- PTAB · Feb 10, 2026 · IPR2025-00717 · APJ Zhenyu Yang · IPR · Remand
On remand, the Board instituted IPR of claims 1–4 and 6–26 on all six asserted obviousness grounds, finding a reasonable likelihood of prevailing.
RulingsRemand decision- Director reviewDirector review, grantedOther
“The Director granted Director Review, finding that the panel “abused its discretion in granting institution of two petitions that each challenge the same claims” of the ’218 patent. Paper 39, 2. The Director vacated the DI and remanded the case “to the Board panel to determine which of the two petitions” to institute. Id. at 4.” slip op. at 4
- Parallel petitionsDecided for petitioner
“On November 4, 2025, we instituted inter partes review of all challenged claims based on all the grounds raised in the Petition. Paper 35 (“DI”). In the DI, we noted that “Petitioner filed an explanation regarding the necessity of multiple petitions,” and “Patent Owner d[id] not challenge that multiple petitions are necessary” in the Preliminary Response. Paper 23, 3 n.3.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Therefore, we institute inter partes review of all challenged claims based on all the grounds raised in this Petition.3” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’218 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,926,218 - PTAB · Feb 9, 2026 · IPR2025-00933 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted inter partes review of claims 1–12 on all three §103 grounds, finding a reasonable likelihood that Samsung would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we institute an inter partes review as to claims 1–12 of the ’595 patent.3” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner contends that [A] person of ordinary skill in the art (“POSITA”) would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least 3 years of experience in the research, design or development of wireless communication devices, systems, and/or networks, or the equivalent. Pet. 3 (citing Ex. 1003 ¶ 26). Petitioner further contends that “[i]ncreased educational experience can make up for less work experience, and vice versa.” Id. Patent Owner objects to Petitioner’s proposed level of ordinary skill in the art only “[t]o the extent that Petitioner requires [] the required experience and/or education level to be acquired by December 24, 2015.” Prelim. Resp. 8. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this institution decision, with the exception of the openended language “at least,” we adopt the assessment offered by Petitioner.11 11 No matter how designated in this decision, any determination (except our determination to institute trial) is preliminary and non-binding. We wish to have the full record as developed during trial before rendering any binding determination, finding, or conclusion. It is not materially disputed by the Patent Owner and is consistent with the ’595 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingOther
“[7.pre] A wireless communication method of a wireless communication terminal, the method comprising:13 Petitioner relies on Josiam “disclos[ing] ‘methods for efficient signaling and addressing in WLAN [wireless local area network] systems.’” Pet. 11 (citing Ex. 1003 ¶ 112; Ex. 1005 ¶ 4).14 The Petition states that “Josiam’s methods describe at least one station (i.e., a wireless communication terminal).” Id. 13 Petitioner does not address whether the preamble of claim 7 is limiting. See Pet. 1. We determine that the preamble of claim 7 is not limiting because it does not recite essential steps or structure and is not necessary to give life, meaning, and vitality to the claim. See Shoes by Firebug LLC v. Stride Rite Children’s Group, LLC, 962 F.3d 1362, 1367 (Fed. Cir. 2020). 14 Petitioner provides parallel citations to Exhibit 1006, the earliest provisional application to which Josiam claims priority (see Ex. 1005, code (60), in order to show that “the relevant subject matter relied upon herein is fully supported by respective provisional applications filed before the [filing date (December 24, 2015) of the earliest foreign application to which the ’595 patent claims priority (see Ex. 1001, code (30)].” Pet. 2. At least at this stage, there is no dispute between the parties as to whether Josiam or the ’595 patent are entitled to the claimed priority. See Prelim. Resp. 1 fn.1, 12 fn. 2. Therefore, unless deemed necessary to Petitioner’s showing, we do not include references to the Petition’s citations to Exhibit 1006 or discussion of Exhibit 1006 in our analysis. However, if Petitioner cites to Exhibit 1006 in a passage that we quote, we maintain these citations so that our quotation is accurate and complete.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“combination of the disclosures of Chen and Wu and articulates reasons why a skilled artisan would be motivated to combine the relevant teachings of Chen and Wu. See Pet. 42–85. This challenge to the patentability of the claims of the ’595 patent (Ground 2 of the Petition) is detailed and supported by the cited evidence. With regard to this ground and the asserted combination of art, Patent Owner argues that “[s]imilar to Grounds 1A and 1B, Chen and Wu do not show that ‘the bandwidth field of HE-SIG-A is used to obtain information of the unassigned resource unit’ as both the bandwidth field in HE-SIG-A and a subfield in HESIG-B need to be used for explicitly indicating the unassigned resource unit.” Prelim. Resp. 15. The quoted passage is limitation 7.5 and the “explicitly indicat[ing]” element is in limitation 7.7.16 See Ex. 1001, 54:3–4, 54:9–12; see also Pet. vii (showing claim 7 with limitations numbered and labeled). Thus, Patent Owner disputes the same limitations with a similar argument as for the earlier grounds in disputing the showing in the Petition for this ground. With regard to the disputed limitations, the Petition provides that, from a combination of the teachings and suggestions of Chen and Wu, a skilled artisan would understand that “the bandwidth field of HE-SIG-A indicates where in the overall bandwidth the non-allocated RU is located by defining the number of 20MHz channels and the arrangement and length of the HE-SIG-B content channels.” Pet. 60 (citing Ex. 1003 ¶ 178). The Declaration of Dr. Buehrer provides: 16 Limitation 7.7 recites: “the unassigned resource unit is explicitly indicated with the information of the unassigned resource unit based on the bandwidth field and the at least one subfield.” Ex. 1001, 54:9–12; Pet. vii (emphasis added). 178. Chen-Wu renders obvious using the bandwidth field of HE-SIG-A to obtain the information of the unassigned resource unit. As one example, a POSITA would have understood the Chen-Wu combination as rendering obvious that RU non-allocation information in HE-SIG-B indicates the location of a non-allocated RU within a 20MHz channel, while the bandwidth field of HE-SIG-A indicates where in the overall bandwidth the non-allocated RU is located by defining the number of 20MHz channels and the arrangement and length of the HE-SIG-B content channels. SAMSUNG-1008, [0101], [0098]; SAMSUNG-1009, [0036]; SAMSUNG-1010, 10. 179. Chen teaches that “RU allocation may be determined based at least in part on the PAID, channel bandwidth, and the HE-SIG-B.” SAMSUNG-1008, [0101], [0098]. I note that the Applicant did not dispute the Examiner’s finding that Chen teaches this limitation. See SAMSUNG- 1002, 68, 102 (citing SAMSUNG-1008, [0093], [0098], [0103], Fig. 14). 180. Moreover, Wu teaches “a fixed format common field in the HE-SIGB is defined for each operation bandwidth. Therefore, the length and format of the common field are predefined [based on the bandwidth]. In this approach, there is no [additional] indication needed in the HE-SIG-A.” SAMSUNG-1009, [0036]; SAMSUNG-1010, 10. As I explained above for [7.2] and [7.4], a POSITA would have understood Chen’s HE-SIG-A as including a bandwidth field that indicates the operation bandwidth of the PPDU. See [7.2], [7.4]. 181. For example, if the bandwidth field of HE-SIG-A indicates a PPDU bandwidth of 80 MHz, and the resource unit allocation field of the common field of HE-SIG-B indicates that the 20 MHz corresponding to the fourth channel is partitioned into 106, 26, and 106-tone resource units, the resource unit non-allocation information may indicate that the 26-tone resource unit is not assigned to any user through, e.g., a bitmap per Chen. SAMSUNG-1008, [0075], [0089]-[0093], Figs. 4, 12- 14; SAMSUNG-1009, [0035]-[0043], Figs. 2-4; SAMSUNG- 1010, 2-6, 10-14. Ex. 1003 ¶¶ 178–181 (alterations in original) (footnote omitted). We determine that this testimony of Dr. Buehrer is supported and reasonable and sufficiently persuasive and credible to support institution. We also note that Patent Owner does not, at least at this stage, provide any contradictory expert testimony.17 We have considered Patent Owner’s arguments relating to the disputed limitations and this ground and found them not to be as well-supported as the Petitioner’s showing for essentially the same reasons as discussed above with regard to Ground 1A. Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to the unpatentability of claims 1–12 of the ’595 patent based on a combination of the teachings and suggestions of Chen and Wu.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,470,595 - PTAB · Feb 6, 2026 · IPR2025-00988 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–14 and all petition grounds; it found a reasonable likelihood of success on the Josiam-based grounds, while the Bharadwaj grounds lacked established prior-art status.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we institute an inter partes review as to claims 1–14 of the ’281 patent.3” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this institution decision, we adopt the assessment offered by Petitioner.11 It is not materially disputed by the Patent Owner and is consistent with the ’281 patent and the asserted prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts “that no formal claim constructions are necessary.” Pet. 3. “Patent Owner applies the plain and ordinary meaning of the challenged claims.” Prelim. Resp 11. At this stage, no need exists to expressly construe any claim terms to resolve any dispute between the parties.12 See 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))). D.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedReference is prior artDecided for petitioner
“contention that either of the cited documents alone discloses all the elements of these limitations. And, the disclosure relied on in Exhibit 1007 is not alleged to be found in Exhibit 1009 and vice-versa. Patent Owner has not shown that any of the pre-May 14, 2016, Korean applications from which the ’281 claims priority includes disclosure of all the elements recited in limitations 1.9 and 8.6. At least at this stage, we determine that Petitioner has sufficiently shown, for the purpose of institution that Josiam is prior art.16 We credit the testimony of Dr. Buehrer cited in the Petition that none of the Korean applications to which the ’281 patent claims priority filed earlier than May 14, 2016, “explicitly, implicitly, or inherently discloses using both the bandwidth field of the HE-SIG-A and the resource unit allocation field of the HE-SIG-B to indicate channel puncturing information as the claim elements require. . . . At best, these documents discuss indicating unused channels using either HE-SIG-A or HE-SIGB fields—but not both.” Pet. 7 (citing Ex. 1003 (Buehrer Decl.) ¶¶ 90–91). Dr. Buehrer’s testimony has not been shown by Patent Owner to be inaccurate.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,687,281 - Axion Biosystems, Inc. v. Agilent Technologies, Inc.No claims unpatentablePTAB · Feb 2, 2026 · IPR2024-01467 · APJ David Cotta · IPR · Final written decision
Claims 1–8 and 11–15 were not shown unpatentable over Xu-752 and Jones because the proposed combination did not establish obvious millisecond time resolution.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSA”) as of May 2009 “would have had a B.S. in electrical/mechanical/biomedical engineering or biological science, or a related field, and approximately 2 years of relevant experience or equivalent study in systems and methods for bioanalysis of cells.” Pet. 14 (citing Ex. 1003 ¶¶ 23–25). Patent Owner adopts this definition for purposes of this proceeding. PO Resp. 9 (citing Ex. 2009 ¶ 19). We find Petitioner’s description of the level of ordinary skill in the art to be consistent with the level of skill reflected in the ’508 patent and in the prior art of record. Accordingly, we apply Petitioner’s definition in this decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“As used herein, “impedance measurement at millisecond time resolution” refers to the ability to perform a series of at least two consecutive impedance measurements within milliseconds of one another for each and every well of the system where each well is associated with an electrode array for impedance measurement. In each instance the time between two consecutive impedance measurements are less than 300 milliseconds from one another. Id. at 10:8–15. There does not appear to be any dispute as to the definitional nature of the first sentence in the passage above. That is, the parties agree that millisecond time resolution should be construed to mean: “the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.” PO Resp. 15 (proposing construction); Pet. Reply. 23 (“Axion also agrees that the term ‘millisecond time resolution’ is ‘the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.’”). The parties also agree that we do not need to determine whether the time interval between two consecutive impedance measurements is less than 300 milliseconds, as set forth in the definition portion of the specification, or whether it can be met by some other time interval, as suggested by other portions of the specification. See e.g., Ex. 1001, 23:49–55 (explaining that “[i]n some embodiments 500 millisecond time resolution is sufficient”), 24:37–39 (similar); PO Resp. 15 (arguing that “the distinction between 300 milliseconds and 500 milliseconds is immaterial to the dispute in this IPR because Jones teaches a 1.5 second update period, thus at least three times longer than the 500 milliseconds formulation”); Pet. Reply 23–24 (section headed “[Petitioner] Agrees That, In This IPR, The 300 Versus 500 Milliseconds Distinction is Immaterial To Addressing the Unpatentability of the Challenged Claims”), see also, Pet. Reply 24–26 (asserting that the claims are indefinite because it is not clear whether they require a 300 or a 500 millisecond time interval, but arguing that “the claims’ unpatentability can be determined without resolving the 300 versus 500 milliseconds indefiniteness issue”). We agree with the parties that “millisecond time resolution” should be construed to mean: “the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.” PO Resp. 15; Pet. Reply. 23. We further agree that resolution of this case does not require that we determine whether the period between two consecutive impedance measurements is less than 300 or less than 500 milliseconds because Petitioner has not carried its burden under either time interval.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Ex. 1003 ¶ 179. But Dr. Kim does not cite to any additional supporting evidence or provide any technical reasoning to support his statements. The notion that one can reduce the time between measurements by, e.g., reducing the number of frequencies measured, has intuitive appeal and appears mathematically correct. However, the absence of technical reasoning and supporting evidence diminishes the persuasiveness of Dr. Kim’s testimony that the POSA would made such modifications to reduce the time between measurements. Dr. Kim does provide some technical reasoning in connection with his discussion of eliminating all reference channels as a way to get the time resolution down to the levels required by, e.g., claim 14, which recites a millisecond time resolution of “less than 5 milliseconds.” See e.g., Ex. 1003 ¶ 172 (“A POSA seeking to study biological cell phenomena occurring on the order of a few milliseconds would have recognized that after measuring the reference network channels at the start, the reference network channels would not need measured again for some time, e.g., because temperature and other drift factors do not change appreciably on a millisecond time scale.”). However, even if we were to credit this testimony, Dr. Kim still lacks support and reasoning for the selection of the other parameters in his noreference-channel calculations. See, e.g., id. ¶ 173 (positing, but not providing technical reasoning for using, a no-reference-channel impedance system with 16 wells, a single 10kHz measurement frequency, and 16 daughter boards that measure simultaneously rather than sequentially).” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“Given that Jones’s only exemplified embodiment targets a 1.5 second update period, that Jones does not suggest reducing the update period, and that much of Jones’s focus is on benefits other than speed of measurement, Jones’s impedance analyzer seems an unlikely choice for a POSA seeking to take measurements having millisecond time resolution. Put another way, we find no persuasive non-hindsight reason that supports Petitioner’s assertion that the POSA would have sought to apply Jones’s impedance analyzer to Xu-752’s system in order to take measurements in millisecond time resolution.” slip op. at 22
Patent outcomesUS 11,906,508 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,906,508 - Aylo Freesites Ltd v. DISH Technologies L.L.C.Some claims unpatentablePTAB · Feb 2, 2026 · IPR2024-00940 · APJ John A Hudalla · IPR · Final written decision
Claims 1–11 are unpatentable as obvious over Leaning and over Leaning with Klemets; claims 12–20 were not shown unpatentable on the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Houh, Petitioner contends a person of ordinary skill in the art “would have had at least a B.S. degree in computer science or electrical engineering (or comparable degree) and two years of experience in networking or streaming media, or a M.S. in computer science or electrical engineering (or comparable degree).” Pet. 12 (citing Ex. 1003 ¶ 45). Patent Owner does not address the level of ordinary skill in the art in its post-institution papers. We adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’234 patent and the asserted prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that no construction of “virtual timeline” is necessary. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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))). Rather, as discussed below, the parties’ dispute appears to be about whether the “virtual timeline” identified by Petitioner is used to arrange the requested streamlets, as is also recited in claim 9. We address that argument below. See infra § II.D.10.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“On this record, we determine that the recitation “to achieve continuous presentation” is limiting and requires an amount of continuous (uninterrupted) playback/presentation after an upshift or downshift. The specification describes agent controller 702 determining whether to upshift based on a trigger threshold Θup, which itself is based on various factors including a current read ahead margin and a minimum safety margin. See Ex. 1001, 17:44–58. If agent controller 702 can sustain upshift quality, then it will upshift and request higher quality streams. See id. at 17:58–61. Conversely, when an upshift is not possible, agent controller 702 determines whether to downshift based a different threshold Θdown, which itself is based on the same sort of factors. See id. at 18:4–7. When the stream quality is not adequate, it downshifts. See id. at 18:7–14. These disclosures are similar to the language of claim 12, which recites “repeatedly generating a factor indicative of a current ability to receive the digital content at a rate sufficient for presenting the digital content as the digital content is received, . . . wherein the factor relates to a performance of the network” and “making the successive determinations whether to change the requested bit rate based on the factor to achieve continuous presentation of the digital content using the individually-requestable portions of the highest bit rate one of the copies determined receivable at that time.” Ex. 1001, 20:5–16 (emphasis added). That is, claim 12 refers to “achiev[ing] continuous presentation” based on what is “sufficient for presenting the digital content,” trading quality to ensure continuous playback.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable
“server comprises at least two servers and wherein at least one streamlet is requested from a first of the at least one server and at least one other streamlet is requested from a second server of the at least one server other than the first server.” Ex. 1001, 19:7–12. Petitioner references its mapping of the “at least one server” in claim 1 to Leaning’s server 1. Pet. 20 (citing Ex. 1004, 2:15–16, 2:18–22, 2:31–32, 5:8–14, Fig. 1), 23 (citing Ex. 1004, 6:13–26, 9:3–7, 16:6–12), 37; see supra §§ II.D.2.b–c. Petitioner contends that, “[t]o the extent Leaning does not disclose at least two servers wherein one sub-file (streamlet) is requested from a first server and another sub-file (streamlet) is requested from a second server such an arrangement would have been obvious in view of the knowledge of a [an ordinarily skilled artisan].” Id. at 37. Citing the common nature of such an arrangement, Petitioner contends that an ordinarily skilled artisan would have been motivated to provide multiple web servers containing the same sets of sub-files for streams in order to have redundancy in the system and allow for clients to establish connections with multiple servers and request a first sub-file from a first web server and, if the connection between the first web server becomes congested or the first web server otherwise fails or becomes unavailable, request a subsequent sub-file from the second web server. Id. at 37–38 (citing Ex. 1003 ¶ 85; Ex. 1012, 108,5 Fig. 4-11). Patent Owner does not dispute Petitioner’s analysis for claim 3. We are persuaded that it would have been obvious to implement Leaning’s server 1 as two servers that store different streamlets based on Dr. Houh’s uncontested testimony about system redundancy. See Ex. 1003 ¶ 85. His testimony is backed by a contemporaneous reference about HTTP that shows requests for different objects from different servers over parallel TCP connections. See, e.g., Ex. 1012, 108–09, Fig. 4-11. Thus, we determine that Petitioner has shown, by a preponderance of the evidence, that the subject matter of claim 3 would have been obvious over Leaning.” slip op. at 34
Patent outcomesUS 11,991,234 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,991,234 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 28, 2026 · IPR2024-01173 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–7, 9–13, and 16–19 are unpatentable: claims 16–17 are anticipated by Lesniak, and the remaining challenged claims are obvious over the stated combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“argument that the Lesniak fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Pet. Reply 8 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Ex. 1086 ¶ 7; see also Reply 8 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32).” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 24 (citing Ex. 1002 ¶¶ 27–28). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. See generally PO Resp. We adopt and apply Petitioner’s proposed definition of a POSA, which is consistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said deodorant stick being free of an aluminum salt” and “said deodorant stick” having a particular hardness range. PO Resp. 8–9. Patent Owner also points to dependent claims 5–8 as relying on the preamble reciting “a deodorant stick” as antecedent basis for claim elements. Id. at 10. We agree.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find that the evidence of record fails to support Patent Owner’s argument that the Lesniak fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Pet. Reply 8 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Ex. 1086 ¶ 7; see also Reply 8 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32). Having considered the parties’ positions and evidence of record, summarized above, we determine that Lesniak provides sufficient disclosure to enable a person of ordinary skill in the art to formulate a deodorant stick within the parameters of claims 16 and 17. e) Conclusion as to Claims 16 and 17 We agree with Petitioner that “the challenged claims recite nothing more than well-known deodorant ingredients performing their conventional functions.” Pet. Reply 2. Therefore, for the reasons discussed above, we conclude that Petitioner has proved by a preponderance of evidence that Lesniak anticipates claims 16 and 17.” slip op. at 22
Patent outcomesUS 10,905,647 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,905,647 - 3d Diagnostix, Inc. v. Watson Guide IP, LLCAll claims unpatentablePTAB · Jan 27, 2026 · PGR2024-00040 · APJ James A Tartal · PGR · Final written decision
Claims 1–3, 5–7, 10, 12, 14, 16, and 17 are unpatentable under § 103, including over Llop ’126 and Sichuan, and over Llop ’126, Sichuan, and Scherer for claims 5, 6, and 12.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art as of the earliest priority date of the ’209 patent “would at least have had a doctoral degree in dentistry and at least three to four years of experience working with guided dental surgery for installing dental implants and prostheses.” Pet. 13 (citing Ex. 1003 ¶ 49). Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 4. Based on our review of the record before us, we adopt Petitioner’s uncontested definition of a person of ordinary skill in the art, because it is supported by the evidence of record and consistent with the disclosure in the ’209 patent and in the asserted prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“1. “drill guide” and “fixation base” Petitioner contends that the claim terms “drill guide” and “fixation base” require construction “to resolve certain of the unpatentability grounds presented.” Pet. 13–14. In particular, Petitioner proposes that “drill guide” means “drill guide made from metal or metallic alloy without traditional plastic or acrylic,” and that “fixation base” means “fixation base made from metal, metallic alloy or other strong material without traditional plastic or acrylic.” Id. According to Petitioner, the Specification “teaches that the composition of the drill guide is ‘a metal or metallic alloy,’” and provides no other alternatives. Id. at 14 (citing Ex. 1001, 5:35–36). Petitioner similarly alleges that “fixation base” is described as “being fabricated from a metal, metal alloy, or other strong material,” and that “traditional plastic or acrylic” is excluded in light of disclosures in a provisional application. Id. at 21–24. According to Petitioner, its proposed constructions should be adopted “based on disclaimer of claim scope in the provisional application incorporated into the [’209] patent specification.” Id. at 14–24. Patent Owner contends that we need not address the constructions proposed by Petitioner because the issues addressed by Petitioner’s proposed constructions only concern allegations of unpatentability directed to claims 11 and 13, which Patent Owner disclaimed. Resp. 4–5; Disclaimer 1. In Reply, Petitioner argues that its proposed constructions are relevant to Patent Owner’s evidence of objective indicia of non-obviousness, including the alleged nexus. Reply 18–19 n.3. In light of our analysis below, because no determination in this Decision turns on whether we adopt Petitioner’s proposed constructions of “drill guide” and “fixation base,” we find that no express construction of these terms is required. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“substitution of the word ‘enclose’ for the term ‘surround.’” Sur-reply 6. We noted in the Institution Decision that “construing the claim term ‘surround’ to mean ‘enclose’ does not further inform or clarify to a person of ordinary skill in the art what is encompassed by the claim limitation.” Dec. 15. We reach the same conclusion here on the full record and find no basis to rewrite the Challenged Claims to replace “surround” with “enclose.” To the extent Patent Owner can be understood to suggest that we import additional limitations into the claims based on the exemplary figures in the ’209 patent, we decline to do so. Regardless, given the recognition by the Parties that “surround” and “enclose” are synonymous, our determinations in this Decision would have been the same had we adopted Patent Owner’s proposed definition of “surround” to mean “enclose.” Further, with regard to the claim language “configured and dimensioned to surround at least a portion of the teeth of the patient,” Patent Owner proposes construing “a portion of the teeth” as “at least some teeth.” Resp. 9 (citing Ex. 2007 ¶ 44). Patent Owner, however, offers no sufficient explanation in its Response to explain how why a “portion of the teeth” means “at least some teeth.” The Specification does not provide an explicit definition of “a portion of the teeth” and does not suggest an intention to use a meaning of the term “a portion of the teeth” that is particular to the ’209 patent. To the extent Patent Owner can be understood to imply that we should import additional limitations into the Challenged Claims based on the exemplary figures in the ’209 patent, we decline to do so. For that reason, alone, we decline to adopt Patent Owner’s proposed construction.” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“38; Sur-reply 9–10. First, Patent Owner argues that Sichuan is non-analogous art. Resp. 34–38. “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).” slip op. at 36
Patent outcomesUS 11,806,209 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,806,209 - MSN Laboratories Private Ltd. / MSN Pharmaceuticals Inc. v. Bausch Health Ireland LimitedNo claims unpatentablePTAB · Jan 27, 2026 · IPR2023-00016 · APJ Michael A Valek · IPR · Remand
On remand, the Board held claims 1–6 not shown unpatentable because unexpected results outweighed the prima facie obviousness case, and granted Patent Owner’s motion to exclude.
RulingsRemand decision- RemandOther
“the Court of Appeals for the Federal Circuit (“Federal Circuit”)See Paper 83 (“CAFC Decision”). The Federal Circuit did not disturb our determination that Petitioner “established a prima facie case of obviousness.” See CAFC Dec. 6–8. However, it took issue with the unexpected results analysis in the Decision, explaining that “without more explanation from the Board as to its determination that the experiments [offered by Patent Owner to show unexpected results] compared the challenged claims to the closest prior art, we cannot reach a judgment on MSN’s challenges to the Board’s holding of non-obviousness.” Id. at 14. Accordingly, the Federal Circuit vacated the Decision and remanded the case for further consideration of the unexpected results evidence. Id.” slip op. at 2
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner and credit Dr. Davies’s testimony (Ex. 2024 ¶¶ 210–215) that a POSA would not have expected the Glu3 substitution to produce such a result. Indeed, the premise for Petitioner’s “conservative substitution” rationale is that the Glu3 substitution would have been expected to produce an analog having similar properties to human uroguanylin. See, e.g., Pet. 1, 36 (stating that a POSA “would have expected this particular conservative substitution to retain excellent receptor-activating activity”); Reply 3 (urging that the reason to modify a known compound may be an expectation that the new compound will have “similar properties to the old”) (internal quotations omitted). Patent Owner’s HPLC data, however, demonstrate a difference in kind between the data for SP-304 (a single HPLC peak) and uroguanylin (two distinct peaks corresponding to the active and inactive topoisomer) after incubation under the same conditions. As Dr. Davies explains, “topoisomers exist as a mixture of compounds with different[] spatial conformations” that are “continuously interconverting between spatial conformations” with “varying degrees of interconversion stability.” See Ex. 2024 ¶¶ 51–56. Thus, Patent Owner’s data show that the Glu3 substitution results in a peptide that is demonstrably more stable against interconversion than the parent, unmodified peptide.” slip op. at 35
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia with nexusObjective indicia outweighedDecided for patent owner
“We find Patent Owner’s evidence persuasive to show that the Glu3 substitution results in an unexpected improvement in interconversion stability. As explained above, RP-HPLC was a known technique for separating the topoisomers of human uroguanylin. Ex. 2010, 230–231; Ex. 2011, 27–28; Ex. 2020, 223; Ex. 2028, TRUL00018269; see also Ex. 1063 ¶¶ 37, 40 (Petitioner’s expert confirming same). It was also known that one of human uroguanylin’s topoisomers was biologically active, whereas the other, i.e., what we and the parties refer to as the “inactive” topoisomer, had significantly less or no activity at the same concentration. Ex. 2011, 31 (“compound I shows significant activity in the cGMP producing assay, whereas compound II is practically inactive”); see also Ex. 2010, 238–239 (Fig. 8) (showing the “A isomer” had a potency “with a minimal concentration between 10-7and 10-8 M,” but that the B isomer “had virtually no effect on cGMP level at 10-6 M”); Ex. 2074, 48 (compound II “showed maximal 10% of the activity of compound I at 10-6 M”). The chromatograph for uroguanylin in Patent Owner’s data is consistent with these teachings, showing two peaks representing the active and inactive topoisomers. Compare Ex. 2028, TRUL00018269 (Fig. 1) with Ex. 2011, 28 (Fig. 2). The chromatograph for SP-304 shows a markedly different result, i.e., a “single peak,” which was confirmed “using the cGMP T84 cell assay” to represent “the fully active conformer of SP-304.” Ex. 2028, TRUL00018269; Ex. 2024 ¶¶ 208–209. We agree with Patent Owner and credit Dr. Davies’s testimony (Ex. 2024 ¶¶ 210–215) that a POSA would not have expected the Glu3 substitution to produce such a result. Indeed, the premise for Petitioner’s “conservative substitution” rationale is that the Glu3 substitution would have been expected to produce an analog having similar properties to human uroguanylin. See, e.g., Pet. 1, 36 (stating that a POSA “would have expected this particular conservative substitution to retain excellent receptor-activating activity”); Reply 3 (urging that the reason to modify a known compound may be an expectation that the new compound will have “similar properties to the old”) (internal quotations omitted). Patent Owner’s HPLC data, however, demonstrate a difference in kind between the data for SP-304 (a single HPLC peak) and uroguanylin (two distinct peaks corresponding to the active and inactive topoisomer) after incubation under the same conditions. As Dr. Davies explains, “topoisomers exist as a mixture of compounds with different[] spatial conformations” that are “continuously interconverting between spatial conformations” with “varying degrees of interconversion stability.” See Ex. 2024 ¶¶ 51–56. Thus, Patent Owner’s data show that the Glu3 substitution results in a peptide that is demonstrably more stable against interconversion than the parent, unmodified peptide.” slip op. at 34
- ExcludeMotion to exclude, grantedGranted
“motion. The American Peptide letter contains out of court statements from a third party submitted by the EPO opponent. The statements in the letter were not made under oath, nor is there evidence that Patent Owner was ever able to question the author of that letter or anyone else with personal knowledge of the statements therein. Petitioner argues that the American Peptide letter is evidence “to doubt that the ‘singular peak’ for uroguanylin in Liu represents the active topoisomer of uroguanylin” because it evidences that American Peptide “provided its customers with the ‘B’ (i.e., inactive) form of uroguanylin at the time.” Pet. Remand Resp. 25. That is, Petitioner relies on the American Peptide letter for the truth of the matters asserted therein. Such use plainly implicates the rule against hearsay and falls squarely within our prior reasoning for excluding the Currie submission portion of Exhibit 1067. We incorporate that analysis herein. See Dec. 61–72. Petitioner asserts that the American Peptide letter is admissible under the residual hearsay exception in FRE 807. MTE Opp. 3–5. We disagree. The American Peptide letter was submitted by the EPO opponent specifically for the purpose of opposing a foreign counterpart to the ’786 patent. We see no reason to distinguish it from the other materials previously excluded as hearsay in the Currie submission. Petitioner’s assertion that it contains sufficient guarantees of trustworthiness because it was “provided by a neutral third-party” (American Peptide) and “an individual having first- hand knowledge, [American Peptide Company’s] VP of sales and marketing” is speculation. See id. at 3–4. Based on the record before us, Patent Owner has never been afforded an opportunity to examine anyone regarding the statements in this letter or even confirm that it is, in fact, a letter from the American Peptide Company. The mere fact that it was submitted in a foreign patent proceeding does not make it any more trustworthy than any other untested assertion offered by an adverse party in a legal proceeding.” slip op. at 58
Patent outcomesUS 7,041,786 not shown unpatentable§ 103 obviousnessPatents in suitUS 7,041,786 - MSN Laboratories Private Ltd. / MSN Pharmaceuticals Inc. v. Bausch Health Ireland LimitedNo claims unpatentablePTAB · Jan 27, 2026 · IPR2022-00722 · APJ Michael A Valek · IPR · Remand
Claims 1–6 were not shown unpatentable because the unexpected results from the Glu3 substitution outweighed the prima facie obviousness showing; Patent Owner’s motion to exclude was granted.
RulingsRemand decision- RemandOther
“More specifically, the Federal Circuit identified “three reasons” why “the Board’s determination that the[se] experiments compared the claimed invention with the closest prior art lack[ed] adequate explanation” and instructed us to address these issues on remand. See CAFC Dec. 11–13. First, the Court stated we “should determine, based on the evidence put forward by the parties, whether plecanatide exhibits topoisomerism and whether the testing of the challenged claims should encompass both the active and inactive forms.” Id. at 12.3 Second, the Court instructed us to reconsider what the closest prior art compound is in view of Patent Owner’s “contention that highly pure A-form uroguanylin could be maintained as a lyophilized powder,” noting that “[i]f it is true . . . that uroguanylin can be maintained and therefore tested in its active A form as a lyophilized powder, that would support that the experiments [which were conducted in solution] did not use the closest prior art.” Id. Third, the Court observed that the Decision did not sufficiently address “whether the experiments submitted by [Patent Owner] actually used” the closest prior art and instructed the Board “to reevaluate the experimental evidence consistent” with the determinations noted above. Id. at 12–13.” slip op. at 3
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for patent owner
“In sum, we find that there is a sufficient nexus between Patent Owner’s results and the challenged claims and that those results are reasonably commensurate with the same. Accordingly, for all of reasons explained above, the unexpected results Patent Owner relies upon are probative of non-obviousness. E. Conclusion for Ground 1 Weighing the record as a whole in view of the findings and analysis above as well as our findings and analysis relating to Petitioner’s prima facie showing in the Decision, we conclude that Petitioner has not met its burden to show that claim 1 would have been obvious over Currie and Li. The evidence suggesting that it would have been obvious to make the Glu3 substitution because it is a conservative substitution (see Dec. 20–38 (§ III.E.ii)) is substantially outweighed by Patent Owner’s comparatively strong evidence demonstrating unexpected results relating to improved interconversion stability, potency, and binding affinity from the Glu3 substitution. See Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1368 (Fed. Cir. 2017) (“Evidence of objective indicia [such as unexpected results] ‘can be the most probative evidence of nonobviousness in the record,’ and . . . enable[s] ‘the court to avert the trap of hindsight.’”) (quoting Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013). Indeed, the interconversion and potency categories of Patent Owner’s unexpected results showing are particularly strong such that even without the additional results in Liu, we would still reach the same ultimate conclusion on obviousness. Accordingly, Petitioner has not shown by a preponderance of the evidence that claim 1 is unpatentable.” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for patent owner
“same combination of Currie and Li for the limitations of claim 1 and the similar limitations recited in the other independent claims. In the Decision, we found that, based on the teachings in those references, an ordinarily-skilled artisan would have been motivated both to select human uroguanylin as a lead compound and modify its sequence by making a conservative Glu3 substitution for uroguanylin’s Asp3. Dec. 15–37. We did not, however, credit Petitioner’s other purported rationales for that modification. Id. at 34–37. Those findings were not disturbed on appeal. See CAFC Dec. 6–8 (rejecting 9 The Leahy-Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011) (“AIA”), included revisions to 35 U.S.C. § 103 that became effective after the filing of the application that led to the ’786 patent. Therefore, we apply the pre-AIA version of 35 U.S.C. § 103. 10 U.S. Pat. 5,489,670, issued Feb. 6, 1996 (Ex. 1005) (“Currie”). 11 Z. Li et al., Purification, cDNA Sequence, and Tissue Distribution of Rat Uroguanylin, 68 Regulatory Peptides 45–56 (1997) (Ex. 1006) (“Li”). 12 R. Narayani et al., Polymer-coated Gelatin Capsules as Oral Delivery Devices and their Gastrointestinal Tract Behavior in Humans, 7 J. Biomater. Sci. Polymer Edn. 39–48 (1995) (Ex. 1007) (“Narayani”). 13 M. Campieri et al., Oral Budesonide is as Effective as Oral Prednisolone in Active Crohn’s Disease, 41 Gut 209–214 (1997) (Ex. 1008) (“Campieri”). 14 U.S. Pat. 5,359,030, issued Oct. 25, 1994 (Ex. 1009) (“Ekwuribe”). Patent Owner’s alternative arguments for affirmance). We incorporate by reference the portions of the Decision addressing Petitioner’s prima facie showing herein. See Dec. 8–37 (§§ III.A–D and E.i–ii). We consider the findings and explanation therein to the extent it bears on our analysis below.” slip op. at 10
- ExcludeMotion to exclude, grantedGranted
“motion. The American Peptide letter contains out of court statements from a third party submitted by the EPO opponent. The statements in the letter were not made under oath, nor is there evidence that Patent Owner was ever able to question the author of that letter or anyone else with personal knowledge of the statements therein. Petitioner argues that the American Peptide letter is evidence “to doubt that the ‘singular peak’ for uroguanylin in Liu represents the active topoisomer of uroguanylin” because it evidences that American Peptide “provided its customers with the ‘B’ (i.e., inactive) form of uroguanylin at the time.” Pet. Remand Resp. 25. That is, Petitioner relies on the American Peptide letter for the truth of the matters asserted therein. Such use plainly implicates the rule against hearsay and falls squarely within our prior reasoning for excluding the Currie submission portion of Exhibit 1067. We incorporate that analysis herein. See Dec. 61–72. Petitioner asserts that the American Peptide letter is admissible under the residual hearsay exception in FRE 807. MTE Opp. 3–5. We disagree. The American Peptide letter was submitted by the EPO opponent specifically for the purpose of opposing a foreign counterpart to the ’786 patent. We see no reason to distinguish it from the other materials previously excluded as hearsay in the Currie submission. Petitioner’s assertion that it contains sufficient guarantees of trustworthiness because it was “provided by a neutral third-party” (American Peptide) and “an individual having first- hand knowledge, [American Peptide Company’s] VP of sales and marketing” is speculation. See id. at 3–4. Based on the record before us, Patent Owner has never been afforded an opportunity to examine anyone regarding the statements in this letter or even confirm that it is, in fact, a letter from the American Peptide Company. The mere fact that it was submitted in a foreign patent proceeding does not make it any more trustworthy than any other untested assertion offered by an adverse party in a legal proceeding. For these reasons, we grant Patent Owner’s motion to exclude page 86 of Exhibit 1067.” slip op. at 58
Patent outcomesUS 7,041,786 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,041,786 - Solaris Oilfield Site Services Operating, LLC / Solaris Oilfield Site Services Personnel, LLC v. Masaba, Inc.All claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01179 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–25 are unpatentable under § 103 over the asserted combinations of Waldner, Dynatek, and additional references; the Board cancelled all challenged claims.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Also, to the extent Masaba relies on extrinsic expert testimony, we note that Masaba’s expert cites absolutely no support for his understanding of the claims, much less explains why we should adopt his understanding over the plain and ordinary meaning of “conveying aggregate” and “moving aggregate.” See Ex. 2004 ¶ 34. Absent supporting citations, such extrinsic testimony is entitled to little, if any, weight. As such, we reject the notion that Waldner’s discharge chute member 242 is not a conveyor “for conveying aggregate” or “for moving aggregate,” as required by claim elements 1[h] and 1[i].” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We disagree that Dr. Durham does not possess the necessary level of skill in the art to qualify as an expert in this case. Looking at the specification of the ’689 patent and the prior art of record, we think Masaba sets the bar too high. We acknowledge that one of ordinary skill in the art should have some education and/or experience in the mechanical art of conveying aggregate materials, but we do not think opining on the ’689 patent and asserted prior art necessarily requires that person to have the amount of education and experience that Masaba advocates. The ’689 patent relates generally to an “aggregate transferring system for receiving aggregate from a vehicle and elevating the aggregate to a higher vertical level for deposit into, for example, a silo.” Ex. 1001, 1:15– 18. And, as described in the ’689 patent and discussed later, the transferring system is an assembly of known types of conveyors, such as a belly-dump truck conveyor, a bucket elevator, and an articulated belt conveyor, for transferring the aggregate horizontally and vertically from a belly-dump truck to the discharge point, such as a silo. Without doubt, Dr. Durham has enough education and experience to reliably opine on the combination of known parts.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction needed
“We reject this argument for several reasons. First, nowhere does the plain language of the claims specify how the aggregate is conveyed or moved from the conveyor extension assembly’s inlet to its outlet, be it passively by means of gravity or actively by means of a conveyor belt. Instead, the claims simply use those verbs according to their plain and ordinary meaning, which is “to transfer or deliver” or “to cause to go or pass” from one place to another. See Ex. 3001, 253 (defining “convey”), 760 (defining “move”).10 Second, the specification of the ’689 patent similarly uses these terms in a plain and ordinary sense, without ever attributing to them some sort of special meaning. See, e.g., Ex. 1001, 4:9–12 (“The apparatus 10 is suitable for performing the transfer of aggregate from 10 We reference the original pagination of the dictionary in which these definitions appear. one location to another, such as, for example, from a vehicle carrying the aggregate to a silo 1 for storing the aggregate.”). The ’689 patent specification also makes clear that active conveyance of the aggregate is an option and not a requirement of the claimed invention, stating that the conveyor extension assembly “may further include a conveyor belt 150.” Ex. 1001, 10:60–66 (emphasis added). Limiting claim elements 1[h] and 1[i] to a device “for actively conveying” or “for actively moving aggregate” would improperly import limitations from the specification into the claims. Thus, based on the intrinsic evidence, we determine that claim elements 1h and 1k are properly construed to encompass passive and/or active movement of the aggregate via the conveyor extension assembly.” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“Owner asserts” that two claim terms—“unloader structure” and “trailer structure”—should be construed as means-plus-function limitations under 35 U.S.C. § 112(f), Solaris submits an express construction detailing the corresponding structure in the specification for performing the recited function of the claimed unloader and trailer structures. See id. at 24–25. Only in disputing Solaris’s Ground 3 does Masaba advocate that the claim term “trailer structure” should be construed under § 112(f), and then only in conjunction with dependent claims 3 and 21. See PO Resp. 58. As such, we address Masaba’s proposed construction in our analysis of Ground 3. We now turn to Solaris’s grounds of unpatentability.” slip op. at 12
Patent outcomesUS 11,780,689 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 11,780,689
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.