- Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentablePTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision
Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22
Patent outcomesUS 11,333,007 mixedClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,333,007 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Chien-Min SungAll claims unpatentablePTAB · Sep 17, 2025 · IPR2024-00533 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–8 are unpatentable as obvious: claims 1, 3–8 over Chou and Sung ’479; claims 6–7 also over SungECS; and claim 2 over Goers.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We secondly conclude a POSITA would have had at least two years of experience designing and/or developing CMP technology per Patent Owner’s formulation, but we reject Patent Owner’s additional contention that this experience must include designing and/or developing pad dressers specifically. The ’270 patent claims are directed to the structure of a pad dresser, not to a method of making a pad dresser. See Ex. 1001, 17:35– 18:38. According to the ’270 patent specification, the claimed pad dresser structure is designed to condition a polishing pad so the pad may be used to attain “high performance levels in aspects such as uniformity of polished wafer, smoothness of the IC circuitry, removal rate for productivity, longevity of consumables for CMP economics, etc.” during a CMP process. Id. at 1:20–24 (Background of the Invention). Thus, the ’270 patent’s invention generally focuses on optimizing a pad dresser structure to achieve desired results in a CMP process, not necessarily on how to manufacture a pad dresser. As such, we reject Petitioner’s POSITA formulation requiring “experience in the field of integrated circuit processing and fabrication techniques” (Pet. 19) as too generic in the context of the ’270 patent’s claimed invention. We also conclude, in view of the ’270 patent disclosures discussed above, that Dr. Tsai’s opinion that ordinary skill requires experience with manufacturing pad dressers (see Ex. 2011 ¶ 28) is too conclusory and lacking in evidentiary support to be persuasive. See Best Med. v. Elekta, 46 F.4th at 1353 (“The patent’s purpose can also be informative.”).” slip op. at 9
- ExcludeMotion to exclude, deniedDenied
“The Federal Circuit has held: “To offer expert testimony from the perspective of a skilled artisan in a patent case — like for claim construction, validity, or infringement — a witness must at least have ordinary skill in the art.”9 Kyocera Senco Indus. Tools Inc. v. Int’l Trade Commission, 22 F.4th 1369, 1375–77 (Fed. Cir. 2022); see also Osseo Imaging, LLC v. Planmeca USA Inc., 116 F.4th 1335, 1340–41 (Fed. Cir. 2024) (holding that the proffered expert does not need to have acquired the 9 Petitioner cites the Practice Guide’s statements that there is “no requirement of a perfect match between the expert’s experience and the relevant field” and “[a] person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’” Practice Guide 34 (citing SEB v. Montgomery Ward, 594 F.3d at 1373; Sundance v. DeMonte, 550 F.3d at 1363–64). To the extent there is any tension between the Practice Guide (issued in 2019) and the Kyocera holding (issued in 2022), we apply the latter here.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We determine Dr. Shanfield has sufficient education and experience to qualify as a person of ordinary skill in the art pertaining to the ’270 patent. Dr. Shanfield’s Ph.D. in physics satisfies the educational prerequisite of at least a bachelor’s degree in an engineering related field such as physics. See Ex. 1002 ¶ 2, App. A. Furthermore, his advanced degree (Ph.D. in physics) versus ordinary skill (a bachelor’s degree in an engineering related field) provides considerable leeway when turning to the experiential component for ordinary skill. Nonetheless, Dr. Shanfield also has at least two years of experience with designing and developing CMP technology per the experience prerequisite, as follows. Dr. Shanfield worked at Raytheon Corporation for over 10 years, during which he “worked directly with engineers in the selection, installation, and optimization of several chemo-mechanical polishing systems (CMP), including analysis of operational maintenance and performance monitoring,” and he “directly participated in establishing the required metrology (optical thickness monitoring) for maintaining polishing uniformity standards.” Ex. 1002 ¶ 3 (emphasis added). He later joined Draper Laboratory in 2003, where he currently is the Division Leader of Advanced Hardware Development. See id. ¶ 5. During Dr. Shanfield’s time at Draper, the laboratory “acquired several semiconductor-grade CMP systems for the purpose of fabricating multi-chip modules and for planarization operations in MEMS devices,” and he was “involved in their operation and optimization.” Id. (emphasis added). When asked during a deposition whether he is “an expert in CMP equipment design,” Dr. Shanfield stated he is “very familiar with the design of CMP equipment” because he has “seen many systems” and “installed or supervised the installation of systems.” Ex. 2003, 17:22–19:3. He testified he has “designed apparatus that worked with CMP equipment” although he has not “designed the CMP equipment itself.” Id. at 18:13–19. As an example of being “involved in the manufacture of CMP pad dressers” specifically, Dr. Shanfield stated that during his time at Raytheon, he worked with other professionals “to use the CMP system to process MEMS, M-E-M-S, devices” which “needed a certain kind of planarization process [that] required constant conditioning,” so the team “had to try to fabricate something that would provide conditioning that would last longer.” Id. at 19:4–20:9. Thus, we conclude Dr. Shanfield qualifies as a POSITA pertaining to” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“apply the same claim construction standard “used in the federal courts, in other words, the claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 83 Fed. Reg. 51,340, 51,358 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Under the Phillips 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, 415 F.3d at 1312–13. Petitioner proposes constructions for terms: “superabrasive,” “protrusion,” “sharp portion,” and “attitude.” Pet. 20–21. Patent Owner does not propose constructions for any claim term. See generally, PO Resp. We discern constructions of these claim phrases or others are not required for the purposes of this Decision. 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 15
Patent outcomesUS 8,974,270 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,974,270 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Chien-Min SungSome claims unpatentablePTAB · Sep 17, 2025 · IPR2024-00535 · APJ George R Hoskins · IPR · Final written decision
Claims 1–9 and 12–21 are unpatentable over the asserted grounds; claims 10 and 11 were not shown unpatentable because Tsai and Sung ’026 did not establish the required number of working particles.
RulingsFinal written decision- Skill levelOther
“Level of Ordinary Skill in the Art and Patent Owner’s Motion to Exclude Dr. Shanfield’s Testimony ..................................................... 9 1. Person of Ordinary Skill in the Art Pertaining to the ’802 Patent .................................................................................... 9 2. Patent Owner’s Motion to Exclude Dr. Shanfield’s” slip op. at 2
- ExcludeMotion to exclude, deniedDenied
“Level of Ordinary Skill in the Art and Patent Owner’s Motion to Exclude Dr. Shanfield’s Testimony ..................................................... 9” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“16–18 being obvious over Tsai and Sung ’026 as our own in this Decision. See Pet. 56–62, 70–75. We accordingly conclude a preponderance of the evidence presented here establishes the unpatentability of these claims. Patent Owner has waived any opposition other than his filing date priority arguments discussed above. See Inst. Dec. 78; Paper 15, 10.” slip op. at 106
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“concluded: “It is not clear to us, and Dr. Shanfield does not explain persuasively, how Tsai’s disclosure that its ODD has more cutters (i.e., working particles per claim 9) than the conventional BDD leads to his conclusion that all of the diamond particles in the ODD are cutters.” Inst. Dec. 76 (emphasis added). Patent Owner urges us to maintain that conclusion, for various reasons, including testimony from Dr. Tsai. See PO Resp. 49–52; Ex. 2011 ¶¶ 43–47. Patent Owner also reiterates his opposition to Dr. Shanfield’s “extrapolation” from Tsai’s Figures to reach a conclusion as to the total number of diamond grits in the Tsai ODD, including the “working” particles of claims 8, 9, and 12. See id. at 50–51 (citing Ex. 1002 ¶¶ 186–189).” slip op. at 108
Patent outcomesUS 9,724,802 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,724,802 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Chien-Min SungAll claims unpatentablePTAB · Sep 17, 2025 · IPR2024-00534 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–6, 9–12, and 20 are anticipated by or obvious over Sung ’026; claims 5–10 and 13–19 are obvious over the listed combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“We secondly conclude a POSITA would have had at least two years of experience designing and/or developing CMP technology per Patent Owner’s formulation, but we reject Patent Owner’s additional contention that this experience must include designing and/or developing pad dressers” slip op. at 21
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In his deposition testimony, Dr. Tsai testifies that the Sung ’026 patent application publication “intends to make a diamond disk that has all the protrusion[s] with identical heights and with the same orientation.” Ex. 1049, 50:2–4. Dr. Tsai also testified that “[i]n addition, [Sung ’026] also intends to control the depths of penetrating into the pad. For example, if I want to penetrate 10 micron into the pad, then the protrusion height should be at least 10 micron.” Id. at 50:10–13. So, contrary to Dr. Tsai’s Declaration testimony in Ex. 2011 ¶ 69, Dr. Tsai clarifies in his deposition testimony that Sung ’026 intends to combine three distinct aspects or embodiments. He testifies that “first one is that you need to have the same orientation, same shape so you can have the consistency; and No. 2, you would like to have the same height; and No. 3, you would like to control the penetration depths.” Ex. 1049, 51:2–6. Dr. Tsai was then asked “[s]o Sung ’026 is trying to combine all three of those together, correct?” Id. at 51:9– 10. His answer was “[t]hat’s correct, because if you can have a very good control of those, then -- and that time period back then, then you can make a very perfect diamond disk.” Id. at 51:11–13. Based on the evidence as discussed above, we determine that Sung ’026 discloses the elements and limitations in clause 1[C]. In particular, we credit Dr. Shanfield’s testimony (as summarized above) over Dr. Tsai’s declaration testimony, because Dr. Tsai’s deposition testimony essentially agreed with Dr. Shanfield that Sung ’026 discloses all the aspects recited in claim 1 together in a single embodiment.” slip op. at 48
- ExcludeMotion to exclude, deniedDenied
“Moreover, our general approach for considering challenges to the admissibility of evidence was outlined in Corning Inc. v. DSM IP Assets B.V., IPR2013-00053, Paper 66 at 19 (PTAB May 1, 2014). As stated in Corning, similar to a district court in a bench trial, the Board, sitting as a non-jury tribunal with administrative expertise, is well-positioned to determine and assign appropriate weight to evidence presented. Id. (citing Donnelly Garment Co. v. NLRB, 123 F.2d 215, 224 (8th Cir. 1941) (stating, in the context of reviewing an administrative determination of the National Labor Relations Board based on findings by a Trial Examiner, “We think that experience has demonstrated that in a trial or hearing where no jury is present, more time is ordinarily lost in listening to arguments as to the admissibility of evidence and in considering offers of proof than would be consumed in taking the evidence proffered . . . One who is capable of ruling accurately upon the admissibility of evidence is equally capable of sifting it accurately after it has been received . . . .”)). Moreover, “there is a strong public policy for making all information filed in an administrative proceeding available to the public.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00010, Paper 59 at 40 (PTAB February 24, 2014). Rather than excluding evidence that is allegedly hearsay, confusing, misleading, untimely, and/or irrelevant, we will simply not rely on it or give it little or no probative weight, as appropriate, in our analysis. “In an inter partes review, we regard it as the better course to have a complete record of the evidence to facilitate public access, as well as appellate review.” Sony Computer Entm’t Am. LLC v. Game Controller Tech. LLC, IPR2013-00634, Paper 32 at 31 (PTAB Apr. 14, 2015); see also Gnosis S.p.A. v. S. Alabama Med. Sci. Found., IPR2013-00118, Paper 64 at 43 (PTAB June 20, 2014) (citing Donnelly, 123 F.2d at 224 (“If the record on review contains not only all evidence which was clearly admissible, but also all evidence of doubtful admissibility, the court which is called upon to review the case can usually make an end of it, whereas if evidence was excluded which that court regards as having been admissible, a new trial or rehearing cannot be avoided.”)).” slip op. at 32
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“According to Patent Owner, Petitioner’s argument is that “several distinct portions of Sung ’026 purportedly, when viewed together, disclose an embodiment that satisfies the recitation of Claim Limitation [1C].” Id. at 20. Patent Owner asserts, however, that “these individual embodiments of Sung ’026—which it describes in separate portions of the reference as discrete ‘aspects’ of the invention of Sung ’026—cannot not be used collectively to satisfy the anticipation standard.” Id. (citing Net MoneyIN, 545 F.3d at 1371). Simply put, it is Patent Owner’s position that because Sung ’026 fails to disclose these various aspects in a single embodiment as Claim Limitation [1C] recites, Sung ’026 cannot anticipate claim 1. It is Petitioner’s position that Dr. Tsai’s deposition testimony supports Petitioner’s assertions that Sung ’026 anticipates independent claim 1 because the various alleged “individual embodiments” are part of a unified whole that overcome the circumstances discussed in Net MoneyIN. In his deposition testimony, Dr. Tsai testifies that the Sung ’026 patent application publication “intends to make a diamond disk that has all the protrusion[s] with identical heights and with the same orientation.” Ex. 1049, 50:2–4. Dr. Tsai also testified that “[i]n addition, [Sung ’026] also intends to control the depths of penetrating into the pad. For example, if I want to penetrate 10 micron into the pad, then the protrusion height should be at least 10 micron.” Id. at 50:10–13. So, contrary to Dr. Tsai’s Declaration testimony in Ex. 2011 ¶ 69, Dr. Tsai clarifies in his deposition testimony that Sung ’026 intends to combine three distinct aspects or embodiments. He testifies that “first one is that you need to have the same orientation, same shape so you can have the consistency; and No. 2, you would like to have the same height; and No. 3, you would like to control the penetration depths.” Ex. 1049, 51:2–6. Dr. Tsai was then asked “[s]o Sung ’026 is trying to combine all three of those together, correct?” Id. at 51:9– 10. His answer was “[t]hat’s correct, because if you can have a very good control of those, then -- and that time period back then, then you can make a very perfect diamond disk.” Id. at 51:11–13. Based on the evidence as discussed above, we determine that Sung ’026 discloses the elements and limitations in clause 1[C]. In particular, we credit Dr. Shanfield’s testimony (as summarized above) over Dr. Tsai’s declaration testimony, because Dr. Tsai’s deposition testimony essentially agreed with Dr. Shanfield that Sung ’026 discloses all the aspects recited in claim 1 together in a single embodiment.” slip op. at 48
Patent outcomesUS 9,138,862 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,138,862 - PTAB · Mar 24, 2025 · IPR2024-01420 · APJ Frances L Ippolito · IPR · Institution
Instituted IPR of claims 1–19 on all presented grounds after finding a reasonable likelihood that at least one claim is unpatentable, and declining Fintiv discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–19 of the ’402 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’402 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner filed a Sotera stipulation. Paper 11. Petitioner’s Sotera stipulation “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19 (citing Sand Revolution, Paper 24 at 12). Accordingly, this factor weighs against discretionary denial.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’402 patent “would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent technical training. Additionally, they would have at least three years of experience in designing or programming internet-related processes, such as user profile management and/or web-based targeted advertising.” Pet. 5 (citing Ex. 1003 ¶¶ 53–55). For purposes of the Preliminary Response, “Patent Owner applies Petitioner’s definition of a person of ordinary skill in the art (‘POSITA’).” Prelim. Resp. 8. 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner: “Because the prior art asserted herein discloses the preferred embodiment within the indisputable scope of the claims, the Board need not construe the outer bounds of the claims as part of these proceedings.” Pet. 9 (citing Ex. 1003, ¶ 57). Patent Owner responds that, at the preliminary stage of this proceeding, “no term needs explicit construction to resolve any controversy between the parties.” Prelim. Resp. 9. We do not need to construe any terms expressly to reach our decision on institution. 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§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,562,402 - PTAB · Feb 27, 2025 · IPR2024-01228 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Fukui.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Petitioner shows a reasonable likelihood that it would prevail in showing that claim 1 is unpatentable over Fukui. Accordingly, we institute inter partes review of all challenged calms based on all grounds asserted in the Petition. See SAS, 138 S.Ct. at 1354.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“III. DISCRETION TO DENY INSTITUTION UNDER 35 U.S.C. § 325(d) Patent Owner argues that if the Board determines that Petitioner’s Fukui-based grounds 1 and 2 are deficient, then the Board should deny institution under § 325(d). Prelim. Resp. 26. In particular, Patent Owner asserts that remaining grounds 3 through 5 rely on art (i.e., Sauter) a reference that is substantially similar to art that was before the Examiner (i.e., Sedor). Id. at 26–27. Because we do not determine that Fukui-based grounds are deficient, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems.” Pet. 26. (citing Ex. 1003 ¶¶ 19–21). At this stage of the proceeding, Patent Owner neither responds to Petitioner’s proposed definition, nor provides a definition of its own. See Prelim. Resp. Petitioner’s undisputed proposed definition appears to be consistent with the cited prior art and the disclosure of the ’422 patent, and we adopt it for purposes of this Decision.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“Based on the present record, we agree with Petitioner that Patent Owner’s statements during prosecution are relevant to claim construction. Pet. 24–25. During prosecution of the parent application to the ’422 patent, Patent Owner stated, inter alia, that “a person of ordinary skill in the art would understand that the width of a cassette is simply the width of the cassettes from side to side and not some other ‘dimension’ such as the number of receptables or the like.” Ex. 1002, 187. Patent Owner further stated that it disagreed with the Examiner’s statement that paragraph 15 of the specification6 defines width in terms of the number of receptacles and that such a definition of width makes no sense in view of other claims where the standard with is defined in terms of a width of front edge of a tray on which the cassettes are secured. Id. We note that at this stage of the proceeding, Patent Owner has not provided any argument or evidence opposing Petitioner’s proposed construction or supporting the claim construction that it proposed during the district litigation. Our construction is preliminary and the parties are invited to address this claim construction more fully during trial.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,656,422 - Robert Bosch LLC / Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.No claims unpatentablePTAB · Feb 3, 2025 · IPR2023-00292 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–3, 6, 11, 12, 14, 15, and 18–20 were not shown unpatentable because the asserted combinations failed to establish the claimed substantially constant hydraulic-fluid thickness.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Westport does not dispute Bosch’s proposed definition of the level of skill in the art. PO Resp. 4 (quoting Pet. 23). Based on our review, we see no reason not to adopt Bosch’s undisputed definition of the level of skill in the art, as it appears consistent with the prior art and the specification of the ’829 patent.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms “that are in controversy” need be construed and “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, there does not appear to be a dispute over the meaning of any claim terms. And, after reviewing the record, we do not perceive the need to expressly construe any particular claim term in order to determine patentability of the challenged claims.” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In contrast, the testimony of Bosch’s expert ignores Klügl’s express teachings and is fraught with contradictions that undermine the weight of that testimony. While this case may be seen as a battle of the experts over their respective interpretations of Klügl, it is clear that Bosch’s expert loses given his inability to credibly explain his opinions during cross-examination. For instance, despite opining in his declaration that Klügl satisfies claim element 1(e) because “the fluid in chamber 5 is held in place by a membrane 6 and moves through a cylindrical space of constant width and unchanging shape” (Ex. 1003 ¶ 220 (emphasis added)), surprisingly, Bosch’s expert could not, or would not, provide his opinion when asked on cross-examination about the meaning of “flexible” and “membrane” in the context of Klügl’s disclosure— Q. [By Westport’s counsel] What’s your understanding what flexible means in the context of the Klugl reference? . . . A. [By Bosch’s expert] Again, I haven’t been asked to offer a formal opinion of what flexible means in light of this, but if you want to talk about a specific -- excuse me -- part of the document, I’d be happy to. Q. What is a membrane? A. Usually, it’s a thin sheet of material but I haven’t formed a formal opinion on it. Q. What is a flexible membrane? A. Again, I haven’t offered a formal opinion what a flexible membrane is.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Westport. That is because Bosch’s argument that Klügl’s hydraulic fluid maintains substantially constant thickness is premised on the erroneous belief that Klügl’s membrane 6 will not flex. But, as Westport correctly notes, Klügl expressly teaches that membrane 6 is “flexible.” See, e.g., Ex. 1006, 7:45–47 (“[F]lexible membranes 6, 8, 26 . . . have a progressive characteristic curve of the spring force in relation to the spring deflection.”), 7:68–9:31 (repeatedly referencing “first flexible element (6)” and “first flexible membrane (6)”). Consistent with this flexibility, Klügl explains that membrane 6 flexes to maintain contact with drive piston 3, stating specifically that “in the rest position without being actuated due to thermal influences or signs of aging, . . . the first membrane 6 is moved in the direction of the drive piston 3” or “is pushed in by the drive piston 3 so that the transmission medium is pressed through the throttle 10 into the compensation chamber 7.” Ex. 1006, 3:63–4:10 (emphases added). And because Klügl’s membrane 6 flexes when transmission module 2 is unactuated, it follows that membrane 6 will also flex when transmission module 2 is actuated.” slip op. at 15
Patent outcomesUS 6,298,829 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 6,298,829 - Robert Bosch LLC / Mercedes-Benz USA, LLC v. Westport Fuel Systems Canada Inc.No claims unpatentablePTAB · Feb 3, 2025 · IPR2023-00293 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–3, 6, 13, 14, 17–21, and 26–28, 41 were not shown unpatentable because the asserted combinations did not establish the claimed hydraulic link limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A POSITA in the technology field of the ’138 patent would have had a degree in mechanical engineering or a similar discipline, along with 2 years of professional experience working with the design and development of fuel injection systems for internal combustion engines or an equivalent level of skill, knowledge, and experience. (See Ex. 1003, ¶¶ 37–39, 41.) This POSITA would be aware of and generally knowledgeable about how fuel injector valves are structured and operate, and how they are used to deliver fuel to an engine’s combustion chambers. (Id., ¶ 40.) Pet. 23. Patent Owner does not dispute Petitioner’s proposed definition. See PO Resp. 4. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the complete record, we do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted, alteration in original)).” slip op. at 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“mere fact” that Klügl labels the membrane as “flexible.” As discussed, Patent Owner explains Klügl teaches membrane 6 is flexible and that membrane 6 deflects and moves in response to fluid pressure in chamber 5 and contact with piston 3. PO Resp. 34 (citing Ex. 1006, 3:63–4:10). Additionally, Dr. Atkinson’s testimony is consistent with Klügl’s disclosure. Dr. Atkinson, explains that “[i]n all embodiments shown, Klügl only ever specifies and describes membrane 6 as a “flexible” membrane or element acknowledging that this flexibility is a necessary and desired feature of its intended purpose and behavior.” Ex. 2022 ¶ 80. With this underlying disclosure in mind, Dr. Atkinson further reasons that a flexible membrane will tend to deform longitudinally upward where it contacts the drive piston and bulge outward based on the structure disclosed in Figure 1. See id. ¶¶ 63, 66–67, 77–81, 87. In contrast, Dr. Quinlan’s testimony in many instances, including this one, is substantively incomplete and fraught with contradictions that undermine the weight of his testimony. For example, at his cross- examination deposition, he testified that he had seen and worked with membranes, but could not provide his opinion on the meaning of “flexible” or “membrane” as disclosed in Klügl. See Ex. 2025, 47:14–48:1. Dr. Quinlan was then directed to column 8 in Klügl, where Klügl teaches among other things that “the transmission module (2) has a pressure chamber (5), which is filled with a transmission medium and is delimited by a first flexible membrane (6).” See id. at 65:5–15; Ex. 1006, 8:44–46 (emphasis added). Provided below is the exchange between Patent Owner’s counsel and Dr. Quinlan regarding this express disclosure: slip op. at 37
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Figure 1 of Klügl depicts an injection valve including housing 12 and piezoelectric actuator 1, which is arranged between upper stop 13 and transmission module 2. Ex. 1006, 1:47–51. We observe that transmission module 2 includes pressure chamber 5 that is at least partially filled with hydraulic fluid and is “delimited” by first membrane 6. Id. at 1:60–62, 1:68–2:2. Throttle or connecting bore 10 connects pressure chamber 5 to compensation chamber 7. Id. at 1:62–66. The connecting bore or throttle allows transmission fluid to flow between pressure chamber 5 and compensation chamber 7. Id. at 3:56–4:10. We further note that Klügl expressly teaches first membrane 6 is “flexible.” Ex. 1006, 7:45–47 (“[F]lexible membranes 6, 8, 26 . . . have a progressive characteristic curve of the spring force in relation to the spring deflection.”). Indeed, consistent with this flexibility, Klügl explains that membrane 6 “moves” to maintain contact with drive piston 3. Specifically, Klügl teaches: [i]f the piezoelectric actuator 1 shortens in the rest position without being actuated due to thermal influences or signs of aging in relation to the housing 12, the spring plate 8 pushes the transmission medium from the compensation chamber 7 via the throttle 10 into the pressure chamber 5, so that the first membrane 6 is moved in the direction of the drive piston 3 and, as a result, the drive piston 3 bears against the first membrane 6 despite the shortening of the piezoelectric actuator 1. However, if the distance between the piezoelectric actuator 1 and the drive piston 3 is reduced, the first membrane 6 is pushed in by the drive piston 3 so that the transmission medium is pressed through the throttle 10 into the compensation chamber 7 against the spring force of the spring plate 8. As a result, the drive piston 3 is always in contact with the first membrane 6 in this case as well. Id. at 3:63–4:10 (emphases added).” slip op. at 34
Patent outcomesUS 6,575,138 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,575,138 - PTAB · Jan 27, 2025 · IPR2024-01142 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution on claims 5, 6, 8, 13, 14, 16, and 18 under § 314(a), concluding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“denial because district court is very likely to address patentability issues at trial before we would issue a final written decision. Factors 3 and 4 weigh marginally against discretionary denial. Factor 5 either weighs in favor of discretionary denial or is neutral, but even if it were neutral, factor 2 alone outweighs the marginal weight of factors 3 and 4. Based on our assessment, we determine that Fintiv Factors 1–5 favor exercising discretion to deny institution. With that determination in mind, we proceed to evaluate Fintiv Factor 6. G. Fintiv Factor 6: Other Circumstances that Impact the Board’s Exercise” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“We further note that Petitioner’s general view that it would have been obvious to a person of ordinary skill in the art to modify Jung to arrive at the pertinent limitation is not well supported and somewhat circular. See Pet. 42–43. It is inadequately explained why a skilled artisan would have reasonably sought to modify Jung so that it then “expressly teaches” what is required by the claims, as is advanced by Petitioner. See id. at 42. It is a dubious proposition that simply seeking to account for the requirements of the challenged claims serves as suitable reasoning that would have prompted modification of the “express[] teach[ings]” of a reference.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A] person of ordinary skill in the art at the time of the alleged invention of the ’868 patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. Ex-1003, ¶ 48. A POSITA would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. Id. More education may supplement practical experience or vice versa. Id. Pet. 20–21. Patent Owner does not offer an assessment of its own, or dispute Petitioner’s proposed level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“proceeding. See Pet. 12. Patent Owner provides a construction of the phrase “to derive, based on a beam reference signal of the network beam, a UE beam,” which Patent Owner contends is not necessary to substantiate its arguments, but is offered to “elucidate[] the distinction between the ’868 Patent and the alleged prior art from the reasons” offered by Patent Owner in its Preliminary Response. PO Resp. 8. In particular, Patent Owner contends that the above-noted phrase means “selecting a UE beam from a plurality of candidate UE beams based on a beam reference signal of the network beam.” Id. Patent Owner explains the basis for its proposed construction of the relevant phrase through citation to content of the ’868 patent including Figures 21 and 22 of the patent along with description of those Figures. See Prelim. Resp. 8–10. In reviewing the basis for Patent Owner’s proposed claim construction, we conclude that the construction has ample and adequate support in the record before us. We determine that no other claim term need be addressed expressly 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 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,887,868 - 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.