2024 · IPR2024-00086 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5-8, 10-15, 17, 18, 20, and 21 on all asserted grounds after finding a reasonable likelihood of success and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in an inter partes review). slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position” With respect to the claim term “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” Patent Owner points to passages of the Specification, arguing that all three positions are possible. Prelim. Resp. 19–21 (citing Ex. 1001, Abstr., 4:13–17, 4:33–40; Ex. 2006 ¶ 18). We do not agree with Patent’s Owner proposed construction because even if the Specification discloses that all three positions are possible, that is not what the plain language of the claim requires. Claim 1 recites “or,” which means that a user can be disposed on the top surface of the flotation device in any one of the three positions. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Patent Owner does not identify any definition or disclaimer that would modify this plain meaning. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, we agree with Petitioner and apply the plain and ordinary meaning of the phrase “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” to construe “prone, kneeling, or standing” as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party explains how or why its particular proposal impacts the issues before us in this proceeding. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’044 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 10. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,359,044 - PTAB · Mar 13, 2023 · IPR2022-01303 · APJ Bart A Gerstenblith · IPR · Institution
Instituted review of claims 2, 4–7, 9, 11–13, 45–48, 50, and 54–59 on all grounds; the Board found a reasonable likelihood that claim 54 was obvious over Gottschalk and Kramer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, which includes Petitioner’s strong showing regarding claim 54 and Patent Owner’s weaker evidence of nonobviousness, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Gottschalk and Kramer would have rendered the subject matter of claim 54 of the ’068 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Additionally, the Director recently clarified the Interim Procedure, stating that “[t]he Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (PTAB Feb. 27, 2023) (precedential). Here, we determine that, on balance, Fintiv factors 1–5 do not favor exercising our discretion to deny institution and, therefore, there is no need to determine whether the Petition establishes compelling merits. 7. Conclusion on Fintiv Factors Upon consideration of the Fintiv factors, we determine not to exercise our discretion to deny institution.” slip op. at 19
- Parallel petitionsDenied
“sufficiently address the challenged claims” of the ’068 patent. Notice 1. According to Petitioner, Gentex asserted a large number of claims in the parallel litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “B” and the Petition in IPR2022-01302 as “A.” Id. at 1–2. Petitioner also explains its reasoning for the grouping of the claims challenged in each petition and that the only overlap between the two petitions is claim 1, from which a large number of claims depend. Id. at 2–3. Patent Owner did not file a response to the Notice. Nor did Patent Owner otherwise dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims asserted in the related litigation. See PTAB Consolidated Trial Practice Guide, 59 (Nov. 2019)10 (recognizing that one circumstance in which more than one petition may be necessary is when a patent owner asserts a large number of claims in related litigation).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, or an equivalent field, and three to five years of experience working with computer implemented tracking systems. Additional education might compensate for less experience and vice-versa.” Pet. 25 (citing Ex. 1005 ¶ 48). Patent Owner states that “[f]or purposes of responding to [Petitioner’s] Petition for [inter partes review], Patent Owner accepts [Petitioner’s] proposed person of ordinary skill in the art.” Prelim. Resp. 6. Patent Owner further states, “[h]owever, for any other purpose, Patent Owner disagrees with [Petitioner] at least that such [person of ordinary skill in the art] would be limited to a maximum of five years of experience.” Id. And, Patent Owner further “reserves the right to offer an alternative definition based on expert evidence in the event the Petition is instituted.” Id. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’068 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 6,757,068 - PTAB · Mar 13, 2023 · IPR2022-01302 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 1, 14–20, 23–33, 35, and 41–44 on all petition grounds, finding a reasonable likelihood claim 1 is obvious over Gottschalk and Kramer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Memo states that it may be useful to compare a trial date with evidence of a median time to trial. Director’s Memo 8. The purpose of doing so is to ascertain the likelihood of the scheduled trial date actually occurring on or around that date. Id. at 8 (“Stakeholders correctly noted that scheduled trial dates are unreliable and often change[,]” and a “scheduled trial date . . . is not by itself a good indicator of [when] the district court trial will occur.”). The Director’s Memo does not state that median time-to-trial statistics are themselves a trial date, or otherwise replace consideration of a trial date under Fintiv factor 2. And, in the circumstances here, where the case was transferred from the Western District of Texas, the usefulness of the median time to trial statistics is less clear. Ultimately, though, we will not speculate on when a trial may be scheduled. Accordingly, factor 2 favors not exercising our discretion to deny institution.” slip op. at 18
- Parallel petitionsDecided for petitioner
“sufficiently address all the challenged claims” of the ’068 patent. Notice 1. According to Petitioner, Gentex asserted a large number of claims in the parallel litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “A” and the Petition in IPR2022-01303 as “B.” Id. at 1–2. Petitioner also explains its reasoning for the grouping of the claims challenged in each petition and that the only overlap between the two petitions is claim 1, from which a large number of claims depend. Id. at 3–4. Patent Owner did not file a response to the Notice. Nor did Patent Owner otherwise dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims asserted in the related litigation. See PTAB Consolidated Trial Practice Guide, 59 (Nov. 2019)10 (recognizing that one circumstance in which more than one petition may be necessary is when a patent owner asserts a large number of claims in related litigation).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In this case, claim 1 recites mounting “a sourceless orientation tracker on a user’s head.” Ex. 1001, 15:5–6. There is no further reference to “sourceless orientation tracker” in claim 1. Id. Claim 11 recites “[t]he method of claim 1 in which the sourceless orientation tracker comprises an inertial sensor”; claim 12 recites “[t]he method of claim 1 in which the sourceless orientation tracker comprises a tilt-sensor”; and claim 13 recites “[t]he method of claim 1 in which the sourceless orientation tracker comprises a magnetic compass sensor.” Id. at 15:35–40. The parties have not identified and we do not discern anything in the language of the claims that suggests we should deviate from the plain and ordinary meaning of “sourceless orientation tracker.” We now turn to the Specification of the ’068 patent. The Specification states that “[v]irtual reality (VR) systems require tracking of the orientation and position of a user’s head and hands with respect to a world coordinate frame.” Ex. 1001, 1:11–13. The Specification also describes “a variety of mechanical, acoustic, magnetic, and optical systems” used for such tracking and states that “[t]hese systems require propagation of a signal between a fixed ‘source’ and the tracked ‘sensor,’” which “limit[s] the range of operation.” Id. at 1:15–20. The Specification describes that “‘[s]ourceless’ orientation trackers have been developed based on geomagnetic and/or inertial sensors.” Id. at 1:26–27. And, the Specification explains that “the invention features a sourceless orientation tracker including an inertial sensor, a tilt-sensor, or a magnetic compass sensor.” Id. at 2:6–8.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 6,757,068 - PTAB · Mar 13, 2023 · IPR2022-01298 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1, 2–12, 16–18, and 38 on all petitioned grounds, finding a reasonable likelihood that claim 1 would be obvious over Gottschalk and Kramer.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Memo states that it may be useful to compare a trial date with evidence of a median time to trial. Director’s Memo 8. The purpose of doing so is to ascertain the likelihood of the scheduled trial date actually occurring on or around that date. Id. at 8 (“Stakeholders correctly noted that scheduled trial dates are unreliable and often change[,]” and a “scheduled trial date . . . is not by itself a good indicator of [when] the district court trial will occur.”). The Director’s Memo does not state that median time-to-trial statistics are themselves a trial date, or otherwise replace consideration of a trial date under Fintiv factor 2. And, in the circumstances here, where the case was transferred from the Western District of Texas, the usefulness of the median time to trial statistics is less clear. Ultimately, though, we will not speculate on when a trial may be scheduled. Accordingly, factor 2 favors not exercising our discretion to deny institution.” slip op. at 11
- Parallel petitionsDenied
“sufficiently address all the challenged claims” of the ’648 patent. Not. 1. According to Petitioner, “Patent Owner, via an exclusive licensee,” asserted a large number of claims in co-pending litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “A” and the Petition in IPR2022-01301 as “B.” Id. at 1–2.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, which includes Petitioner’s strong showing regarding claim 1 and Patent Owner’s weaker evidence of nonobviousness, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Gottschalk and Kramer would have rendered the subject matter of claim 1 of the ’648 patent obvious to one of ordinary skill in the art at the time of the invention. 6. Summary of Claim 1 For all the foregoing reasons, we determine that Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over the combined teachings of Gottschalk and Kramer.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in computer science, or an equivalent field, and three to five years of experience working with computer implemented tracking systems, virtual reality systems, and/or augmented reality systems” but that “[a]dditional education might compensate for less experience and vice-versa.” Pet. 24–25 (citing Ex. 1005 ¶¶ 48–49). For purposes of this proceeding, Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 6. Patent Owner further states, “[h]owever, for any other purpose, Patent Owner disagrees with Petitioner at least that such [person of ordinary skill in the art] would be limited to a maximum of five years of experience.” Id. at 6. And, Patent Owner further “reserves the right to offer an alternative definition based on expert evidence in the event the Petition is instituted.” Id. For the purposes of this Decision, we apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’648 patent and the prior art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,301,648 - PTAB · Feb 8, 2023 · IPR2022-01328 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 10–18, 31, and 32 under § 103 over Hardin ’665 and Salmre, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable 1 Petitioner’s Preliminary Reply is limited to the issue of discretionary denial pursuant to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), and, particularly, the effect of Samsung’s stipulation in related litigation, in accordance with Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Accordingly, for the reasons set forth in IPR2022-01327, Paper 13, we: (1) determine, based on the present record, that the Challenged Claims of the ’387 patent are not entitled to the priority date of the ’094 application, and, therefore, Hardin ’665 is available as prior art to the ’387 patent; (2) determine that, on balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Hardin ’665 and Salmre would have rendered the subject matter of claims 10–18, 31, and 32 of the ’387 patent obvious to one of ordinary skill in the art at the time of the invention; (3) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Fintiv; and (4) decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 10,049,387
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.