- PTAB · Nov 6, 2025 · PGR2025-00040 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–9, 11–33, and 35–38 on all petition grounds, finding it more likely than not that Hassfjell-Hoff anticipates at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’437 patent is eligible for post-grant review and that it is more likely than not that at least one challenged claim of the ’437 patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of all challenged claims of the ’437 patent.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“Here, Patentee Sciencons AS filed a statutory disclaimer of claims 10 and 34 of the ’437 patent. Ex. 2001; Prelim. Resp. 43. Based on our review of Exhibit 2001 and the Office’s public records, we find that the disclaimer of claims 10 and 34 complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Accordingly, we treat claims 10 and 34 as having never been part of the ’437 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because post-grant review cannot be instituted based on disclaimed claims, claims 10 and 34 are outside the scope of this proceeding. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 1–9, 11–33, and 35– 38, the remaining challenged claims that have not been disclaimed.” slip op. at 6
- PTAB / AIA Trials › Real party in interest / privityGranted
“Sciencons AS also states that ARTBIO, Inc. is responsible for defending the ’437 patent in this proceeding and requests that ARTBIO, Inc. be included in the caption for this proceeding.2 Paper 4, 1. ARTBIO, Inc. has signed powers of attorney appointing the same practitioners that were appointed by Sciencons AS to transact all business associated with the instant post-grant review review of the ’437 patent. See Paper 3. To date, no objection has been raised to Patent Owner’s request. Given Sciencons AS’s representation that ARTBIO, Inc. is currently the exclusive licensee of the ’437 patent and is responsible for defending the ’437 patent, we grant Sciencons AS’s unopposed request that ARTBIO, Inc. be included in the caption. For convenience we refer to Sciencons AS and the purported exclusive licensee ARTBIO, Inc. collectively as “Patent Owner.” As stated supra, to the extent any party disputes ARTBIO, Inc.’s right to participate in this proceeding or to be included in the caption, the party shall request authorization to brief the issue within 10 business days of this Decision.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“nuclear chemistry, radiochemistry, or materials science, or a comparable field of study, plus approximately two to three years of professional experience with radioisotope generators, radiopharmaceutical chemistry, nuclear medicine, or other relevant industry experience” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 2–3 (citing Ex. 1002 ¶ 33; Ex. 1019 ¶ 27). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed definition nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposed definition of a POSITA.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 12,249,437 - PTAB · Oct 29, 2025 · IPR2025-00918 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1–11 on all asserted grounds and granted Canadian Solar’s motion for joinder in IPR2025-00007.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–11 of the ’104 patent in IPR2025-00007 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00007, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’104 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner did not file an opposition to Petitioner’s Motion for Joinder. Upon consideration of Petitioner’s arguments, we are persuaded that it is appropriate under these circumstances to join Petitioner to the proceeding in IPR2025-00007. Petitioner’s agreement to accept an “understudy” role and to not actively participate in IPR2025-00007 unless the current petitioner ceases to participate will limit any potential impact on the trial schedule and will avoid increasing the costs or complexity of the proceeding. Therefore, joinder of 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Petitioner to IPR2025-00007 will further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. 37 C.F.R. § 42.1(b).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’104 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’104 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,722,104 - PTAB · Oct 29, 2025 · IPR2025-00917 · APJ Debra L Dennett · IPR · Institution
The Board instituted IPR on claims 1–17 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable, and granted Canadian Solar’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–17 of the ’009 patent in IPR2025-00006 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00006, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’009 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner did not file an opposition to Petitioner’s Motion for Joinder. Upon consideration of Petitioner’s arguments, we are persuaded that it is appropriate under these circumstances to join Petitioner to the proceeding in IPR2025-00006. Petitioner’s agreement to accept an “understudy” role and to not 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. actively participate in IPR2025-00006 unless the current petitioner ceases to participate will limit any potential impact on the trial schedule and will avoid increasing the costs or complexity of the proceeding. Therefore, joinder of Petitioner to IPR2025-00006 will further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. 37 C.F.R. § 42.1(b).” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 5 (citing Ex. 1003 ¶ 49). In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’009 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’009 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is necessary to resolve this Petition.” Pet. 25. For purposes of this Decision, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,230,009 - Advancell Pty Ltd.InstitutedPTAB · Oct 14, 2025 · PGR2025-00029 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–6 and 8–20 on all asserted grounds, finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After reviewing the parties’ briefs and supporting evidence, we determine that Petitioner has sufficiently shown that Hassfjell-Hoff discloses each element of claim 1. As such, Petitioner’s argument and evidence as set forth above and further discussed below, sufficiently shows that it is more likely than not that claim 1 is anticipated by Hassfjell-Hoff, notwithstanding Patent Owner’s arguments, also addressed below.” slip op. at 16
- Adverse judgmentAdverse judgmentOther
“Here, Patentee Sciencons AS filed a statutory disclaimer of claim 7 of the ’603 patent. Ex. 2001. Based on our review of Exhibit 2001 and U.S. Patent and Trademark Office public records, we find that the disclaimer of claim 7 complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Accordingly, we treat claim 7 as having never been part of the ’603 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because post-grant review cannot be instituted based on disclaimed claims, claim 7 is outside the scope of this proceeding. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 1–6 and 8– 20, the remaining challenged claims that have not been disclaimed.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityGranted
“Sciencons AS also states that ARTBIO, Inc. is responsible for defending the ’603 patent in this proceeding and requests that ARTBIO, Inc. be included in the caption for this proceeding.2 Paper 4, 1; Paper 7, 1. ARTBIO, Inc. has signed powers of attorney appointing the same practitioners that were appointed by Sciencons AS to transact all business associated with the instant post-grant review proceeding of the ’603 patent. See Papers 3, 4, 7, 8. To date, no objection has been raised to Patent Owner’s request. Given Sciencons AS’s representation that ARTBIO, Inc. is currently the exclusive licensee of the ’603 patent and is responsible for defending the ’603 patent, we grant Sciencons AS’s unopposed request that ARTBIO, Inc. be included in the caption. For convenience we refer to Sciencons AS and the purported exclusive licensee ARTBIO, Inc. collectively as “Patent Owner.” As stated supra, to the extent any party disputes ARTBIO, Inc.’s right to participate in this proceeding or to be included in the caption, the party shall request authorization to brief the issue within 10 business days of this Decision.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in chemistry, chemical engineering, physics, nuclear chemistry, radiochemistry, or materials science, or a comparable field of study, plus approximately two to three years of professional experience with radioisotope generators, or other relevant industry experience” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 2–3 (citing Ex. 1002 ¶ 33; Ex. 1017 ¶ 27). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed definition nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposed definition.” slip op. at 10
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 12,125,603 - Hilti, Inc. / Snap-On Incorporated v. Milwaukee Electric Tool CorporationNo claims unpatentablePTAB · Nov 14, 2016 · IPR2015-01166 · APJ Patrick R Scanlon · IPR · Final written decision
Claims 1–19 were not shown unpatentable under § 103 over Takano and Yanai because the proposed combination relied on unsupported assumptions and impermissible hindsight.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“After institution, Snap-On Incorporated (“Snap-On”) filed a Petition and a Motion for Joinder to this proceeding. IPR2016-00345, Papers 2, 3. We granted the Motion for Joinder, and IPR2016-00345 was joined with IPR2015-01166 and terminated. Paper 24, 6. Consequently, Hilti and Snap-On (collectively, “Petitioner”) are joined in this proceeding.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construed three claim terms in our Decision to Institute: (1) “hand held power tool,” (2) “battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps,” and (3) “nominal voltage.” Inst. Dec. 6–12. Neither party has indicated that the interpretations for those phrases were improper, and we do not perceive any reason or evidence that now compels any deviation from our initial determinations. Accordingly, the following interpretations are not in dispute and apply to this Decision:” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“select a positive electrode surface area of 540 cm2 for Yanai’s cell 1-4 would be to rely on the disclosure of Adachi; that is, to assert that it would have been obvious to one of ordinary skill in the art to modify the combination of Takano and Yanai with the teaching of Adachi. Petitioner, however, has repeatedly argued that this is not what it proposes. Reply 3; Tr. 22:22–23:4. Furthermore, we agree with Patent Owner that the Petition does not provide an adequate reason to combine Adachi with Takano and Yanai.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“Furthermore, Petitioner’s obviousness analysis relies on (1) selecting an 18650-size or 26650-size cell; (2) estimating the positive electrode surface area to be 540 cm2; (3) selecting a foil thickness of 15 micrometers; (4) selecting an average discharge voltage of 3.6 volts; and (5) for 18650-size cells, connecting two in parallel. Petitioner fails to point out how the prior art indicates that using all of these particular values in combination would be desirable for a lithium-based battery pack when several other possible values could have been selected. Where “‘the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful,’ courts should reject ‘hindsight claims of obviousness.’” In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1070–71 (Fed. Cir. 2012) (quoting In re Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)). Accordingly, we agree with Patent Owner that Petitioner’s obviousness analysis relies on impermissible hindsight.” slip op. at 20
Patent outcomesUS 7,999,510 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 7,999,510 - Lupin Ltd. / Lupin Pharmaceuticals Inc. et al. v. Senju Pharmaceutical Co., Ltd.No claims unpatentablePTAB · Sep 12, 2016 · IPR2016-00091 · APJ Erica A Franklin · IPR · Final written decision
Claims 1–30 were not shown unpatentable under § 103 over Sallmann and Ogawa; unexpected properties and objective evidence outweighed the showing of obviousness.
RulingsFinal written decision- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“On February 25, 2016, we instituted an inter partes review in IPR2016-00091 and granted the motion for joinder with IPR2015-01100, adding InnoPharma Licensing, Inc., InnoPharma Licensing LLC, InnoPharma Inc., InnoPharma LLC, Mylan Pharmaceuticals, and Mylan Inc. to the Lupin petitioner (collectively “Petitioners”). Paper 22. Petitioners filed a Reply to the Patent Owner Response. Paper 35 (Public), Paper 37 (Parties and Board Only), (collectively, “Reply”).” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We agree with Petitioners. Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Patent Owner has not identified any controversy as to the scope of the claim terms for which it seeks construction. Nor does Patent Owner explain specifically why adopting the district court’s construction of the identified terms is necessary to resolve an issue in this proceeding. Accordingly, we decline to adopt the district court’s claim construction. Rather, because the parties identify no controversy as to the scope of any claim terms, we conclude that, for the purposes of this decision, no claim term requires express construction.” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“development of pharmaceuticals, and would have a Ph.D. and several years of experience in the field.” Pet. 6. Patent Owner asserts, more broadly, that a person of ordinary skill in the art would have at least a bachelor’s degree in a field such as chemistry, pharmaceutical chemistry or a related discipline with 3–5 years of work experience. PO Resp. 7 (citing Ex. 2082 ¶¶ 47–48 (Williams Decl.)). Based on the record as a whole, we find that Patent Owner’s description more appropriately encompasses the broad education that the person of ordinary skill in the relevant art may possess. Thus, we adopt that description. We note, however, that neither party asserts specifically that the ultimate conclusion of obviousness turns on adoption of a particular level of ordinary skill.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for patent owner
“Given these prior art teachings, Petitioners persuade us that an ordinary artisan would have recognized that tyloxapol and polysorbate 80 were interchangeably useful as non-ionic surfactants in acidic NSAID-containing ophthalmic aqueous solutions, and, therefore, absent persuasive objective evidence to the contrary, that is enough to support the proposed substitution, even in the absence of an express suggestion to do so. In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997); In re Fout, 675 F.2d 297, 301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967)). As to the stability requirements in claims 1, 11, and 19, the ’606 patent discloses that the tyloxapol range effective to stabilize a bromfenac-containing solution is between about 0.01 and 0.5 w/v %. Ex. 1004, 5:19– 25. Both the tyloxapol concentration described in Sallmann (0.1 w/v %) and the polysorbate 80 concentration described in Ogawa (0.15 w/v %), fall within the stabilizing range set out in the ’606 patent. Therefore, in addition to having a reason to substitute the tyloxapol recited in claims 1, 11, and 19 of the ’606 patent for the polysorbate 80 in Ogawa’s Example 6, an ordinary artisan also had a reason to include the tyloxapol at a concentration encompassed by each of those claims.” slip op. at 16
Patent outcomesUS 8,927,606 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,927,606 - Lupin Ltd. / Lupin Pharmaceuticals Inc. et al. v. Senju Pharmaceutical Co., Ltd.No claims unpatentablePTAB · Sep 12, 2016 · IPR2016-00089 · APJ Francisco C Prats · IPR · Final written decision
Claims 1–30 were not shown unpatentable because the unexpected properties and commercial success of the claimed formulations outweighed the obviousness showing over Sallmann and Ogawa.
RulingsFinal written decision- BurdenNot shown unpatentable
“ordinary artisan would have recognized that tyloxapol and polysorbate 80 were interchangeably useful as non-ionic surfactants in acidic NSAID-containing ophthalmic aqueous solutions, and, absent persuasive objective evidence to the contrary, that is enough to support the proposed substitution, even in the absence of an express suggestion to do so. In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997); In re Fout, 675 F.2d 297, 301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967)).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“acknowledge that, under Microsoft v. Proxyconn, claim construction in inter partes reviews must not be unreasonably broad or inconsistent with the specification of the patent under consideration. 789 F.3d at 1298. In general, however, only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). In the instant case, Patent Owner does not identify any controversy as to the scope of the claim terms for which it seeks construction. Nor does Patent Owner explain specifically why adoption of the district court’s construction of the identified terms is necessary to resolve any of the issues critical to this proceeding. Accordingly, we decline to adopt the district court’s claim construction. Rather, because the parties identify no controversy as to the scope of any claim terms, we conclude that, for the purposes of this decision, no claim term requires express construction.” slip op. at 8
- Skill levelOther
“witnesses advance somewhat different opinions. See Pet. 6–7 (citing Ex. 1005 ¶ 40 (Lawrence Decl.));5 see also PO Resp. 7 (citing Ex. 2082 ¶¶ 44– 45 (Williams Decl.)).6 Nonetheless, neither party asserts specifically that the ultimate conclusion of obviousness turns on adoption of a particular level of ordinary skill. In any event, both experts generally agree that an ordinarily skilled artisan at the critical time would have had at least a bachelor’s degree in a field such as chemistry, pharmaceutical chemistry, or a related discipline, with 3–5 years of work experience, and potentially a Ph.D., depending on 5 Declaration of M. Jayne Lawrence, Ph.D., dated April 21, 2015 (Ex. 1005). 6 Declaration of Robert O. Williams III, Ph.D., dated February 22, 2016 (Ex 2082). the extent of formal education and practical experience. See id. When evaluating the parties’ contentions regarding the scope and content of the prior art, and the differences between the prior art and the challenged claims, we take into consideration both parties’ assertions regarding the level of ordinary skill. We also consider that the cited references provide evidence as to the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“contention that an ordinary artisan would have considered Sallmann’s tyloxapol and Ogawa’s polysorbate 80 to be interchangeably useful in aqueous ophthalmic solutions. Pet. 38 (citing Ex. 1005 ¶¶ 334–336). Given her qualifications, experience, and explanation, we credit her testimony on this issue. See Ex. 1005 ¶¶ 3–15. Dr. Lawrence’s testimony in this regard, moreover, is supported by the Yasueda and Desai references cited in Dr. Lawrence’s Declaration.” slip op. at 13
Patent outcomesUS 8,754,131 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,754,131 - Bio-Rad Laboratories, Inc. v. California Institute Of Technology And Fluidigm CorporationAll claims unpatentablePTAB · Apr 21, 2016 · IPR2015-00009 · APJ Donna M Praiss · IPR · Final written decision
Claims 1, 2, 5–11, 18, 19, 30, 31, 46, 47, and 49–51 are unpatentable as obvious over Stewart II and Burns; additional grounds cover claims 49, 51 and 18, 19, 46, 47.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill in the Art In determining the level of skill in the art, various factors may be considered, including “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). There is evidence in the record before us that reflects the knowledge level of a person with ordinary skill in the art. Petitioner’s Declarant, Dr. Anna, attests that a person with ordinary skill in the art would “hav[e] at least the equivalent of a Bachelor’s degree in engineering, physics, or chemistry and two years of academic, research, or industry experience related to fluid mechanics, fluid dynamics, or microfluidics.” Ex. 1002 ¶ 29. Patent Owner does not dispute Dr. Anna’s assessment of the level of ordinary skill. PO Resp. 3. Thus, we adopt Petitioner’s Declarant’s attestation as to the level of skill in the art.” slip op. at 7
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner essentially contends that Dr. Anna’s deposition and declaration statements in this proceeding concerning Stewart II are inconsistent with statements in her earlier publication indicating that the named inventors on the ’503 patent were the first to report droplet formation in a T-shaped device. Dr. Anna explained she was unaware of Stewart II at the time of her publication and that, even in view of Stewart II, her published statements about the Thorsen 2001 Article being the first to report on microdroplet formation in a T-shaped device would still be accurate, because Stewart II was not part of the body of work reported in the academic literature. Ex. 2018, 31:9–11, 59:21–60:3, 61:2–12, 63:11–21. The veracity of Dr. Anna’s explanation is supported by Patent Owner’s expert, Dr. Squires, who testified at deposition that he does not typically include patents in his own academic review papers and did not cite the patent literature in his own papers on the subject of microfluidics. Ex. 1020, 31:5–9, 37:19– 38:21, 40:20–41:17. Dr. Anna’s deposition testimony, in fact, clarifies any apparent inconsistency between her declaration and the Thorson 2001 Article. Accordingly, we are not persuaded that Dr. Anna’s testimony should be given diminished weight in light of her prior statements about the Thorson 2001 Article.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“In our Decision on Institution, we interpreted two claim terms of the ’503 patent as shown below: Table 1 Term Construction sheared severed or broken off dispersed droplets of sample fluid of monodisperse sample fluid droplets substantially uniform size Dec. on Inst. 6–7. The parties do not challenge our claim constructions. Consequently, for purposes of this Final Written Decision, we adopt the constructions as stated in Table 1 in accordance with the analysis set forth in our Decision on Institution. Id.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We are persuaded that Petitioner meets its burden of showing that the selection of known channel sizes for microfluidic devices as disclosed in Burns would have been obvious as a predictable variation in the same field because the dimensions of Burns are less than 267 microns as directed by Stewart II. KSR, 550 U.S. at 417. The combination is supported by the Anna Declaration. Dr. Anna testified that the fluid behavior in the Stewart II device would be “substantially the same” in a device having the dimensions disclosed by Burns. Ex. 1002 ¶ 50 (“fluid behavior (including flow characteristics, fluid forces, etc.) would be substantially the same in devices designed for droplets of less than 267 microns as they would be in devices designed for droplets of less than 100 microns.”). Dr. Squires’s testimony that the combination of Burns with Stewart II would have been unpredictable with no reasonable expectation of success due to multiple factors affecting droplet formation is not supported by the record. See Ex. 2019 ¶¶ 23–27, 29, 30, 37, 38. Dr. Squires’s opinion is based on Stewart II being unbelievable because it does not disclose operating data. Id. at ¶¶ 29– 30. Referring to Burns, Dr. Squires further states “[n]or does the mere fact that channels with dimensions smaller than 100 microns could be fabricated at the time of invention provide a basis for one of ordinary skill in the art to believe that Stewart II’s device would operate as described by Stewart II when using channels with dimensions of 100 microns or less.” Id. at ¶ 37. The formation of microdroplets, however, is disclosed in both Stewart II and Burns. Stewart II discloses droplet formation in a microfluidic device at dimensions less than 267 microns in diameter. Ex. 1004, 3–4. Burns discloses droplet formation in a microfluidic device at the claimed dimensions. Ex. 1005, 7. While multiple factors may affect droplet formation, the formation of droplets in devices having a channel that is less than 267 microns in diameter (Stewart II) or in the claimed range (Burns) is supported by the evidence.” slip op. at 21
Patent outcomesUS 7,294,503 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,294,503
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.