- Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.Some claims unpatentablePTAB · Jan 22, 2026 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1, 2, 6, and 8–14 are unpatentable as obvious over Ma; claims 3 and 4 were not shown unpatentable over Werner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s contention. See generally Resp. Neither party indicates that the result would change depending on the definition selected. We adopt Petitioner’s uncontested proposed definition, because it is consistent with the disclosures of the asserted prior art references. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention and within the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to resolve the disputes at hand. Pet. 15; see generally Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision. In our analysis of the challenges, however, we discuss the meaning of the terms “metal complex” and “central metal atom,” which appear in claim 1 (Ex. 1001, 19:19–20) to the extent necessary to resolve Patent Owner’s contention that Petitioner fails to establish that Ma invalidates claim 1. See Resp. 53, 56–58.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Whether Ma qualifies as a “printed publication” involves an inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 10– 11 (PTAB Dec. 20, 2019) (precedential).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Based on the information presented, we find Petitioner has the better position. Patent Owner admits that joint vaporization means “two materials vaporize together.” Reply 21 (quoting Resp. 54). As Petitioner argues, “This is what Ma discloses.” Id. We agree with Petitioner that Ma describes a “two-component” electron transport layer having a “thickness with one value.” Id.; see Ex. 1007, 811 (reporting a “co-deposited” application of “BPhen:LiQ” that is “50 nm thick”). Ma’s disclosure, thereby, strongly “indicates that the two components were vaporized together––as opposed to creating a ‘macroscopically homogenous form’” prepared by sequentially vaporizing the individual components as Patent Owner “hypothesizes.” Reply 21 (citing Ex. 1020 ¶¶ 42–44; Ex. 2041 ¶¶ 155–157); see Resp. 54– 55; see also Ex. 1007, 811 (Ma’s description of its device fabrication, appearing in the third paragraph of the experiments section). Petitioner further advances evidence that “[p]reparing a layer that is ‘macroscopically homogeneous’ but potentially microscopically heterogeneous,” as Patent Owner postulates, “would introduce excessive variability and render the data noncomparable and unreliable, thus undermining the experiment’s purpose.” Reply 21 (citing Ex. 1020 ¶ 44); see Resp. 54–55. Patent Owner presents no counterargument or evidence that is persuasive to undercut Petitioner’s reasoning or evidence on that point. See Sur-reply 19–22. Petitioner also argues that an ordinarily skilled artisan would have recognized “that vaporizing materials together would best achieve Ma’s objective of assessing the current density using different Liq doping percentages.” Reply 22 (citing Ex. 1007, 811; Ex. 1020 ¶ 51). Here again, Petitioner’s evidence on point stands uncontested. See Sur-reply 19–22 (declining to contest that point). On this record, therefore, we agree with Petitioner that, as to the relevant disclosure in Ma, “the most natural interpretation of ‘co-deposition’ for forming a layer, particularly when there is nothing to indicate that the materials” are “vaporized sequentially,” is that the materials are co-deposited by joint vaporization. Reply 22 (citing Ex. 1020 ¶ 46–51). We further agree that, “[u]nder a preponderance standard, Ma’s disclosures are sufficient to render joint vaporization at least obvious.” Id. For the above reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Ma discloses joint vaporization as required by the challenged claims.” slip op. at 15
Patent outcomesUS 8,558,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,558,223 - PTAB · Nov 6, 2025 · PGR2025-00040 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–9, 11–33, and 35–38 on all petition grounds, finding it more likely than not that Hassfjell-Hoff anticipates at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’437 patent is eligible for post-grant review and that it is more likely than not that at least one challenged claim of the ’437 patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of all challenged claims of the ’437 patent.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“Here, Patentee Sciencons AS filed a statutory disclaimer of claims 10 and 34 of the ’437 patent. Ex. 2001; Prelim. Resp. 43. Based on our review of Exhibit 2001 and the Office’s public records, we find that the disclaimer of claims 10 and 34 complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Accordingly, we treat claims 10 and 34 as having never been part of the ’437 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because post-grant review cannot be instituted based on disclaimed claims, claims 10 and 34 are outside the scope of this proceeding. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 1–9, 11–33, and 35– 38, the remaining challenged claims that have not been disclaimed.” slip op. at 6
- PTAB / AIA Trials › Real party in interest / privityGranted
“Sciencons AS also states that ARTBIO, Inc. is responsible for defending the ’437 patent in this proceeding and requests that ARTBIO, Inc. be included in the caption for this proceeding.2 Paper 4, 1. ARTBIO, Inc. has signed powers of attorney appointing the same practitioners that were appointed by Sciencons AS to transact all business associated with the instant post-grant review review of the ’437 patent. See Paper 3. To date, no objection has been raised to Patent Owner’s request. Given Sciencons AS’s representation that ARTBIO, Inc. is currently the exclusive licensee of the ’437 patent and is responsible for defending the ’437 patent, we grant Sciencons AS’s unopposed request that ARTBIO, Inc. be included in the caption. For convenience we refer to Sciencons AS and the purported exclusive licensee ARTBIO, Inc. collectively as “Patent Owner.” As stated supra, to the extent any party disputes ARTBIO, Inc.’s right to participate in this proceeding or to be included in the caption, the party shall request authorization to brief the issue within 10 business days of this Decision.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“nuclear chemistry, radiochemistry, or materials science, or a comparable field of study, plus approximately two to three years of professional experience with radioisotope generators, radiopharmaceutical chemistry, nuclear medicine, or other relevant industry experience” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 2–3 (citing Ex. 1002 ¶ 33; Ex. 1019 ¶ 27). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed definition nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposed definition of a POSITA.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 12,249,437 - Advancell Pty Ltd.InstitutedPTAB · Oct 14, 2025 · PGR2025-00029 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–6 and 8–20 on all asserted grounds, 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
“After reviewing the parties’ briefs and supporting evidence, we determine that Petitioner has sufficiently shown that Hassfjell-Hoff discloses each element of claim 1. As such, Petitioner’s argument and evidence as set forth above and further discussed below, sufficiently shows that it is more likely than not that claim 1 is anticipated by Hassfjell-Hoff, notwithstanding Patent Owner’s arguments, also addressed below.” slip op. at 16
- Adverse judgmentAdverse judgmentOther
“Here, Patentee Sciencons AS filed a statutory disclaimer of claim 7 of the ’603 patent. Ex. 2001. Based on our review of Exhibit 2001 and U.S. Patent and Trademark Office public records, we find that the disclaimer of claim 7 complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Accordingly, we treat claim 7 as having never been part of the ’603 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because post-grant review cannot be instituted based on disclaimed claims, claim 7 is outside the scope of this proceeding. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 1–6 and 8– 20, the remaining challenged claims that have not been disclaimed.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityGranted
“Sciencons AS also states that ARTBIO, Inc. is responsible for defending the ’603 patent in this proceeding and requests that ARTBIO, Inc. be included in the caption for this proceeding.2 Paper 4, 1; Paper 7, 1. ARTBIO, Inc. has signed powers of attorney appointing the same practitioners that were appointed by Sciencons AS to transact all business associated with the instant post-grant review proceeding of the ’603 patent. See Papers 3, 4, 7, 8. To date, no objection has been raised to Patent Owner’s request. Given Sciencons AS’s representation that ARTBIO, Inc. is currently the exclusive licensee of the ’603 patent and is responsible for defending the ’603 patent, we grant Sciencons AS’s unopposed request that ARTBIO, Inc. be included in the caption. For convenience we refer to Sciencons AS and the purported exclusive licensee ARTBIO, Inc. collectively as “Patent Owner.” As stated supra, to the extent any party disputes ARTBIO, Inc.’s right to participate in this proceeding or to be included in the caption, the party shall request authorization to brief the issue within 10 business days of this Decision.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in chemistry, chemical engineering, physics, nuclear chemistry, radiochemistry, or materials science, or a comparable field of study, plus approximately two to three years of professional experience with radioisotope generators, or other relevant industry experience” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 2–3 (citing Ex. 1002 ¶ 33; Ex. 1017 ¶ 27). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed definition nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposed definition.” slip op. at 10
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 12,125,603 - Padagis US LLC v. Neurelis, Inc.InstitutedPTAB · Sep 16, 2025 · IPR2025-00465 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–18 because Petitioner showed a reasonable likelihood of proving claim 1 obvious over Gwozdz and Meezan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the relevant art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) secondary considerations (i.e., objective indicia) of nonobviousness when presented.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). To show unpatentability based on a combination of teachings, “[a]n obviousness determination [also] requires finding both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” CRFD” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A POSA] would have been a pharmaceutical scientist, chemist, or biologist involved in the research and development of pharmaceutical formulations and/or delivery, and would have at least a Bachelor’s degree with at least 5 years of experience, or a Master’s, Ph.D. or Pharm.D. degree with several years of experience. In addition, a POSA would have had knowledge of benzodiazepine structure and function, and would further have knowledge and practical experience working with intranasal and transmembrane formulations, including knowledge of the physiology and anatomy of the nasal cavity, with relevant experience in developing intranasal formulations. Pet. 23–24; Ex. 1062 ¶ 20. Patent Owner “does not dispute” Petitioner’s POSA definition at this stage. Prelim. Resp. 18. We apply Petitioner’s proposed POSA definition for this Decision, which definition appears to be generally consistent with the cited prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard used in a civil action before the courts under 35 U.S.C. § 282(b), including construing claim language in accordance with its ordinary and customary meaning as understood by the POSA, in view of the patent’s specification and considering the patent’s prosecution history. 37 C.F.R. § 42.100(b). We need only expressly construe terms to the extent needed to resolve the controversy before us. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention.” AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014). “[T]he test for sufficiency [of the written description requirement] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date sought.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (explaining that “the description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed”) (internal quotation marks omitted); see also id. at 1352 (“[A] description that merely renders the invention obvious does not satisfy the requirement.”).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,241,414 - Padagis US LLC v. Neurelis, Inc.InstitutedPTAB · Sep 16, 2025 · IPR2025-00466 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–27 because Petitioner showed a reasonable likelihood of prevailing on at least one claim, including claim 1 over Gwozdz and Meezan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. For reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’786 patent’s challenged claims.1 We institute inter partes review on all challenged claims. SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We find that Petitioner has made a threshold showing that the ’558 Provisional does not provide written description support for claim 1’s pharmaceutical solution consisting of each of the recited elements, including n-dodecyl beta-D-maltoside. It is true that “n-Dodecyl β-D-maltoside” can be found listed in the SIGMA Catalog. Ex. 1026, 316. But Dr. Donovan’s testimony helps put that listing in context. It is merely one among well over 100 ionic and non-ionic detergents listed in the cited six pages of the SIGMA Catalog. See 1026, 316–321; Ex. 1062 ¶ 50. When further considered in the context of paragraphs 150–152 of the ’558 Provisional, which generically suggest that “enhancer” compounds can be used in “some embodiments”—then introducing at least 15 classes of potential enhancers16 including “preferred” lysophospholipids and acyl carnitines—the listing of n-dodecyl beta-D-maltoside among at least 150 biological detergents in the SIGMA Catalog is even more remote. Moreover, although satisfaction of the written description requirement is not limited to what is exemplified in a priority application, none of the ’558 Provisional’s examples use any “enhancer,” much less any detergent, any alkyl glycoside, or n-dodecyl beta-D maltoside in particular. The 16 The ’558 Provisional suggests that whether “a given compound” will function as an “enhancer” in a formulation requires testing. Ex. 1008 ¶ 150 (indicating “an in vivo or good model test” may “determin[e] whether the uptake of the drug is enhanced to a clinically significant degree”). ethanol. See Ex. 1008 ¶¶ 172–174 (Examples 1 and 2). In short, we find no sufficient disclosure of “blaze marks” in the ’558 Provisional that point to the inventors’ possession of a pharmaceutical solution that includes n-dodecyl beta-D-maltoside as claimed. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326–27 (Fed. Cir. 2000) (analogizing an application’s generic disclosures to a forest of unmarked trees and explaining that, “to satisfy the written description requirement,” there must be “blaze marks directing the skilled artisan to that tree [within the forest that represents the claimed invention]” in the application).” slip op. at 28
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“and applying collateral estoppel to vacate a claim construction in an underlying IPR). In an IPR, “a party seeking to invoke collateral estoppel must show: ‘(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.’” Google LLC v. Hammond Development Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022) (quoting In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994)) (alteration in original).14 “It is [also] well established that patent claims need not be identical for collateral estoppel to apply.” Id. at 1381. Instead, “collateral estoppel requires the issues of patentability be identical.” Id. If “the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies.” Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342–43 (Fed. Cir. 2013) (affirming application of collateral estoppel where claims adjudicated as obvious required a “polymeric” gel whereas similar, unadjudicated claims required a “block copolymer” gel). “Collateral estoppel also applies to common issues in actions involving different but related patents.” Mycogen Plant Sci., Inc. v. Monsanto Co., 252 F.3d 1306, 1310 (Fed. Cir. 2001), vacated on other grounds, 353 U.S. 1109 (2002).” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artReference not prior artMixed
“We agree that at least one portion of Gwozdz is not prior art. To establish that the cited disclosures in Gwozdz are prior art, Petitioner must show support for those disclosures in the Gwozdz Provisional. In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025) (explaining that “the portion of the application relied on . . . as prior art must be supported by the provisional application”). Petitioner did not establish that Gwozdz’s disclosure of “penetration enhancers” finds support in the Gwozdz Provisional. Pet. 22. Conversely, Patent Owner shows that the phrase is absent in the Gwozdz Provisional. Prelim. Resp. 37.20 Based on this record, we determine that Gwozdz’s mention of “penetration enhancers” is not prior art to the 19 Patent Owner argues this “penetration enhancers” disclosure in Gwozdz is not prior art regardless which of the disputed priority dates (March 28, 2008, or March 27, 2009) one accords to the challenged claims. Prelim. Resp. 33. 20 We also agree that collateral estoppel does not bar Patent Owner from challenging Gwozdz’s prior-art status in this case. Patent Owner’s apparent concession that Gwozdz was prior art during the 451 IPR does not equate to the issue being actually litigated. Prelim. Resp. 34–35; Ex. 1040, 14 (“Patent Owner does not contest that Gwozdz is entitled to this filing date” of the Gwozdz Provisional). Purdue, 767 F. App’x at 922 (determining “[t]he priority date for the Joshi reference . . . cannot be determined based on collateral estoppel” where patentee could have argued, but did not in fact argue, Joshi’s prior-art status in an earlier matter).” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,793,786 - Padagis US LLC v. Neurelis, Inc.InstitutedPTAB · Sep 16, 2025 · IPR2025-00464 · APJ Annette R Reimers · IPR · Institution
The Board instituted IPR on claims 1–22, finding a reasonable likelihood that claim 1 would have been obvious over Gwozdz and Meezan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion For the reasons discussed above and based on the present record, we find that Petitioner has made an adequate threshold showing that the issues presented in this Petition are substantially the same as the issues the Board previously considered in IPR2019-00451 and that Gwozdz’s effective date is March 28, 2008. We therefore determine that Petitioner has shown that it is reasonably likely to prevail in establishing that at least claim 1 would have been obvious over Gwozdz and Meezan. IV. CONCLUSION Petitioner has shown a reasonable likelihood that it will prevail in establishing the unpatentability of at least one of the claims challenged in the Petition. We institute trial on all challenged claims under the grounds raised in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A POSA] would have been a pharmaceutical scientist, chemist, or biologist involved in the research and development of pharmaceutical formulations and/or delivery, and would have at least a Bachelor’s degree with at least 5 years of experience, or a Master’s, Ph.D. or Pharm.D. degree with several years of experience. In addition, a POSA would have had knowledge of benzodiazepine structure and function, and would further have knowledge and practical experience working with intranasal and transmembrane formulations, including knowledge of the physiology and anatomy of the nasal cavity, with relevant experience in developing intranasal formulations. Pet. 23; Ex. 1062 ¶ 20. Patent Owner “does not dispute” Petitioner’s POSA definition at this stage. Prelim. Resp. 16. We apply Petitioner’s proposed POSA definition for this Decision, which definition appears to be generally consistent with the cited prior art.” slip op. at 6
- PTAB / AIA Trials › §315(e) estoppelMixed
“As the Board’s decision in the 451 IPR explicitly found written description inadequate for the “alkyl glycoside” limitation in the ’558 Provisional, which is the same issue raised here for the ’546 patent, Petitioner has shown that issue was actually litigated and decided in the 451 IPR. Where the same issue is actually litigated and decided as part of a final adjudication in an earlier action, the test for invoking collateral estoppel in a later action is met. On this record and for the reasons above, we are persuaded that collateral estoppel bars Patent Owner from arguing the challenged claims are entitled to the priority date of the ’558 Provisional.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedMixed
“We agree that at least one portion of Gwozdz is not prior art. To establish that the cited disclosures in Gwozdz are prior art, Petitioner must show support for those disclosures in the Gwozdz Provisional. In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025) (explaining that “the portion of the application relied on . . . as prior art must be supported by the provisional application”). Petitioner did not establish that Gwozdz’s disclosure of “penetration enhancers” finds support in the Gwozdz Provisional. Pet. 22. Conversely, Patent Owner shows that the phrase is absent in the Gwozdz 9 Patent Owner argues that as the ’546 Patent claims priority to the ’439 Application, the “penetration enhancers” disclosure in Gwozdz is not prior art because Gwozdz and the ’439 Application were filed on the same day (March 27, 2009). Prelim. Resp. 21–22. 10 Patent Owner argues that the passage in Gwozdz concerning “penetration enhancers” is relevant solely to “a pharmaceutical composition for injection,” not for intranasal administration as required by the ’546 Patent. Prelim. Resp. 22. First, as noted above, based on the record presented, we determine that Gwozdz’s mention of “penetration enhancers” is not prior art to the challenged claims. Second, we disagree, however, that Gwozdz’s non-prior art mention of penetration enhancers is relevant solely to a pharmaceutical composition for injection as argued by Patent Owner. Gwozdz discloses that “[the] pharmaceutical compositions of the present invention” can be administered by a number of “nonlimiting” routes including intranasal administration. See Ex. 1009, 9:2–11. Provisional. Prelim. Resp. 20–21. Based on this record, we determine that Gwozdz’s mention of “penetration enhancers” is not prior art to the challenged claims. The phrase cannot, therefore, be used to establish a motivation to combine the asserted references.” slip op. at 18
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,895,546 - Lam Research Corp. v. Inpria Corp.All claims unpatentablePTAB · Apr 18, 2025 · IPR2024-00033 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1–12 are unpatentable as anticipated by the ’888 Publication; Patent Owner’s motion to add substitute claims 13–23 is granted.
RulingsFinal written decision- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“priority issue are based on the cited disclosures of the ’867 application discussed above. Ex. 2009 ¶ 29. For the reasons discussed above, we do not view the cited disclosures as sufficiently supporting Dr. Banerjee’s conclusion that the ’867 application provides support for claim 1’s average thickness range (id.) and, therefore, give this testimony little weight. Stated somewhat differently, Dr. Banerjee’s advances an opinion (really a legal one) that is not supported by the facts and not in line with the caselaw discussed in this section (such as RAI).” slip op. at 26
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“priority issue are based on the cited disclosures of the ’867 application discussed above. Ex. 2009 ¶ 29. For the reasons discussed above, we do not view the cited disclosures as sufficiently supporting Dr. Banerjee’s conclusion that the ’867 application provides support for claim 1’s average thickness range (id.) and, therefore, give this testimony little weight. Stated somewhat differently, Dr. Banerjee’s advances an opinion (really a legal one) that is not supported by the facts and not in line with the caselaw discussed in this section (such as RAI).” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“d) Conclusion For the reasons discussed above, Petitioner has demonstrated by a” slip op. at 30
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“For these reasons, Patent Owner has met its burden to show by a” slip op. at 34
Patent outcomesUS 9,823,564 unpatentable§ 102 anticipationcites Phillips · KSR · Graham · NautilusPatents in suitUS 9,823,564 - PTAB · Mar 27, 2025 · IPR2024-01451 · APJ Erica A Franklin · IPR · Institution
The Board instituted review of claims 1–19 on all petition grounds, finding a reasonable likelihood that claim 1 would have been obvious over Larson alone.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“of whether we exercise our discretion to deny institution under 35 U.S.C. § 314(a). Rather, when considering the Fintiv factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, factors one and six are neutral, factors two and three weigh against discretionary denial, and factors four and five favor denial. We assign less weight to the existence of an overlap in asserted claims and prior art, in view of there being no trial date scheduled in the District Court case and no persuasive evidence that the court’s trial date would be expected to be significantly before the due date of our Final Written Decision. Therefore, after weighing all of the factors, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we decline to exercise our discretion to deny institution under § 314(a).” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage in the proceeding, Patent Owner does not dispute Petitioner’s description of the person of ordinary skill in the art. Prelim. Resp. 27. In view of this, and because Petitioner’s uncontested description of one of ordinary skill in the art is reasonable and consistent with the ’921 patent and the cited art, we adopt Petitioner’s definition for purposes of this Decision. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. Therefore, we do not apply this aspect of Petitioner’s formulation.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that there is no need to expressly construe any claim term to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 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))). To the extent that any discussion regarding the scope of a claim term is relevant to our decision, we address that issue in our analysis of the asserted grounds of unpatentability.” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Owner that Petitioner has not demonstrated sufficiently in the Petition, for purposes of institution, that all of the portions of Saxonov relied upon in the Petition are prior art. In particular, we determine that Petitioner has not established that the disputed portions of Saxonov are entitled to claim the benefit of the ’013 provisional filing date because Petitioner has failed to satisfy the second condition for this benefit, i.e., by showing that the provisional application provides sufficient support for certain subject matter in Saxonov relied upon for prior art purposes in the Petition.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,827,921 - Omega Liner Company, Inc. v. Buergofol GmbHAll claims unpatentablePTAB · Mar 14, 2025 · IPR2023-01372 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1, 3–7, and 10–13 are unpatentable as obvious over Hummel and Schuhmann or Hummel and Nagai; anticipation by Hummel alone was not shown.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, in the Petition, proposes that a person of ordinary skill in the art “would have at least a bachelor’s degree in Polymer Science and Engineering, Material Science and Engineering, or a related engineering field, combined with at least three years of experience in the formulation, manufacturing, and end-use performance of polymeric film and sheet products.” Pet. 3 (citing Ex. 1003 ¶ 23). Petitioner further states that “[a]lternatively, one skilled in the art could be a person with at least seven years of experience in the formulation, manufacturing, and end-use performance of polymeric film and sheet products, without possessing a bachelor’s degree in a related scientific or engineering discipline.” Id. In the Response, Patent Owner states that it “adopts Petitioner’s description of” the hypothetical person of ordinary skill in the art. Resp. 11 (citing Ex. 2001 ¶ 11). We apply Petitioner’s unopposed definition because it is consistent with disclosures in the ’882 patent, the asserted prior art, and the declaration testimony of Dr. MacLean. See Ex. 1001, code (57) (Abstract), 1:10–2:49 (background of the claimed invention); Ex. 1005, code (57) (Abstract), 1 (description of field and background of Hummel’s” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“The Board regularly denies as moot motions to exclude evidence that is not relied upon in a final written decision. See, e.g., Foursquare Labs, Inc., v. BoardActive Corp., IPR2023-00919, Paper 29 at 84 (PTAB Nov. 27, 2024); Neurocrine Biosciences, Inc., v. Spruce Biosciences, Inc., PGR2021- 00088, Paper 64 at 12, 20, 21, 23 (PTAB Nov. 26, 2024). Patent Owner does not persuade us that a deviation from this general practice is warranted in this case––the reason given by Patent Owner, involving concerns stemming from appellate review, would apply to all cases. We do not rely on Exhibit 1047–1049, 1051, 1060, 1061, 1070, or 1071 in this decision, therefore, we deny Patent Owner’s Motion to Exclude as moot. B. Petitioner’s Motion to Exclude Exhibit 2001 (Paper 52) Petitioner moves to exclude paragraphs 13–25, 29–40, 42–43, 48–49, 56–61, and 66–75 of Exhibit 2001, which is the declaration of Dr. Brant. Paper 52. In Petitioner’s view, Dr. Brant’s “declaration is replete with inadmissible hearsay, improper legal conclusions, and testimony unsupported by reliable methods or personal knowledge.” Id. at 1. made available for cross-examination pursuant to routine discovery in our forum. Petitioner’s objections otherwise go primarily to the weight that should be accorded to Dr. Brant’s testimony, without raising any persuasive arguments for its exclusion. See generally id. (Petitioner’s arguments). Accordingly, we deny Petitioner’s Motion to Exclude Exhibit 2001. C. Petitioner’s Motion to Exclude Exhibit 2003 (Paper 53) Petitioner moves to exclude certain paragraphs of Exhibit 2003, which is the declaration of Dr. Schleicher, a named co-inventor of the ’882 patent. Paper 53. We do not rely on Dr. Schleicher’s declaration in this decision. Accordingly, we deny Petitioner’s Motion to Exclude Exhibit 2003 as moot. D. Petitioner’s Motion to Exclude Exhibit 2004 (Paper 54) Petitioner moves to exclude paragraphs 6–59 of Exhibit 2004, which is the declaration of Dr. Boutrid, another named co-inventor of the ’882 patent. Paper 54. In Petitioner’s view, Dr. Boutrid’s declaration “is riddled with inadmissible evidence, including hearsay, double hearsay, and testimony lacking personal knowledge. Much of the declaration relies on out-of-court statements from unidentified customers and unidentified UV-curable resin manufacturers, none of whom are identified or made available for examination.” Id. at 1. Much of the testimony about which Petitioner’s objects pertains to customer complaints about Patent Owner’s products, and whether maleic anhydride was included in the curable resin used by the customers, which form no part of this decision. See, e.g., id. at 4–7. We can take account of Petitioner’s objections, including Petitioner’s view that parts of Dr. Boutrid’s testimony are based on impermissible hearsay and unsound the record for appeal. Accordingly, we deny Petitioner’s Motion to Exclude Exhibit 2004.” slip op. at 51
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner relies on a list of optional additives set forth in Hummel––a list that Hummel provides without any guidance as to why any particular additive would have been selected to serve any purpose, specifically in relation to the relevant layer (e). See Ex. 1005, 11:18–26 (relevant disclosure in Hummel). In other words, Hummel’s disclosure does not teach, with anticipatory specificity, a multilayer film in which a migrating compound is selected specifically for addition to layer (e). Although the lack of a specific example is not necessarily fatal to this anticipation ground, we cannot properly find that Hummel anticipates claim 1 absent some disclosure that “clearly and unequivocally” teaches the claimed subject matter “or direct[s] those skilled in the art to the” claimed” slip op. at 29
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“These are attorney arguments, unsupported by evidence, except for a single citation to Schuhmann’s “sticky” products. Id. (citing Ex. 1007, 17). Because that sole citation to evidence is inadequate to support Patent Owner’s arguments about the understanding of an ordinarily skilled artisan, we agree with Petitioner that these conclusory arguments are “baselessly” advanced by Patent Owner. Reply 3. the particular problem with which the inventor is involved.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Schuhmann’s release films are “reasonably pertinent” to a problem addressed in the ’882 patent, namely, providing a “release effect against adhesive substances such as resins.” Ex. 1001, 2:56– 57. So too is Hummel, which relates to removal of an inner tubular layer, “after the resin has cured,” without “tearing or seizing” during the process of removal. Ex. 1005, 7, 23. On this record, an ordinarily skilled artisan would have been aware of both references and would have taken account of their combined disclosures.” slip op. at 37
Patent outcomesUS 9,657,882 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,657,882 - PTAB · Jan 23, 2025 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted review of claims 1–4, 6, and 8–14 on all asserted grounds; Petitioner showed a reasonable likelihood that claim 1 is obvious over Ma.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We apply a two-part framework when assessing whether to exercise our discretion to deny a petition under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Second, if either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting forth twopart framework that guides the Board’s decision whether to exercise its discretion to deny review under Section 325(d)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), the Board declined to exercise its discretion to deny review under Fintiv where the patent owner stipulated “if IPR is instituted, they will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.” Sotera Wireless, Paper 12 at 18. Importantly, moreover, on June 21, 2022, the Director of the United States Patent and Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).6 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s argument. See generally Prelim. Resp. Neither party indicates that the result on institution would change depending on the definition selected. Accordingly, for the sole purpose of deciding whether to institute review, we adopt Petitioner’s uncontested proposed definition, because, on this record, it is consistent with the disclosures of the asserted prior art. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid 7 Following the parties’ convention, when citing Exhibit 1007, we refer to original page numbers, not page numbers added by Petitioner. Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to our decision whether to institute review. Pet. 15; see generally Prelim. Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,558,223
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.