- PTAB · Apr 15, 2026 · IPR2025-00103 · APJ Gregg I Anderson · IPR · Institution
The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on each obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record and for the reasons explained below, we institute an inter partes review of claims 1–15 of the ’766 patent on all challenges in the Petition. Upon consideration of the Petition and the evidence of record, for the reasons given below we determine there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’766 patent. Accordingly, we institute an inter partes review of claims 1–15 of the ’766 patent based upon the asserted grounds of unpatentability set forth in the Petition. Pet. 1.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“If Petitioner succeeds in establishing these limitations lack written description support in the priority applications, then the challenged claims will not receive the benefit of the priority applications’ earlier filing dates and Singh129 will qualify as prior art. On the present record, we are not directed to adequate written description support for the limitations reciting receiving data from a “shortrange wireless enabled data capture device” or “use[s] HTTP” to upload/transfer “new-data along with user information” to a user data publishing website, and wherein “the user information corresponds to a user identifier.” See Pet. 12. Even if support for these limitations is found in Singh906, beyond the initial incorporation by reference, “Singh906 is not mentioned or otherwise referenced in the specification” of the ’766 patent, and on the current record, we are not otherwise apprised of disclosure within the four corners of the specification that demonstrates possession of the system or mobile application as claimed. For the above reasons, we determine that Petitioner has demonstrated a reasonable likelihood that the challenged claims lack adequate written description support, and thus that Singh129 qualifies as prior art to the challenged claims.” slip op. at 23
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artOther
“If Petitioner succeeds in establishing these limitations lack written description support in the priority applications, then the challenged claims will not receive the benefit of the priority applications’ earlier filing dates and Singh129 will qualify as prior art. On the present record, we are not directed to adequate written description support for the limitations reciting receiving data from a “shortrange wireless enabled data capture device” or “use[s] HTTP” to upload/transfer “new-data along with user information” to a user data publishing website, and wherein “the user information corresponds to a user identifier.” See Pet. 12. Even if support for these limitations is found in Singh906, beyond the initial incorporation by reference, “Singh906 is not mentioned or otherwise referenced in the specification” of the ’766 patent, and on the current record, we are not otherwise apprised of disclosure within the four corners of the specification that demonstrates possession of the system or mobile application as claimed. For the above reasons, we determine that Petitioner has demonstrated a reasonable likelihood that the challenged claims lack adequate written description support, and thus that Singh129 qualifies as prior art to the challenged claims.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues that a person of ordinary skill in the art would have been motivated to look to the features of both Singh129 and Singh906 when considering an improved publishing system. Pet. 16. Further, Petitioner points out that Singh129 incorporates by reference the ’802 application, published as Singh906. Id. According to Petitioner, a person of ordinary skill in the art would have been motivated to modify Singh129’s system to add Singh906’s user authentication credentials to Singh129’s user preferences to give the “user more control over the publishing of their multimedia content.” Id. at 17 (citing Ex. 1030 ¶ 456). Petitioner cites four additional reasons for a person of ordinary skill in the art to modify Singh129 with Singh906 including solving a known problem, avoiding sending authentication credentials to publish content, virtual spaces provided for clients in Singh906, and that authentication credentials would have been an obvious design choice. Id. at 17–18 (citing Ex. 1009 ¶ 47, Figs. 2, 5; Ex. 1010 ¶¶ 17, 18, 27; Ex. 1030 ¶¶ 457–461). Petitioner also asserts a person of ordinary skill in the art would have had a reasonable expectation of success for the modification of Singh129 with Singh906. Pet. 18. Petitioner argues “the proposed combination would have required no more than the application of known techniques (using authentication credentials and HTTP in accordance with Singh906) to a known system (Singh129’s system) in the same field of endeavor (media publishing) and from the same assignee (CellSpinSoft) to obtain the benefits described above.” Id. (citing Ex. 1030 ¶ 461). Based on the record before us, we find sufficient the argument and evidence that the combination of Singh129 and Singh906 teaches or suggests all of the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine features from Singh906 into Singh129 with a reasonable expectation of success, for the reasons discussed in the Petition. See Pet. 16–19. We have also reviewed Petitioner’s contentions with respect to dependent claims 2–15, and find the same for these claims. See id. at 28–38.” slip op. at 25
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,900,766 - PTAB · Apr 15, 2026 · IPR2025-00102 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted review of claims 1–10 on both obviousness grounds, finding a reasonable likelihood that Petitioners would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of claims 1–10 of the ’121 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time the invention was made. See Graham, 383 U.S. at 17–18. Petitioners contend that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”) would have had: at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field consumer electronics, with exposure to digital camera technology and wireless communications. Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6 (citations omitted) (citing Ex. 1030 (Lett Decl.) ¶¶ 94–95). Because Petitioners’ proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioners assert that no express constructions are required to institute review and find the challenged claims unpatentable. See Pet. 7. We find it unnecessary to construe any claim term to decide whether Petitioners satisfy the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Any final written decision entered in this case may include express claim constructions, or may include discussion of claim scope that differs from that provided in our analysis in this Decision. Any final claim constructions will be based on the full trial record.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“E. Ground 1 – Alleged Obviousness Over Hiroishi, Kahn, Endsley, and Bluetooth Petitioners assert that claims 1–10 are unpatentable as obvious over the combination of Hiroishi, Kahn, Endsley, and Bluetooth. Pet. 16–65. After considering Petitioners’ arguments and cited evidence, we find that for purposes of institution, Petitioners have shown a reasonable likelihood of establishing that claims 1–10 are unpatentable as obvious over the combination of Hiroishi, Kahn, Endsley, and Bluetooth.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,234,121 - PTAB · Apr 15, 2026 · IPR2025-00104 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, and 9–18 based on all presented grounds, finding a reasonable likelihood of success on obviousness grounds 1A and 1B.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The petitioner ultimately bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition shows a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have “had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field [of] consumer electronics, with exposure to digital camera technology and wireless communications.” Pet. 5 (citing Ex. 1030 ¶¶ 94–95).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We find it unnecessary to construe any claim term to decide whether Petitioners satisfy the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness.10 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness determination requires finding a reason to combine accompanied by a reasonable expectation of achieving what is claimed in the challenged patent. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 419–20.” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,904,030 - Imperative Care, Inc. v. Inari Medical, Inc.All claims unpatentablePTAB · Apr 7, 2026 · IPR2025-00156 · APJ Timothy G Majors · IPR · Final written decision
Claims 1–9 are unpatentable as obvious over Schaffer combined with Hartley or Eller, with or without Garrison; anticipation by Schaffer and obviousness over Schaffer alone were not shown.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties propose essentially the same formal educational background for the POSA, but we agree with Patent Owner that Petitioner’s proposed POSA definition lacks some specificity concerning the POSA’s work experience. That definition, if interpreted generically, could mean that a person qualifies as a POSA if they had, for example, a B.S. in mechanical engineering and only two years of experience with any type of product in any field. That is too broad. We find that a POSA would have had the agreed-upon educational credentials—an undergraduate degree in mechanical engineering or a related engineering discipline. Ex. 1003 ¶ 35; Ex. 2008 ¶ 76. 10 Although unspecified in this proceeding, in the related 1157 IPR, Patent Owner stated that the field of the invention is “hemostasis valves for use during intravascular procedures.” IPR2024-01157, Paper 13 at 22. engineering experience related to products in the field of the invention, which involves endovascular devices and the surgical procedures that use such devices. Ex. 1001, 1:24–60 (background of the invention). Such devices include, but are not necessarily limited to, hemostasis valves and catheters for minimally-invasive vascular surgeries. Id. Furthermore, as pointed out by Petitioner and consistent with the testimony of the parties’ experts, the POSA need not have had firsthand experience designing relevant medical devices, including hemostasis valves. Pet. Reply 28; see, e.g., Ex. 1019 (Zalesky Tr.), 72:11–73:7 (testifying direct experience “designing” hemostasis valves or aspiration catheters is not necessary, but “general experience with vascular devices and procedures” is required); Ex. 2006 (Thornton Tr.), 180:13–19. As Dr. Zalesky testified, the POSA’s experience related to such devices “could be as simple as bench testing and looking at clinical data.” Ex. 1019, 74:5–75:1; see also id. at 82:3–6 (testifying a POSA need not “have specific experience with different methodologies of hemostasis”). Lastly, a POSA would have had an understanding of such devices’ design requirements as determined by the needs of the physician, patient, and procedure, which understanding may be informed by work experience and/or study. Ex. 2006, 24:5–21.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “aspiration catheter” Claim 1’s preamble recites “[a]n aspiration catheter.” Ex. 1001, 22:10. Petitioner contends that, as a general rule, a preamble does not limit the scope of a claim, and that the term “aspiration” here merely describes a non-limiting “intended use” of an otherwise structurally-complete invention defined by the body of the claim. Pet. 18–19. Patent Owner responds that 11 In the related 1157 IPR, Patent Owner moved to exclude Mr. Thornton’s testimony, which motion we denied. IPR2024-01157, Paper 35 at 70–72. Patent Owner filed no motion to exclude here. Owner’s arguments here.” PO Resp. 30. We need not further construe “aspiration catheter” as no dispute turns on that term’s meaning or whether it is limiting. Realtime Data, 912 F.3d at 1375 (explaining that claims need only be construed to the extent necessary to resolve matters in dispute).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“That does not, however, resolve the dispute about “flexibility.” On that issue, after considering the full record developed through trial, we agree with Patent Owner that a “filament” as claimed is flexible. The claims support Patent Owner’s interpretation. Patent Owner cites the claim language, including the recitation that “the first filament [is] formed into a loop around the collapsible tubular sidewall defining a valve lumen” and that “a diameter of the valve lumen decreases in response to reducing a diameter of the loop.” As Patent Owner argues, and as we recognized at the institution stage, the claimed filament “must be flexible to constrict the valve lumen.” PO Resp. 23; Inst. Dec. 15–16; Ex. 2008 ¶ 68 (testifying that a POSA would understand this property of flexibility is essential to achieving the claimed loop formation and function). The Specification supports this understanding. Consider the “loop” embodiments as illustrated in Figures 6 or 7. Ex. 1001, Figs. 6–7. If the filament forming each depicted loop was somehow rigid, applying a force that seeks to pull the respective ends of the filament in opposing directions would not decrease the size of the loop—the loop would stay the same size and the filament would not circumferentially constrict and seal the elongate member’s lumen as described in the patent. Ex. 1001, 13:18–29.” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s argument is unavailing. A steel beam or a plastic broom handle are longer than they are wide and yet conventionally rigid. And, specific to the subject matter here, as Mr. Thornton admits, machining the valve’s actuating members from plastic or metal, which Schaffer actually describes, would produce rigid members. Ex. 2005, 168:2–6; see also Ex. 2006, 152:8–10 (testifying a flexible aluminum wire would not be made from machining aluminum). Moreover, considering Schaffer’s cited drawings— Figure 32, in particular—does not show the actuating members changing shape or dynamically conforming to the outer surface of the seal module that those members are compressing, which, had that been shown, might indicate flexibility. Maybe the absence of any dynamic conformance of the surface of the actuating members is an unintended limitation or artifact of the drawing. Or maybe not, and what is shown is a rigid structure consistent with Schaffer’s other disclosures as already explained. We decline to find anticipation where Schaffer does not, with sufficient clarity and detail, describe a valve with a “filament” as claimed.21 Ultimately, on whether Schaffer describes rigid or flexible U-shaped actuating members, Dr. Zalesky’s interpretation of the reference is more plausible and we find greater evidentiary support for Patent Owner’s position on this issue. Notwithstanding Mr. Thornton’s testimony in his rebuttal declaration that a POSA reading Schaffer would have understood 21 Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (“Anticipation requires that a single reference describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.”) (emphasis added and internal quotation marks omitted). testimony on cross-examination was equivocal—he admitted “[i]t’s not clear” whether Schaffer’s U-shaped actuating members are flexible or rigid. Ex. 2006, 115:16–23 (testifying “[t]he material properties of the U-shaped actuating members are not clearly defined in the Shafer [sic] application”). Dr. Zalesky, in contrast, has consistently testified that a POSA would have understood that Schaffer describes rigid actuating members. See, e.g., Ex. 2008 ¶¶ 66–74 (citing, inter alia, Schaffer’s illustrations of the valve in operation, and the disclosed manufacturing and assembly methods as indicating that “the actuating members 55 are rigid rather than flexible”).” slip op. at 40
Patent outcomesUS 11,697,012 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,697,012 - Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyNo claims unpatentablePTAB · Mar 23, 2026 · IPR2024-01451 · APJ Tawen Chang · IPR · Final written decision
Claims 1–19 were not shown unpatentable: Larson did not establish the claimed detection in a single sample volume, and the asserted obviousness combinations did not cure the deficiencies.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that, “[f]or purposes of this IPR proceeding, PO does not contest Petitioner’s description of qualifications for a person of ordinary skill in the art (POSA) set forth [above].” PO Resp. 23. In view of the above, and because Petitioner’s uncontested description of one of ordinary skill in the art is reasonable and consistent with the ’921 patent and the cited art, we adopt Petitioner’s definition of a POSA for purposes of this Decision, except that we replace the phrase “at least a year of experience in quantitative and/or dPCR and fluorescence-based analyte detection” with “around a year of experience in quantitative and/or dPCR and fluorescence-based analyte detection.” Pet. 9 (emphasis added).13” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We begin with “the context in which a term is used in the asserted claim,” which can be “highly instructive.” Phillips, 415 F.3d at 1314. In this case, claim 1 recites that the claimed assay is “capable of unambiguously detecting the presence or absence of each of said at least M analytes, in any combination of presence or absence, in a single sample volume, . . . wherein the analytes are amplified in the single sample 15 In this regard, we note that Petitioner’s claim construction position is not predicated on the collection of droplets being reconstituted into its original, pre-partition form prior to amplification; rather, the droplets remain compartmentalized from each other in the PCR thermal cycling tube. Tr. 65:21–66:9 (Petitioner’s counsel explaining that the droplets do not combine in the PCR thermal cycling tube but, rather, are “suspended in an immiscible fluid and analyzed en masse”). indicates that the first instance of single sample volume, i.e., the single sample volume in which the presence or absence of each M analytes are to be detected, is the antecedent basis for the second instance of “single sample volume,” i.e., the single sample volume in which the analytes are amplified. Thus, as the parties appear to agree, the single sample volume in which amplification takes places must be the same single sample volume in which the presence or absence of analytes are to be detected. We are not persuaded that, when accorded its plain and ordinary meaning, a single sample volume divided into a collection of droplets would be considered the “same” single sample volume prior to its partition.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“With respect to the limitation, “wherein the analytes are amplified in the single sample volume,” Petitioner asserts that “Larson discloses PCR assays that amplify target polynucleotide in a single sample volume, specifically a portion of the reaction mixture that is subsequently partitioned into droplets.” Pet. 31 (emphasis added). There is no dispute that the amplification of the analytes in Larson occurs in the droplets. Larson ¶¶ 6–7 (explaining that “[d]igital PCR (dPCR) is an alternative quantitation method in which dilute sample are divided into many separate reactions” and that “[t]he template is amplified in the droplet for detection”) (emphasis added). Because the claims require that amplification of the analytes be in the same sample volume in which the at least M analytes, in any combination of presence or absence, is unambiguously detected, and because the pre-partition single sample volume is not the same single sample volume as the collection of droplets after partition under our claim construction set forth above, we find Petitioner has not shown, by a preponderance of evidence, that claims 1–10 and 13–19 are anticipated by Larson.17 Tr. 68:12–69:14 (Petitioner’s counsel” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although we agree with Petitioner that Larson contemplates scenarios in which droplets may contain more than one target molecule and does not require the exclusion of such multiple occupancy droplets in all embodiments, we are nevertheless not persuaded Petitioner has shown, based on a preponderance of evidence, that Larson renders obvious an assay capable of unambiguously detecting, in such multiple occupancy droplets, the presence or absence of each of at least M analytes, in any combination of presence or absence, when M is greater than F and F is at least 2.” slip op. at 32
Patent outcomesUS 11,827,921 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,827,921 - Avation Medical, Inc. v. Emkinetics, Inc.All claims unpatentablePTAB · Mar 16, 2026 · IPR2024-01375 · APJ John G New · IPR · Final written decision
Claims 1–13 are unpatentable as obvious under § 103 over Svihra, Mann, and Ponsford, and independently over Amarenco, Mann, and Ponsford.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Ex. 1001, claim 1. In other words, to effectuate “direct” stimulation of the PTN nerve branch, a practitioner of the ’742 patent must: (1) non-invasively position an electrical stimulator relative to a portion of a patient’s body, such that a branch of a posterior tibial nerve within the first portion of the body is directly targeted by the electrical stimulator; (2) passing a current through the electrical stimulator; and (3) delivering an electrical stimulus from the electrical stimulator to the branch of the posterior tibial nerve such that the branch directly receives the electrical stimulation. Merely “placing electrodes over branches of the PTN” cannot be said, in and of itself, to “directly” target and stimulate the branches, as Petitioner argues.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had an undergraduate degree in the field of biomedical engineering or a related discipline, such as electrical engineering, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could substitute for a formal degree and vice versa.” Pet. 21 (citing Ex. 1003 ¶¶ 20–21). Patent Owner does not dispute Petitioner’s proposal. See generally Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt this definition, and also use the term “skilled artisan” to refer to persons with such skill at the time the invention was filed.” slip op. at 13
- Expert testimonyPetitioner expert creditedOther
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“the evidence of record, that a person of ordinary skill in the art would have found it obvious to modify the teachings of Svihra by non-invasively stimulating a nerve branch of the PTN, e.g., the medial or lateral plantar nerves, as taught by Ponsford, to treat OAB/urinary incontinence. A skilled artisan would have understood that the fibers of a given branch of the PTN necessarily constitute a subset of the PTN fibers, stimulation of which is known to be effective in the treatment of OAB/urinary incontinence. See Ex. 1004, 480–481. Just as it was known in the art that stimulation of the much larger sacral nerve, of which the fibers of the PTN form a part, could have beneficial effects in the treatment of incontinence, and that stimulation of the PTN itself could have a similar effect (see Ex. 1084, col. 12, ll. 33–52), so, a skilled artisan could reason, might electrical stimulation of a branch of the PTN exert a similar effect. We also agree that a person of ordinary skill in the art would have been motivated to stimulate a smaller nerve branch of the PTN, rather than the entire PTN itself, so as to minimize undesirable side effects of stimulating the entire PTN, i.e., the recruitment of downstream muscular contraction, as taught by Mann. With respect as to whether a person of ordinary skill in the art would have had a reasonable expectation of success in the treatment of OAB/incontinence via stimulation of a branch of the PTN, rather than the entire PTN itself, we agree with Petitioner that a person of ordinary skill in the art, would understand from Mann that electrical stimulation of the larger, more central sacral nerve could be employed to treat OAB/urinary incontinence, and that a subset of those PTN fibers could be electrically stimulated to achieve a similar effect. See Ex. 1084, col. 12, ll. 33–52. Such a skilled artisan could similarly reason that a subset of those PTN fibers, i.e., a branch of the PTN, particularly major branches such as the plantar nerves, could also be similarly electrically stimulated to treat OAB/urinary incontinence. Although success in such an experiment would not be guaranteed, “only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness.” In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985).” slip op. at 46
Patent outcomesUS 11,224,742 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,224,742 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Harbor Island Dynamic, LLCAll claims unpatentablePTAB · Mar 16, 2026 · IPR2025-00954 · APJ Gregg I Anderson · IPR · Final written decision
Claims 3 and 8–19 are unpatentable: claim 3 is anticipated by Yu and obvious over Okashita, Okashita and Yu, and Burgener and Okashita; claims 8–19 are obvious over Burgener and Okashita, with or without Yu.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“ORDER For the foregoing reasons, ORDERED that Patent Owner’s Unopposed Motion to Amend (Paper 19) is granted, and claims 1, 2, and 4–7 are canceled;” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes a slightly different level of ordinary skill, arguing that a bachelor’s degree, not a master’s degree, is all that is required because that is the “target audience for the ’886 Patent.” PO Resp. 11. Patent Owner does not otherwise dispute Petitioner’s proposed level of skill. Id. We used Petitioner’s proposed definition in the Institution Decision. Inst. Dec. 13. Neither party argues any issue as dependent on the level of ordinary skill or the differences between the proposals. Accordingly, the issues here are not dependent on the level of ordinary skill and the result is the same regardless of which definition is adopted. On this record, there is no reason to change from Petitioner’s definition used in the Institution Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“transistors” as a term that might require construction during trial. Inst. Dec. 17–18. At the hearing, the Petitioner argued that “cascaded transistors” means “[ar]ranged in a series of or in succession of stages so that each stage derives from or acts upon the product of the preceding [transistor]” and that there is no dispute that the limitation is taught by the prior art. Tr. 9:15–22. Patent Owner takes no position as to whether or not the prior art discloses “cascaded transistors.” Id. at 33:13–21 (“For the remainder of this proceeding, post institution, we have not taken any position regarding the scope of the cascaded transistors or the disclosure of the cascaded transistors in any of the prior art. We have not disputed that.”). Because Patent Owner takes no position on the issue, there is no dispute that “cascaded transistors” are shown in the prior art, construction is not necessary. Realtime, 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. original)). 2. “isolated island” Patent Owner disputes Petitioner’s contention that the prior art teaches or suggests claim 3’s recitation of “said plurality of cascaded transistors is situated within an isolated island.” Pet. 35–36; PO Resp. 16–17. Although the parties dispute whether an “isolated island” is shown in the prior art, neither party proposes a construction for the term “isolated island.” We agree that the arguments presented do not require construction of “isolated island.” The issues can be determined on the plain meaning of the term in view of the arguments made. See Section II.D below.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We find that Petitioner has sufficiently shown Yu is analogous art to Okashita. Both references are directed to the manufacture of semiconductors, which we find to be the field of endeavor. Ex. 1004, 1:47– 58; Ex. 1005, 1:16–26. More specifically, we agree with Petitioner and find that both references are in the same field of endeavor because they relate to SOI configuration. Pet. Reply 6 (citing Pet. 7–8, 39–40; Ex. 1002 ¶¶ 77–80, 90–91). Because we find the references relied upon are in the same field of endeavor, we need not reach whether they are reasonably pertinent to the problem faced by the inventor.” slip op. at 21
Patent outcomesUS 7,745,886 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,745,886 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Harbor Island Dynamic, LLCAll claims unpatentablePTAB · Mar 16, 2026 · IPR2024-01402 · APJ Gregg I Anderson · IPR · Final written decision
The Board held claims 3 and 8–19 unpatentable: claim 3 was anticipated by Yu and obvious on the stated grounds, and claims 3 and 8–19 were obvious over Burgener and Okashita, with or without Yu.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting an inter partes review of claims 1–19 of U.S. Patent No. 7,745,886 B2 (Ex. 1001, “the ’886 patent”). Petitioner filed a Declaration of Dr. Scott E. Thompson, Ph.D., in support of the Petition. Ex. 1002 (“Thompson Dec.”). Harbor Island Dynamic, LLC (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). On April 4, 2025, we instituted this inter partes review as to the Challenged Claims and all grounds presented in the Petition. Paper 9 (“Inst. Dec.”). Following institution, Patent Owner filed a Response to the Petition (“PO Resp.”) limited to the patentability of the challenged claims. Paper 18. In support of the Patent Owner’s Response, Patent Owner filed a Declaration of John Berg. Ex. 2006. Patent Owner also filed an Unopposed Motion to Amend, cancelling claims 1, 2, and 4–7. Paper 19 (“Mot.”). We grant the motion. This proceeding is therefore limited to the patentability of claims 3 and 8–19 (“challenged claims”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner proposes a slightly different level of ordinary skill, arguing that a bachelor’s degree, not a master’s degree, is all that is required because that is the “target audience for the ’886 Patent.” PO Resp. 11. Patent Owner does not otherwise dispute Petitioner’s proposed level of skill. Id. We used Petitioner’s proposed definition in the Institution Decision. Inst. Dec. 13. Neither party argues any issue as dependent on the level of ordinary skill or the differences between the proposals. Accordingly, the issues here are not dependent on the level of ordinary skill and the result is the same regardless of which definition is adopted. On this record, there is no reason to change from Petitioner’s definition used in the Institution Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“transistors” as a term that might require construction during trial. Inst. Dec. 17–18. At the hearing, the Petitioner argued that “cascaded transistors” means “[ar]ranged in a series of or in succession of stages so that each stage derives from or acts upon the product of the preceding [transistor]” and that there is no dispute that the limitation is taught by the prior art. Tr. 9:15–22. Patent Owner takes no position as to whether or not the prior art discloses “cascaded transistors.” Id. at 33:13–21 (“For the remainder of this proceeding, post institution, we have not taken any position regarding the scope of the cascaded transistors or the disclosure of the cascaded transistors in any of the prior art. We have not disputed that.”). Because Patent Owner takes no position on the issue, there is no dispute that “cascaded transistors” are shown in the prior art, construction is not necessary. Realtime, 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. original)). 2. “isolated island” Patent Owner disputes Petitioner’s contention that the prior art teaches or suggests claim 3’s recitation of “said plurality of cascaded transistors is situated within an isolated island.” Pet. 35–36; PO Resp. 16–17. Although the parties dispute whether an “isolated island” is shown in the prior art, neither party proposes a construction for the term “isolated island.” We agree that the arguments presented do not require construction of “isolated island.” The issues can be determined on the plain meaning of the term in view of the arguments made. See Section II.D below.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successAnalogous artMotivation foundUnpatentable
“We find that Petitioner has sufficiently shown Yu is analogous art to Okashita. Both references are directed to the manufacture of semiconductors, which we find to be the field of endeavor. Ex. 1004, 1:47– 58; Ex. 1005, 1:16–26. More specifically, we agree with Petitioner and find that both references are in the same field of endeavor because they relate to SOI configuration. Pet. Reply 6 (citing Pet. 7–8, 39–40; Ex. 1002 ¶¶ 77–80, 90–91). Because we find the references relied upon are in the same field of endeavor, we need not reach whether they are reasonably pertinent to the problem faced by the inventor. We also find that Petitioner has shown rational underpinnings for combining Okashita and Yu. Pet. 43–44. That the references have differences is not the test. Rather, the test is whether a person of ordinary skill in the art would have had motivation to combine them. We find there is sufficient motivation. Id. at 43 (citing Ex. 1005, 2:4–17; Ex. 1002 ¶¶ 177– 178). 3. Conclusion on Ground 3 Patent Owner does not argue any other reason that Ground 3 has not been sufficiently shown. Based on the full record, we determine that Okashita and Yu teach or suggest all the limitations of claim 3 and that one of ordinary skill in the art would have combined the references in the manner asserted with a reasonable expectation of success. We thus determine that Petitioner has established by a preponderance of the evidence that claim 3 would have been obvious over the combination of Okashita and Yu.” slip op. at 21
Patent outcomesUS 7,745,886 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,745,886 - Deltran USA LLC v. The Noco CompanyAll claims unpatentablePTAB · Mar 13, 2026 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable under Richardson-based obviousness grounds; the Yu and Paparrizos grounds do not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “[a]s of the claimed priority date of July 3, 2014, . . . would have been a person with a bachelor’s degree in electrical engineering or its equivalent and two years of experience in the field of electrical engineering including some experience in design of battery charging systems.” Pet. 21 (citing Ex. 1003 ¶¶ 19–30). Patent Owner “does not propose a different level of skill in the art[.]” PO Resp. 16. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art, because it is supported by the testimony of C. Arthur MacCarley and not disputed by Patent Owner.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary, we do 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. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 11
- PTAB / AIA Trials › §315(e) estoppelNot reached
“arguments relating to whether the prior findings are “necessary to the determination” or whether estoppel applies to arguments relating to Richardson being inoperative. See Pet. Reply 27. Nor does Petitioner respond to our inquiry about whether collateral estoppel maybe applied on a limitation by limitation basis. See Pet. Reply 27. At the hearing, however, Petitioner confirmed that resolution of the issue is not necessary to our final determination. JUDGE ROSS: Do we even need to decide the collateral estoppel issue? I mean, it seems to me that if your petition clearly made out your case for the combination of Richardson and Zhao, then we don't even need to reach that. MR. CHANDRA: That’s exactly right, Your Honor. That is our position, as well. We believe collateral estoppel applies, but you don't need to decide that issue in order to find these claims unpatentable. As I mentioned before, these are the same references. We have fairly sought out all of the portions of Richardson, we cited to specific portions. Not just relying on collateral estoppel, but the teachings of the reference itself. So, while this is an issue, we believe that collateral estoppel should apply. It does not have to apply in order to find the challenged claims unpatentable. Tr. 19:9–20. We are persuaded, as discussed in Section II.G., that Petitioner has shown where Richardson in combination with Zhao meets each limitation of the claims of the ’203 patent. Accordingly, we need not address whether Petitioner has demonstrated sufficiently that collateral estoppel applies here.” slip op. at 14
- Strike new argumentNew argument consideredOther
“Our Practice Guide states, that “[o]nce a trial is instituted, the Board may decline to consider arguments set forth in a preliminary response unless they are raised in the patent owner response.” Consolidated Trial Practice Guide (“Practice Guide”), 52 (Nov. 2019) (citing In re Nuvasive, Inc., 842 F.3d 1376, 1381 (Fed. Cir. 2016) (explaining that a patent owner waives an issue presented in its preliminary response if it fails to renew the issue in its response after trial is instituted)).12 In addition, in our Scheduling Order, we stated that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.” Paper 9 at 10; see also Practice Guide, 94 (same). Patent Owner confirmed at the Oral Hearing its understanding that arguments raised in its Preliminary Response and not reasserted in its Patent Owner Response were not appropriate for consideration during trial. Tr. 4:10–6:17. Petitioner does not identify any particular argument raised in the Patent Owner Preliminary Response that is not present in the Patent Owner Response. But, in this Final Written Decision, we do not consider arguments made in the Patent Owner Preliminary Response and instead assess only those fairly presented in the Patent Owner Response.” slip op. at 15
Patent outcomesUS 11,667,203 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,667,203 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Harbor Island Dynamic, LLCAll claims unpatentablePTAB · Mar 11, 2026 · IPR2024-01404 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–6, 9–14, 17, and 18 as anticipated by Cooney and obvious over Cooney; claims 7 and 15 over Cooney and Dean; claims 8 and 16 over Cooney and Farooq or …
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the full record, we maintain and affirm that a person of ordinary skill in the art “would have had at least a master’s degree in electrical engineering or a similar field and at least two years of experience working with semiconductor systems” and that “[a]dditional relevant work experience can compensate for less education, and vice versa.” Pet. 9–10 (citing Ex. 1002 ¶¶ 72–74). We agree with the parties that any differences in the parties’ proposed level of ordinary skill would not affect our analysis. Pet. Reply 1; Tr. 25:4–9 (Patent Owner’s counsel agreeing that any differences in the parties’ proposed level of ordinary skill in the art are immaterial). We also find that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’609 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the full record and because Petitioner’s anticipation challenge is based on giving these recitations no patentable weight and Petitioner’s obviousness challenge is based on the same recitations having patentable weight, we determine that resolving whether to give patentable weight to the recitations “to reduce thermal stress in said semiconductor substrate,” “to provide space for said conductive filler to expand inward,” and “to prevent contamination during processing of said semiconductor substrate” is not necessary to resolve the parties’ dispute. 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. full record, we also determine that express claim interpretation of any other claim term is not necessary. Id.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Each element of the challenged claim must be found, either expressly or inherently, in the single prior art reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). When evaluating a prior art reference in the context of anticipation, the reference must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). “[A] reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“find that Cooney discloses “silicon vias having a hollow center.” Ex. 1002 ¶¶ 120–123; Ex. 1004 ¶¶ 55, 60, Fig. 6. We also find that the portions of Pogge cited by Petitioner show that its “void 25 has an important function in relieving stresses caused by differences in the thermal coefficient of expansion (TCE) of the various materials in and around the feature” (Ex. 1005 ¶ 27) and that the portions of Edelstein cited by Petitioner show that, “[a]lthough it does not change the thermal expansion coefficient, the introduction of a void or voids reduces the effective modulus and Poisson ratio of the through-via, resulting in a compliant through-via that exerts much less stress and force on the surrounding structures” (Ex. 1006 ¶ 47). As discussed above, we find that Cooney’s void 25 is “entirely surrounded by” its conductive filler 24 that, in turn, is surrounded by liner 22 and substrate 10’. Ex. 1004, Fig. 6. We credit Petitioner’s relied-upon testimonial evidence that the presence of a void was known to reduce thermal stress in the surrounding substrate, because the citations to the record support it. Ex. 1002 ¶¶ 124–134; Ex. 1005 ¶¶ 1, 9, 25–28, Fig. 2D; that “a void can decrease thermal stress in the substrate”). We agree with Petitioner’s declarant that Pogge provides a void in a TSV similar to Cooney and the ’609 patent. Ex. 1001, Fig. 4; Ex. 1002 ¶ 127; Ex. 1004, Fig. 6; Ex. 1005, Fig. 2D. We, thus, credit the testimony that, because of their common structural arrangements, one of ordinary skill in the art would have understood that stress-relieving characteristics in Pogge would have been manifested in Cooney’s void. Ex. 1002 ¶ 127. We also agree with Petitioner’s declarant that Edelstein includes a void in a TSV similar to Cooney, the ’609 patent, and Pogge. Ex. 1001, Fig. 4; Ex. 1002 ¶ 130; Ex. 1004, Fig. 6; Ex. 1005, Fig. 2F; Ex. 1006, Fig. 6F. We, therefore, credit the testimony that, because of their common structural arrangements, one of ordinary skill in the art would have understood that stress-relieving characteristics in Edelstein would have also been manifested in Cooney’s void. Ex. 1002 ¶ 130.” slip op. at 33
Patent outcomesUS 9,147,609 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,147,609
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.