- Qiagen Sciences, LLC v. Tecan Genomics, Inc.All claims unpatentablePTAB · May 13, 2026 · IPR2025-00029 · APJ Zhenyu Yang · IPR · Final written decision
Claims 1–12 and 14–19 are unpatentable as obvious over the listed combinations; Petitioner’s motion to strike is denied.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“for purposes of this Decision, we find a POSA would have had a Ph.D. in molecular biology, molecular genetics, bioinformatics, biochemistry, or a related field. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
Patent outcomesUS 10,876,108 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,876,108 - Qiagen Sciences, LLC v. Tecan Genomics, Inc.All claims unpatentablePTAB · May 12, 2026 · IPR2025-00026 · APJ Georgianna W Braden · IPR · Final written decision
Claims 1–10 are unpatentable: claims 1–3 and 5–10 are anticipated by Porreca and obvious over Schmitt and McCloskey; claims 4 and 7 are also obvious over the listed Illumina combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“On the initial trial record, we agreed with Patent Owner that one of ordinary skill in the art would have had experience with next generation sequencing, but were not persuaded that this would only be possible in the field of molecular biology. Instead, we found that a person of ordinary skill would have had either (1) a Ph.D. in the field of chemistry, molecular biology, or biochemistry or (2) a B.S. or M.S. degree with three to five years of experience working in any of those fields. Inst. Dec. 8. We specifically found that “[t]he person of ordinary skill would have had experience with next generation sequencing methods and a working knowledge of how those methods functioned.” Id. at 8–9. Patent Owner now submits that it does not dispute the definition of a person of ordinary skill in the art as laid out in the Institution Decision. PO Resp. 13. Reviewing the entire trial record, we maintain the same definition of a person of ordinary skill in the art and note that it is consistent with the skill level reflected in the disclosures of the ’357 patent and prior art. We further note that the skill level does not affect our analysis or our final decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In the Institution Decision, the Board adopted Petitioner’s construction of the term “adaptor.” Inst. Dec. 9. Patent Owner does not dispute this construction. PO Resp. 13–14. During oral argument, Petitioner argued that claim 1 requires “an adapter to be ligated onto a target DNA, and that adapter needs to have two different sequences of DNA that are used for identification” including a “socalled identifier that's one to eight nucleotides in an indexing site.” Tr. 6:19–7:2. Patent Owner, again, did not dispute this characterization of “adaptor.” See generally Tr. Based on the entirety of the trial record, we continue to apply Petitioner’s construction of the term “adaptor,” although we note that it does not affect our analysis.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the entirety of the trial record, we do not agree with Patent Owner’s reading of either the claims or the prior art because Patent Owner takes too narrow a view of both. First, based on the plain language of Porreca, we find it uses a combination of the sequence reads of the target sequence and differentiator tag sequences to determine whether there is duplication. See Ex. 1006 ¶¶ 139–140, 143, 148, 153. All that the claim requires is that the method identifies sequence reads with identical identifier and target sequences as duplicates. Because claim 1 contains the transition “comprising,” the claim is still satisfied if the category of identified duplicate reads contains identical labels and also contains more. Patent Owner admits that the identifier and target sequence do not have to be used simultaneously. Tr. 46:16–48:4. Instead, Patent Owner challenges whether Porreca uses the required elements in combination as recited in the challenged claims. Based on the record before us, we agree with Petitioner’s position especially in view of the open-ended nature of the claims and Patent Owner’s own admission that there is no temporal requirement for the use of target sequences and differentiator tag sequences. Specifically, we find that Porreca teaches using the combination of the target sequences and the differentiator tag sequence to determine whether particular sequence reads are unique or PCR duplicates. See Ex. 1006 ¶¶ 139–140, 143, 148, 153. The use of both such sequences meet the claim limitations. This finding is consistent with the prosecution history of the ’357 patent and how the applicant and examiner interpreted the claims. See Ex. 1013, 69–70, 78–79. Second, we find the disclosure of Porreca sufficient to demonstrate to an ordinarily skilled artisan that “collapsing” is done by comparing target sequences and differentiator tag sequences. Porreca specifically explains that: after multiple reads have been collected for a given locus, it is possible that due to bias (e.g., caused by PCR amplification steps), a large fraction of the reads are derived from a single originating molecule. This would skew the population of target sequences observed, and would affect the outcome of the genotype call.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not agree with Patent Owner for at least two reasons. First, Patent Owner fails to address the fact that Schmitt cites to McCloskey 2007. We find that the citation of McCloskey 2007 in Schmitt indicates that the ordinarily skilled artisan would have considered the teachings of McCloskey to be highly relevant to the teachings of Schmitt and would have considered them to be both useful in the field of sequencing. See Ex. 1005 ¶ 6. Second, Patent Owner fails to explain or even identify the purported structural differences between Schmitt and McCloskey that would prevent the teachings of McCloskey from being relevant to Schmitt. In addition, we credit the testimony of Dr. Metzker that one of ordinary skill in the art would have understood the benefits of adding a barcode to target sequences and would have looked to McCloskey and the batch-stamps it teaches because both Schmitt and McCloskey are in the same field and address the same problems. See Ex. 1003 ¶¶ 110, 114. Accordingly, we find that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill in the art at the critical time would have had sufficient reason to combine the teachings of Schmitt and McCloskey to arrive at challenged claim 1.” slip op. at 48
Patent outcomesUS 11,098,357 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,098,357 - Google LLC / Lenovo (United States) Inc. v. Ericsson ABAll claims unpatentablePTAB · Mar 23, 2026 · IPR2025-00003 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–8, 10, 12, 14, and 16–20 are unpatentable under § 103; the Board denied Patent Owner’s revised motion to amend.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“[W]ould have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and 2–3 years of practical engineering experience relating to information security systems that employ cryptographic keys to encrypt/decrypt digital data. Additional education could substitute for professional experience, or significant experience in the field could substitute for formal education. Ex. 1003 ¶ 41. Patent Owner agrees with Petitioner’s expert regarding the level of ordinary skill in the art. RMTA 19. Patent Owner’s declarant, Dr. Villasenor, notes that “obviousness must be viewed from the perspective of one of ordinary skill in the field of information security using cryptographic keys for encryption and decryption of digital data, and my opinions are rendered on the basis of the definition of the ordinary artisan set forth in the Petition in view of that further clarification.” Ex. 2010 ¶ 19. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’178 patent specification. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Expert testimonyOther
“In reply, Patent Owner substantially repeats its arguments against Petitioner’s reliance on Peterka for the claim 1 content encryption key identifiers requirements. Reply RMTA 8–9 (citing Ex. 1005 ¶ 121; Ex. 2010 ¶¶ 89, 93–95); see RMTA 14–15. We are not persuaded by these arguments for the reasons discussed in Section III.D.2.e)(2) above.” slip op. at 65
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner argues that there was no motivation to combine Peterka with Suzuki because Petitioner has argued that “Peterka can already identify content keys by using the allegedly unique sequence numbers or time stamps assigned to each message carrying a single content key.” PO Resp. 41–42 (citing Pet. 25). Patent Owner also challenges motivation to combine Suzuki because it “is not directed to a pay-by-time, pay-per-view, or subscription distribution model, in which a content key grants access to content that different clients must individually decide to purchase in discrete units or increments.” Id. at 36–37. Petitioner responds that, because Peterka disclosed alternative embodiments that did not use sequence numbers or time stamps to identify EMM/ECM messages, one of ordinary skill would have been motivated specifically assign identifications to individual keys as taught in Suzuki. Reply 22 (citing Pet. 26). Petitioner also argues that whether Suzuki was directed to unpurchased content was irrelevant, because Suzuki is cited to show multiple key responses were conventional. Id. at 19–20. Patent Owner does not otherwise specifically address the issue of motivation to combine Peterka, Suzuki, and Bocharov. See generally PO Resp. Nonetheless the burden remains on Petitioner to demonstrate unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. We find, based on the record, that Petitioner has proved by a preponderance of the evidence that a person of ordinary skill in the art would have had reason to combine the teachings of Peterka, Suzuki, and Bocharov as proffered by Petitioner with a reasonable expectation of success.” slip op. at 45
- ScopeMotion to amend, deniedDenied
“We agree with Petitioner that the substitute claims are broadening. Because the amended wording only requires the key request to be made “in response to detecting” the boundary, rather than “ahead of” the boundary, the request can occur before or after the boundary. This is not a fanciful or unlikely possibility — such delayed requests are specifically contemplated by the ’178 patent: [I]f the packager 104 is unable to obtain a new content encryption key from the WFM 102 prior to the expiration of the current content encryption key, the packager 104 will continue to use the current content encryption key until such time as it is able to obtain a new key from the WFM 102. Ex. 1001, 6:32–37. It should be noted that the fixed period duration for key rotation may be viewed as a "target" period, as the packager 104 may not expire a key on the exact boundary. Ex. 1001, 8:9–11. The key expiration time from the WFM 102 may be viewed as a "suggested" expiration time, as the packager 104 may not be able to expire the key at the exact specified time.” slip op. at 56
Patent outcomesUS 9,313,178 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,313,178 - Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc.All claims unpatentablePTAB · Dec 12, 2025 · IPR2022-00218 · APJ Grace Karaffa Obermann · IPR · Remand
On remand, claims 2, 5, and 6 were held unpatentable as obvious; the motion to amend was denied for proposed claims 16–21 and dismissed for claims 22–23.
RulingsRemand decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The level of ordinary skill in the art, as articulated by Patent Owner, more accurately reflects the subject matter of the ’704 Patent and the asserted prior art than does Petitioner’s articulation. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Petitioner does not explain how “control theory” and “applied mathematics” (Pet. 16) relate to the subject matter of the ’704 Patent or the asserted prior art, and Petitioner’s reference to “laboratory experience” (id.) is too general to be useful in defining the level of skill. Furthermore, whereas Petitioner requires a POSITA to have “x-ray and computing imaging experience” (id.), Patent Owner more particularly specifies “x-ray microtomography experience” (PO Resp. 5), which is the field of art for the ’704 Patent, as well as many of the asserted prior art references. Ex. 1001, code (54) (“High resolution direct-projection type x-ray microtomography system using synchrotron or laboratory-based x-ray source”); Ex. 1007 (discussing X-ray microcomputed tomography); Ex. 1008 (discussing X-ray nanotomography and microtomography); Ex. 1010, code (54) (“Method and apparatus for utilizing an electro-optic detector in a microtomography system”); Ex. 1011 (title: “Three- Dimensional X-ray Microtomography”). For those reasons, we apply Patent Owner’s definition of a POSITA.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Neither party proposes any express claim constructions. See Pet. 17 (“all claim terms should receive their plain and ordinary meaning”); PO Resp. 5 (applying the same constructions as Petitioner). In accordance with the Federal Circuit’s mandate, however, we adopt and apply herein “[t]he plain meaning of the term ‘between 1 and 10,’” which “includes tiny, and even undetectable, magnification” and, moreover, we take account that Jorgensen anticipates claim 1, including that limitation. Paper 38, 11–12. We determine that no other claim term requires express construction for purposes of resolving any controversy between the parties. 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 10
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“i. Spot Size as a Result-Effective Variable First, Patent Owner argues that Petitioner fails to “identify any prior art that discloses an x-ray source having the claimed spot size.” PO Resp. 45. We agree with Petitioner, however, that Patent Owner “fails to consider the advantages of a smaller spot size” –– advantages that would have been known to a POSITA, given that they are discussed “in each of these references.” Reply 19. Petitioner further directs us to evidence that Patent Owner’s own witness, Dr. Bentley, “agreed that a POSITA would have been aware of tradeoffs between smaller and larger spot sizes.” Id. (citing Ex. 1024, 45:14–47:20). In other words, the evidence supports that spot size would have been a result effective variable and, on this record, that optimizing that variable in view of various “tradeoffs,” recognized by Patent Owner’s own witness, would have been within the level of ordinary skill in the art. Id.; see In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art”). Patent Owner does not counter Petitioner’s evidence on that point, but instead, refers us back to a related argument in the Response, pertaining to whether one would have undertaken that modification with a reasonable expectation of success, which we address below in connection with Patent Owner’s third argument. Sur-reply 18 (citing PO Resp. 47–49).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“smaller spot sizes.” PO Resp. 45. We recognize that an obviousness challenge may be overcome “by showing that the prior art teaches away from the claimed invention in any material respect.” In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)). For a reference to teach away, however, it must state more than a general preference for an alternative invention. Specifically, it must “criticize, discredit, or otherwise discourage” investigation into the invention claimed. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In Patent Owner’s view, “Jorgensen teaches away from smaller spot sizes” because smaller spot sizes “require significantly more power to generate the desired flux.” PO Resp. 45. Patent Owner directs us to evidence that, at best, illustrates that this disadvantage would have been among the “tradeoffs between smaller and larger spot sizes” that inform the selection. Ex. 1024, 45:14–47:20 (Dr. Bentley’s cross-examination testimony); see PO Resp. 45–46 (evidence of proposed disadvantage). This evidence does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. Fulton, 391 F.3d at 1201. At best, we find that it may indicate a preference for a different spot size depending on the desired application.” slip op. at 13
Patent outcomesUS 7,400,704 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,400,704 - PTAB · Nov 4, 2025 · IPR2025-00785 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were unpatentable over either asserted § 103 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). 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. 37 C.F.R. § 42.108(a).” slip op. at 2
- BurdenDenied
“Petitioner’s single-reference allegations do not align with its two “combination” challenges identified above. As for its “combination” allegations, Petitioner does not identify, for example: (1) which limitations in claim 1 are missing in any of Chow, Reiffin, and Kurowski; (2) which aspects of any of these references requires modification to achieve the invention of claim 1; (3) which specific reference Petitioner posits to teach any such missing limitation in another reference or as the basis to modify a specific feature in a given reference; or (4) a rational reason as to why the skilled artisan would have combined particular teachings from one of Chow, Reiffin, and Kurowski with particular teachings of another such reference to achieve the invention of claim 1 as a whole.5 Instead, Petitioner improperly punts its burden to define its obviousness challenges to the Board (and Patent Owner). See, e.g., Pet. 38 (“To the extent the Board disagrees that [any particular] limitation is disclosed by the Chow/Reiffin combination 4 See, e.g., Pet. 16, 19 (“Thus, Chow and Reiffin both disclose or suggest claim [1b].” “Therefore, claim 1 was obvious over Chow and Reiffin separately and over their combination.”); see also id. at 12–19, 37–42. 5 Petitioner argues that the skilled artisan would have combined Reiffin with Chow for “increased computational power and the ability to solve larger problems.” Pet. 11. These generic “reasons” to combine the alleged teachings of Chow and Reiffin (and Kurowski) lack rational underpinning, particularly because Petitioner does not even identify which teachings of which references are being combined to achieve any particular limitation in claim 1. See Prelim. Resp. 40 (“[Petitioner’s] ‘spaghetti on the wall’ approach fails [to] explain how Petitioners’ purported motivation for combining Chow and Reiffin fits with each of the at least 64 different possibilities for combining Chow and Reiffin.”).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and quotes various passages in Chow. Pet. 13–14. For example, Petitioner identifies that, under “Description of the Related Art,” Chow states: “Typically, workload is apportioned by somehow logically dividing the data to be processed. For example, a block of data might be divided evenly into a number of parts equal to the number of available threads, so that each thread can independently process a separate portion of the data. This is called ‘static’ or ‘a priori’ partitioning.” Pet. 13 (citing Ex. 1003, 1:38–42; Ex. 1022 ¶ 144). Petitioner also identifies that Chow describes “aggregate tasks” divisible into “multiple sub-tasks,” and “multiple task execution units are independently operated on-demand to sequentially self-allocate and execute sub-tasks of the aggregate task.” Pet. 13–14 (citing Ex. 1003, 1:66–2:15). After presenting such quoted passages from Chow, Petitioner proffers the conclusion that Chow discloses the Partitioning Limitation, but does so without sufficiently explaining why such passages allegedly teach or suggest the features of the Partitioning Limitation not only within the context of claim 1 as a whole, but given that Chow itself disparages such “static” or “a priori” partitioning as posing “a significant problem” (Ex. 1003, 1:52–58). Patent Owner persuasively responds (and we agree for the same” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“combination” challenges identified above. As for its “combination” allegations, Petitioner does not identify, for example: (1) which limitations in claim 1 are missing in any of Chow, Reiffin, and Kurowski; (2) which aspects of any of these references requires modification to achieve the invention of claim 1; (3) which specific reference Petitioner posits to teach any such missing limitation in another reference or as the basis to modify a specific feature in a given reference; or (4) a rational reason as to why the skilled artisan would have combined particular teachings from one of Chow, Reiffin, and Kurowski with particular teachings of another such reference to achieve the invention of claim 1 as a whole.5 Instead, Petitioner improperly punts its burden to define its obviousness challenges to the Board (and Patent Owner). See, e.g., Pet. 38 (“To the extent the Board disagrees that [any particular] limitation is disclosed by the Chow/Reiffin combination 4 See, e.g., Pet. 16, 19 (“Thus, Chow and Reiffin both disclose or suggest claim [1b].” “Therefore, claim 1 was obvious over Chow and Reiffin separately and over their combination.”); see also id. at 12–19, 37–42. 5 Petitioner argues that the skilled artisan would have combined Reiffin with Chow for “increased computational power and the ability to solve larger problems.” Pet. 11. These generic “reasons” to combine the alleged teachings of Chow and Reiffin (and Kurowski) lack rational underpinning, particularly because Petitioner does not even identify which teachings of which references are being combined to achieve any particular limitation in claim 1. See Prelim. Resp. 40 (“[Petitioner’s] ‘spaghetti on the wall’ approach fails [to] explain how Petitioners’ purported motivation for combining Chow and Reiffin fits with each of the at least 64 different possibilities for combining Chow and Reiffin.”). slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,257,582 - PTAB · Apr 21, 2025 · IPR2024-01506 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted challenges, finding a reasonable likelihood that Kivioja anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework set forth under Advanced Bionics, LLC v. Med-El Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics” or “AB”). Under the first prong of that framework, we must determine whether the same or substantially the same art or arguments previously were presented to the Office. If so, we turn to the second prong which focuses on whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8. a. Advanced Bionics Prong One: whether “the same or substantially the same art or arguments previously were presented to the Office” In evaluating whether the same or substantially the same prior art or arguments were previously presented to the Office, the Board has identified several non-exclusive factors for consideration. Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (Paper 8) (precedential § III.C.5, first para.) (“the Becton Dickinson factors”). Specifically, we must weigh the following non-exclusive factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of prior art or arguments. Becton Dickinson, at 17–18. Thus, the Becton Dickinson factors are framed as comparing the art or arguments in a petition against what was before an examiner during prosecution.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Although Petitioner provides us with constructions for “appended,” “identifier site” and “indexing site,” the meaning of these terms are not in controversy at this stage of the proceeding and their constructions will not aid in our analysis. We acknowledge, the ’241 patent. See Ex. 1005, 4:37–40, 4:45, 4:51–53.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“2. “identifying sequence reads with identical identifier and target sequences as duplicates” The parties do not request construction of the limitation, “identifying sequence reads with identical identifier and target sequences as duplicates.” Nonetheless, we invite the parties to address the construction of this limitation after institution. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary to resolve a dispute). Specifically, the parties may wish to address whether the “same identifier and nucleic acid fragment” means that the sequences actually are identical. The ’241 patent states: “A duplicate sequencing read can be a sequencing read with the same identifier site and target sequence as another sequencing read in the population of sequencing reads.” Ex. 1003, 4:10–13. Yet, the claim does not use the exact wording used in the Specification.4 The ’241 patent goes on to disclose “apparent duplicates” and “true” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We do not see a material difference in the parties’ proposed levels of education and work experience. Indeed, although Petitioner asserts that a POSA “would have a PhD or equivalent training,” it allows more work experience to compensate for less education. Pet. 20 (stating that a POSA could have “commensurately less education and more work experience”). We, nevertheless, adopt Patent Owner’s proposal in this aspect because it specifies the years of experience needed. Patent Owner further disputes Petitioner’s proposal that a POSA would have had experience with “implementing and designing library preparation methods for Illumina, the leading NGS platforms in 2013.” Prelim. Resp. 7–8 (quoting Pet. 20, emphasis added by Patent Owner removed). According to Patent Owner, “[t]his level of skill inappropriately requires the POSA to be an inventor of library preparation methods.” Id. at 8. We agree with Patent Owner that “experience with implementing and designing library preparation methods for Illumina” is above ordinary skill. have had experience with DNA sequencing methods and a working knowledge of how these sequencing methods functioned.” Id. As Patent Owner recognizes, the challenged claims relate to obtaining amplicons with an amplified nucleic acid fragment and an appended adaptor and then sequencing the amplicon to generate sequence reads. See Ex. 1005, 25:33– 43. Accordingly, for purposes of this Decision, we find a person of ordinary skill in the art at the critical time would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a person of ordinary skill in the art would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. The person of ordinary skill in the art would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. This definition of a person of ordinary skill in the art is consistent with the skill level reflected in the disclosures of the ’241 patent and prior art. We further note that neither aspect of the dispute over the skill level affects our decision to institute review.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,725,241 - PTAB · Apr 10, 2025 · IPR2024-01431 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 2–6, 28, and 33–37 based on all petition grounds, finding a reasonable likelihood that Haddad138 renders claims 2–6 and 33–37 obvious and Yap anticipates or renders claim 28 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). Here, due to Petitioner’s stipulation, the record does not 9 To the extent Patent Owner’s argument emphasizes that the parties have completed substantial work regarding references asserted in the petition here (PO Fintiv Surreply 1–3), this argument addresses to Fintiv factor three rather than factor four. support that the Petition’s invalidity grounds have been or will be presented to the ITC for consideration on the merits. The record also does not support that the ITC will ever adjudicate the invalidity grounds raised here10 and does not support that the ITC will ever address the dependent claims at issue here. This is, therefore, not a situation where the ITC Investigation will “resolve key issues in the petition.” Fintiv at 13. Thus, this factor weighs against discretionary denial. 7. Fintiv Factor Five: Overlapping Parties Petitioner is the same party as the respondent in the ITC investigation,” slip op. at 15
- 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 the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose 1 Petitioner calls “IPR2024-01431 (‘Petition B’).” See Paper 3 (PETITIONER’S EXPLANATION OF PARALLEL PETITIONS CHALLENGING U.S. PATENT NO. 11,069,737), 1. of determining whether Petitioner meets the threshold for instituting review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be forfeited. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 2–6, 28, and 33–37 of the ’737 patent based upon Petitioner’s asserted challenges to patentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Patent Owner argues11 that Petitioner “offers no motivation to modify Haddad138.” Prelim. Resp. 7–8. Patent Owner specifically argues that 11 Patent Owner also argues that Petitioner does not establish that Haddad138 anticipates claim 2. Prelim. Resp. 5–7. We do not address the anticipation challenge at this time. “Petitioner does not offer any showing on any motivation to modify Figure 9 of Haddad138 to change the configuration from a FSI to BSI architecture.” Id. at 8. On this record, Patent Owner’s argument does not undermine Petitioner’s persuasive showing. As Petitioner argues (Pet. 29), Haddad138 teaches that its “present disclosure” (which would include the Figure 9 disclosure) can be adapted for a front side illumination (FSI) or back side illumination (BSI) configuration. Ex. 1012 ¶ 48. The express teaching of Haddad138 provides motivation to modify Figure 9 of Haddad138. Patent Owner also argues that Petitioner “offers no showing that a POSITA would be able to modify the embodiment of Figure 9 to be back side illuminated with a reasonable expectation of success.” Prelim. Resp. 9. Patent Owner’s argument again does not undermine Petitioner’s persuasive showing. Petitioner cites Haddad138 expressly teaching a FSI or BSI configuration. Pet. 29 (citing Ex. 1012 ¶ 48). Haddad138’s teaching is sufficient, on this record, to establish a reasonable likelihood of Petitioner establishing a reasonable expectation of success at trial. Conclusion as to claim 2” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had a Bachelor’s degree in engineering, physics, or a related or equivalent field, and two or more years of experience researching, developing, designing, and/or evaluating image sensors using photonics. Ex-1004 ¶50. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Ex-1004 ¶50. Pet. 9. Patent Owner does not dispute the level of ordinary skill in the art at this time. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,069,737 - Charter Communications, Inc. v. Touchstream Technologies, Inc.Institution deniedPTAB · Feb 11, 2025 · IPR2024-01232 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any obviousness ground; it also found the petition time-barred.
RulingsInstitution decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“later than one month after we initially instituted inter partes review in the Comcast IPR. See 37 C.F.R. § 42.122(b). As discussed above, however, inter partes review is no longer instituted in the Comcast IPR. Under these circumstances, we do not grant Petitioner’s Joinder Motion because there is no pending proceeding to join. See 35 U.S.C. § 315(c) (“If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition . . . that the Director . . . determines warrants the institution of an inter partes review.”). Petitioner’s Joinder Motion is denied.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownDecided for patent owner
“least in part on a second message including at least one command in a second format.’” Pet. 4 (citing Ex. 1104, 168–173). The cited portion of the prosecution history shows that the applicant distinguished its claims from the prior art based on different first and second formats. The applicant argued in particular, Applicant submits that [the prior art] is completely silent with regard to “receiving, from the remote server device, a first message that includes at least one command in a first format, wherein the first message is received based at least in part on a second message including at least one command in a second format having been sent from the associated remote computing device.” In fact, [the prior art] never describes commands in different formats. . . . Ex. 1104, 170. Based on the applicant’s argument in this regard, we find that the prosecution history limits the scope of claim 1 to different first and second formats. In other words, the applicant’s argument during prosecution distinguishing its claims from the prior art based on different first and second formats overcomes the presumption based on claim differentiation that claim 1 encompasses first and second formats that are the same. See Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015) (“Although claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.”). Accordingly, claim 1 is limited to different first and second formats.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“argument and evidence. As discussed above in the claim construction section, the recited first and second formats are limited to different formats. See supra Part IV.A. To satisfy this aspect of limitation 1D under its theory, Petitioner needs to show that in Danciu the format of the control information sent from the remote control to the server is different from the format of the control information sent from the server to the controlled device. The cited disclosures in Danciu, however, do not teach or suggest that these formats are different. Nor does Petitioner explain adequately how Danciu’s disclosures teach or suggest the two formats are different. We recognize that the control information in Danciu may be “processed” or “repackaged,” as Petitioner asserts, but it is not clear that the control information is processed or repackaged such that the format of the control information sent from the remote control to the server and the format of the control information sent from the server to the controlled device are different. Petitioner does not rely on Mahajan to teach or suggest the recited first and second formats but relies on Mahajan instead as providing “implementation details for transmission of commands for controlling a client.” Pet. 27. Petitioner contends that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Id. at 31. In other words, the controlled device would receive the generic commands sent from the remote control and then translate the generic commands. It is not clear how the proposed combination in this way teaches or suggests the format of a command sent from the remote control to a server is different from the format of a command sent from the server to the controlled device.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Aldrey and Mahajan meets limitation 1D under Petitioner’s second theory. Petitioner only alleges that it would have been obvious to an ordinarily skilled artisan that Mahajan’s RTS Media Abstraction Module could operate at a server like Aldrey’s service provider network 103. Pet. 65. The Federal Circuit has explained that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Petitioner does not adequately explain why an ordinarily skilled artisan would have considered locating Mahajan’s abstraction module at a server, even if the abstraction module could operate at the server. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). We note Petitioner further argues that combining Mahajan and Aldrey would have provided a system where “Aldrey’s end terminal would translate commands associated with a first type of media playing application to a command associated with a second type of media playing application on a STB.” Pet. 66–67; see also id. at 66 (“Mahajan’s server-command teachings could be implemented on Aldrey’s end terminal remote control.”). Arguing that Aldrey’s end terminal would translate commands seems inconsistent with Petitioner’s earlier argument for locating Mahajan’s abstraction module (which translates commands) at Aldrey’s network service provider. See id. at 65–67. Moreover, it is not readily apparent how command translation by Aldrey’s end terminal––rather than Aldrey’s network service provider–– teaches or suggests the format of a command sent from the end terminal to the network service provider is different from the format of a command sent from the network service provider to the STB. Petitioner does not close these logical gaps.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing
The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,048,751 - PTAB · Jan 27, 2025 · IPR2024-01167 · APJ Georgianna W Braden · IPR · Institution
Instituted IPR of claims 1–21 on all petitioned challenges after finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Factor 1 is neutral, Factors 2 and 5 favor discretionary denial, and Factors 3 and 4 weighs against discretionary denial. As set forth above, we determine that balance of the first five Fintiv factors do not favor discretionary denial, and thus, we need not assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). 7. Fintiv Determination The balance of all Fintiv factors do not favor the exercise of our discretionary powers to deny institution. Therefore, we determine that discretionary denial is not appropriate in this case.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework set forth under Advanced Bionics, LLC v. Med-El Electromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics” or “AB”). Under the first prong of that framework, we must determine whether the same or substantially the same art or arguments previously were presented to the Office. If so, we turn to the second prong which focuses on whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8.” slip op. at 21
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“of at least Oct. 25, 2013. Prelim. Resp. 47–48. Patent Owner does not assert that any of petitioner’s references fail to qualify as prior art, except Kleve. Patent Owner asserts that “Kleve is not ‘prior art consisting of patents or printed publications’ as required by § 311(b).” Id. at 48. Although Patent Owner concedes that Kleve is a patent publication, Patent Owner argues it is not prior art consisting of a patent, and Petitioner has not shown Kleve was publicly available before its publication date of May 8, 2014. Id. (citing Ex. 1005, 1). Furthermore, Patent Owner “notes that this issue is currently on appeal before the Federal Circuit in Lynk Labs, Inc. v. Samsung Electronics Co., No. 2023-2346 (Fed. Cir.).” Prelim. Resp. 48–49 n. 4; Prelim. Sur-reply 5. The Federal Circuit recently issued a decision in Lynk Labs and found that “a published patent application can be deemed prior art in an IPR as of the application’s filing date.” Lynk Labs, Inc., No. 2023-2346 (Fed. Cir. Jan. 14, 2025) (affirming the Board’s holding that under § 102, applicable “printed publications” include published applications under § 102(e)(1)). Accordingly, in view of the Federal Circuit’s decision, we are not persuaded by Patent Owner’s argument, which is contrary to the law applied by PTAB.” slip op. at 31
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,738,659
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.