- Smaxtec Inc. / Smaxtec Animal Care GmbH v. St Reproductive Technologies, LLCAll claims unpatentablePTAB · Nov 20, 2025 · IPR2024-00885 · APJ Jamie T Wisz · IPR · Final written decision
Claims 1–4 and 15–25 are unpatentable: claims 1–2 are anticipated by Trevarthen, and the challenged claims are also obvious over the listed combinations.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner”) filed a Petition requesting an inter partes review of claims 1–4 and 15–25 (the “challenged claims”) of U.S. Patent No. 8,823,515 B2 (Ex. 1001, “the ’515 patent”). Paper 1 (“Pet.”). ST Reproductive Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 10, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-Reply (Paper 13, “Prelim. Sur-Reply”). Upon consideration of these filings and the preliminary evidence of record, we determined that Petitioner had demonstrated a reasonable likelihood that it would prevail with respect to at least one of the challenged claims of the ’515 patent (Paper 16, “Institution Decision” or “Inst. Dec.”). Thus, we instituted review with respect to all of the challenged claims. slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“statistics in the absence of evidence of unique downloads or individuals. Even if the download numbers do not exactly represent unique downloads by unique individuals, the evidence shows that Trevarthen was downloaded, and therefore distributed, prior to the filing date of the ’515 patent. Accordingly, we find this evidence weighs in favor of Trevarthen’s public accessibility.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“retrieves sensed animal temperature information from the RFID device” and “further teaches that these temperature measurements are analyzed to detect ‘fluctuations,’ ‘a rise,’ and/or ‘anomalies’ that might indicate illness or oestrus.” Id. at 16 (citing Ex. 1005, 121–122). Accordingly, Petitioner asserts that a “POSA would understand that to perform such analysis, the animal temperature information for each animal is necessarily stored in the” slip op. at 36
- ExcludeMotion to exclude, deniedOther
“Patent Owner moves to exclude Exhibits 1040, 1041, and 1044. Paper 36. We do not rely on any of Exhibits 1040, 1041, and 1044 to decide this matter. Thus we dismiss Patent Owner’s motion to exclude as moot.” slip op. at 82
Patent outcomesUS 8,823,515 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,823,515 - PTAB · Mar 17, 2025 · IPR2024-01311 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR of claims 16–30 on all asserted grounds, finding a reasonable likelihood that Genius Sports would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses a two-part framework: 4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the challenged claims of the ’218 patent have an apparent effective filing date after March 16, 2013, the AIA version of § 103 applies. Ex. 1009, codes (22), (60), (63). Our determinations and findings herein would not change if the pre-AIA provisions applied. (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 10
- Parallel petitionsInstituted
“The Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, guides that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. In the instant proceeding, however, we agree with Petitioner’s arguments regarding filing two petitions. For example, we find that each petition challenges different claims and that Petitioner’s division of its challenges into two petitions is supported by the length and nature of the claims. We also agree that Petitioner’s assertion of the same art minimizes the burden on the Board and the parties. Patent Owner does not respond to Petitioner’s arguments that we should institute both petitions. See generally Prelim. Resp. Because we agree with Petitioner’s arguments with respect to the claims and the identity of the prior art used, we consider the merits of the instant petition.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’218 patent. Accordingly, we grant Petitioner’s request and institute an inter partes review of all challenged claims of the ’218 patent and with respect to all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had at least a bachelor’s degree, or equivalent, in electrical engineering, computer engineering, computer science, or a related field or an equivalent number of years of working experience, and one to two years of experience in networking environments, including at least some experience with live-streaming network architecture. Pet. 17–18 (citing Ex. 1001 ¶¶ 72–76). Petitioner additionally asserts that, “[a]dditional education or experience in related fields could compensate for deficits in the above qualifications.” Id. at 18. Patent Owner asserts: A person of ordinary skill in the art would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent degree and, in addition, approximately two years of work experience with Internet video streaming, Internet communication, and related protocols. Prelim. Resp. 8 (citing Ex. 2001 ¶ 96). The parties have not addressed whether the differences in these definitions impact the unpatentability analysis before us. We preliminarily adopt Patent Owner’s formulation of the level of skill in the art, which is more specific and appears consistent with the specification and prior art presented, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,039,218 - PTAB · Nov 22, 2024 · IPR2024-00885 · APJ Jamie T Wisz · IPR · Institution
The Board instituted review of claims 1–4 and 15–25 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board “may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply and Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–4 and 15–25 of the ’515 patent, based on all of the grounds identified in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) as of the claimed priority date would have “had at least a bachelor’s degree in animal science, biological engineering, electrical engineering, or computer science, or a related or equivalent field, and three or more years of experience researching, developing, designing and/or evaluating RFID tracking and sensor systems for livestock management.” Pet. 5–6 (citing” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“c) Analysis At this preliminary stage, we agree with Patent Owner’s arguments as to the plain and ordinary meaning of “implanted in an animal,” meaning implanted within the animal rather than on the animal. Although we agree encompassing RFIDs attached or implanted “on or within” an animal, the plain language of the claim expressly recites “in,” which, on the present record, we determine corresponds to “within” as described by the ’515 patent Specification. We apply that understanding to our discussion of Petitioner’s challenges below.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Additional Claim Terms For purposes of this Decision, we determine that no other claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,823,515 - PTAB · Nov 22, 2024 · IPR2024-00875 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 1–4, 6, and 17–20 on all petitioned grounds, finding a reasonable likelihood that at least one claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), the Board “may not authorize an inter partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the Preliminary Reply and Sur-Reply, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–4, 6, and 17–20 of the ’206 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) as of the claimed priority date would have “had at least a bachelor’s degree in animal science, biological engineering, electrical engineering, or computer science, or a related or equivalent field, and three or more years of experience researching, developing, designing and/or evaluating RFID tracking and sensor systems for livestock management.” Pet. 6 (citing 4 In the present record, neither party presents arguments or evidence relating to secondary considerations. characterization. See Prelim. Resp. 13. On this record and for the purposes of institution, we determine this level of skill, with the exception of the open-ended phrases “at least” and “or more,” which we remove from Petitioner’s proposal, comports with the qualifications a person would have needed to understand and implement the teachings of the ’206 patent and the prior art of record.” slip op. at 18
- BurdenDecided for petitioner
“regarding alternative constructions of limitation 1[E].6 See Prelim. Resp. 13– 15. Instead, Patent Owner asserts that Petitioner’s presentation of arguments relating to alternative constructions is an independent reason to deny the Petition under 37 C.F.R. § 42.104(b). Id. at 14–15 (citing 37 C.F.R. §42.104(b)(3)–(4) (“[E]very petition must identify ‘[h]ow the challenged claim is to be construed’ and ‘[h]ow the construed claim is unpatentable.’”)). Patent Owner argues that Petitioner does “not inform the Board which of the two constructions they believe to be correct, nor do they provide any substantive argument as to how the Board should proceed with construing the terms.” Id. at 14. c) Analysis We are not persuaded by Patent Owner’s argument to deny the Petition under 37 C.F.R. § 42.104(b). Rule 42.104(b) requires identifying how the challenged claims are to be construed and how the construed claims are unpatentable. Petitioner presents arguments and evidence alleging claims 1 and 17 are unpatentable under either of the constructions it discusses.7 Accordingly, on this record and for the purposes of institution, Petitioner has met the requirements of Rule 42.104(b).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningTerm construed patent owner constructionDecided for patent owner
“Patent, the ‘sensed animal information’ must be retrieved from an ‘RFID device’ that is ‘implanted in an animal’ or ‘implanted in a plurality of animals.’” Prelim. Resp. 51; see e.g., Ex. 1001, 18:45 (claim 2), 20:29 (claim 17). Patent Owner asserts that “implanted in an animal” requires “implantation inside of an animal.” Prelim. Sur-Reply 2. Patent Owner argues that this interpretation is consistent with the plain meaning of the claims and the ’206 patent Specification. See id. at 2–3. For example, Patent Owner argues that the ’206 patent Specification “distinguishes between implanted ‘on’” and “implanted ‘within’ (i.e., ‘in,’ as recited in the claims).” Id. at 3 (citing Ex. 1001, 8:8–13).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,844,206 - PTAB · Sep 18, 2024 · IPR2024-00702 · APJ Sharon Fenick · IPR · Institution
The Board instituted review of claims 1–6 and 8–16 on all asserted grounds, finding a reasonable likelihood that the Nair and Forsberg combination renders at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Board has authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be authorized unless the information in the Petition and any preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’817 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner, citing Dr. Bims’s declaration, asserts that, “[a] person of ordinary skill in the art (“POSITA”) in the subject matter of the ’817 patent would have had a master’s degree in electrical engineering, computer engineering, or computer science, or equivalent and at least three years of experience in the field of telecommunications or wireless systems,” and that “[a]dditional education might compensate for less experience, and vice-versa.” Pet. 10–11 (citing Ex. 1002 ¶ 22). Patent Owner asserts that one of ordinary skill would have had “a bachelor’s degree in electrical engineering, computer engineering, or computer science with (1) at least three years of experience in the field of telecommunications or wireless systems; and/or (2) an advanced degree in field of telecommunications or wireless systems.” Prelim. Resp. 16. We do not discern a meaningful difference between the two parties proposals. Petitioner’s proposal appears consistent with the problems and solutions in the ’817 patent and prior art of record and is supported by expert testimony. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. Upon this preliminary record and for the purposes of institution, we adopt Petitioner’s definition of the level of skill with the exception that we delete the words “at least.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party makes a claim construction proposal or indicates that any claim requires construction. Pet. 11; see generally Prelim. Resp. We note that an argument was raised that presents an implicit construction question regarding whether a flag which “only identifies if encryption [is] ‘on’ or ‘off’” (Prelim. Resp. 24) teaches or suggests “an encryption scheme identifier that identifies an encryption scheme used by the UE to encrypt the subscription identifier in the SUCI” (as recited in limitation 1d of claim 1 and identically in claims 9, 10, and 15). We address that argument below, in Sections II.D.3.c.ii and iii of this Decision. With that exception, we do not discern that any claim terms require construction at this point in the proceeding for the purpose of institution. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“i. Nair Provisional’s Support for a Claim in Nair Patent Owner argues that the Petition is deficient because it does not show that the disclosure in the Nair Provisional supports at least one claim in Nair, even though Nair is subject to the AIA and Patent Owner concedes that the Board’s precedential opinion in Penumbra concludes we do not need to make such a determination regarding support for at least one claim to reach a prior art determination under the AIA. Prelim. Resp. 23–24 n.6; Penumbra, 2023) (precedential). Following that precedent, we decline to require a showing of support in the Nair Provisional for at least one claim in Nair and instead only require that the ministerial requirements for claiming priority were met. See Penumbra, Paper 34 at 32–33. Petitioner argues that the “ministerial requirements” described in Penumbra have been met. Pet. 4–5 (noting that Nair contains a priority claim to the Nair Provisional, was filed within 12 months of the Nair Provisional, and includes a common inventor). Patent Owner does not contest that these requirements have been met, and upon our examination, we agree that they appear to have been met. Ex. 1004, codes (22), (60), (72); Ex. 1008, 1, 4, 38. Thus, on the present record and for the purposes of institution, the disclosures of Nair are prior art, to the extent that the relied-upon disclosures are included in the Nair Provisional. ii. Nair Provisional’s Date for Cited Portions of Nair Patent Owner also argues that the Petition relies on material in Nair that was added after the filing of the Nair Provisional, and that this material cannot be properly relied on as prior art. Prelim. Resp. 19–23. We address these specific arguments regarding material Petitioner references from Nair (and the Nair Provisional) below, in our analysis with respect to the respective limitations of claim 1 these citations relate to.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,425,817 - PTAB · Jun 27, 2024 · IPR2024-00368 · APJ Sharon Fenick · IPR · Institution
The Board instituted inter partes review of claims 1–9 on all asserted grounds: anticipation and obviousness over Horie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–9 (the “challenged claims”) of the ’564 patent on all grounds of unpatentability presented.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“and evidence that the receipt of the request and the notification of the customer each occurs via a “distinct” transmission channel. See Ex. 1006 ¶¶ 39–41 (details of communication), 44, 54, 76, 78 (sending notification), Fig. 1, Fig. 9; Ex. 1003 ¶¶ 213–215, 221, 223–227. Although Patent Owner shows that Petitioner relies on certain duplicate elements in Petitioner’s identified first and second transmission channels, the transmission channels identified include different elements as well, and thus, on the current record 7 Although Patent Owner argues that “Petitioner incorporates hundreds of paragraphs from a 139-page expert declaration in the Petition, including extensive use of block cites and diagrams,” on this record and without more specific references we do not discern improper incorporation by reference in the Petition. Prelim. Resp. 15–16 (citing 37 C.F.R. § 42.6(a)(1)(i) and (a)(3)); see also Consolidated Trial Practice Guide 40 (“The Board expects that most petitions and motions will rely upon affidavits of experts.”) (The Consolidated Trial Practice Guide is available at https://www.uspto.gov/TrialPracticeGuideConsolidated). and preliminarily, we determine that they are “distinct” as required in limitation 1d. Pet. 27. With respect to Patent Owner’s argument that that Petitioner does not show that the channels are completely separate and that Figure 1 of the ’564 patent and/or other disclosed embodiments in the ’564 patent include completely separate channels (see Prelim. Resp. 4, 10–12), these arguments by Patent Owner are not commensurate with the scope of the claim, which requires that “the second transmission channel [be] distinct from the first transmission channel.” To the extent that Patent Owner argues that a specific claim construction should be accorded to limitation 1d of claim 1 that excludes Horie’s partially overlapping channels, on the present record we discern no evidence or argument regarding such a claim construction. And, to the extent that Patent Owner argues a distinction between Horie and the ’564 patent disclosure (rather than the claim), such arguments are inapposite. With respect to the requirement of limitation 1e that authorization occur without requiring of a response from the customer, on the present record and for the purpose of institution, Petitioner sufficiently shows that Horie discloses this in its disclosure of a pre-authorization notification. See Pet. 29–308; Ex. 1006 ¶ 73 (sending notification during the card authentication process as opposed to after that process is complete); Ex. 8 While Patent Owner argues that Petitioner only argues that Horie “suggests” this embodiment (as opposed to disclosing it, as required for an anticipation ground) (see Prelim. Resp. 7 n.1 (quoting Pet. 29)), even given the appearance of the verb “suggests” in one instance in the Petition, we understand Petitioner’s argument is that Horie discloses a pre-authorization notification. See Pet. 29 (“Horie . . . discloses . . . the [notification] e-mail can also be sent . . . during the card authorization process”), 20 (“Horie discloses each element of claims 1 through 9”). 1003 ¶¶ 232–233. Having considered Patent Owner’s argument that “if Horie notifies a customer prior to authorization, the system requires a response” (Prelim. Resp. 8), for institution, we credit Dr. Akl’s uncontroverted testimony that the embodiment of Horie’s paragraph 73 does not require any affirmative action on the part of the customer to process a transaction but merely discloses the possibility of canceling a transaction rather than disclosing a requirement for a positive response from a recipient to authorize the transaction. Ex. 1006 ¶ 73 (“[T]he e-mail can also be sent . . . during the card authentication process . . . [to make] it possible to issue a transaction cancellation request to the authentication hosts.”); Ex. 1003 ¶ 233. We additionally do not agree with Patent Owner’s allegation that Horie does not enable the disclosure of paragraph 73. Prelim. Resp. 8–9 n.2. While Petitioner asserts that Horie does not disclose the details regarding a transaction cancellation request (Pet. 18), we note that the issuance of a transaction cancellation request is not part of the claimed invention, and determine that on this record, Petitioner’s argument (or admission) in the Petition regarding the disclosure of Horie is not sufficient to cast doubt on the likelihood of Petitioner’s success before us by removing the presumption of enablement. See Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008) (establishing a presumption that an anticipating disclosure in a prior art patent is enabling); Apple Inc. v. Corephotonics, Ltd., 861 Fed. Appx. 443, 449 (Fed. Cir. 2021) (adopting this for AIA trial proceedings). For these reasons, upon consideration of the preliminary record, we determine that Petitioner has sufficiently shown a likelihood of success in showing claim 1 to be anticipated by Horie.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“While Petitioner’s argument with respect to claim 1d is presented as an obviousness argument, we do not discern that Petitioner presents any argument distinct from its analysis for anticipation. Id. at 39–42. While Petitioner cites Dr. Akl’s testimony to support its arguments regarding what Horie discloses, Petitioner does not discuss Dr. Akl’s testimony regarding obviousness or provide any suggestion of what a modification of Horie would be or discuss, e.g., motivation or expectation of success for a modification. Compare Pet. 39–42 with Ex. 1003 ¶ 229 (“[The] differences between the channels described in Horie would have suggested to a person of ordinary skill in the art that separate lines of communication could be employed in Horie’s system.”). Similarly, Petitioner’s arguments with respect to claim 2 do not appear to address obviousness.” slip op. at 25
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,783,564 - PTAB · Jun 27, 2024 · IPR2024-00367 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–4 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Horie.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other
“corners of a single, prior art document describe every element of the claimed invention, either expressly or inherently, such that a person of ordinary skill in the art could practice the invention without undue experimentation.” Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). Moreover, the reference must also “disclose[] within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. §§ 102 and 103 that became effective on March 16, 2013. Because the ’310 patent has an application filing date of March 11, 2005, we apply the pre-AIA version of the statutory basis for unpatentability. See Ex. 1001, code (22). 2 Japanese Patent Application 2002-133100, published May 10, 2002 (Ex. 1009). All citations are to the Petitioner-provided English translation. Ex. 1006. claim.” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’310 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue this ground. Those challenges, in our view, are best left for trial after full development of the record.10 10 As guidance to the parties, we note that it is unclear that the Petition, unlike Dr. Akl’s testimony, argues how a person having ordinary skill in the art would have modified Horie. Compare Ex. 1003 ¶ 98 (arguing that the differences between the first and second transmission channels in Horie “would have suggested to a person of ordinary skill in the art that separate and independent lines of communication could be employed in Horie’s system for the sending/receiving of requests and notifications.”), with Pet. 32–33 (not making the argument in Dr. Akl’s testimony). The parties should address in the Response and Reply (1) whether the Petition argues how and why a person having ordinary skill in the art would have modified Horie and (2), if not, whether we can rely on the argument in Dr. Akl’s testimony that is not made in the Petition.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “no claim terms require an express construction.” Pet. 9 (citing Ex. 1003 ¶ 62). 3 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. See 37 C.F.R § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). For the purposes of this Decision, we need not expressly construe any claim terms.4, 5 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 9
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,357,310 - PTAB · Dec 19, 2023 · IPR2023-01062 · APJ Kimberly Mcgraw · IPR · Institution
The Board instituted review of claims 27–33 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’095 patent. Thus, we institute an inter partes review of all challenged claims of the ’095 patent on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”). Graham, 383 U.S. at 17–18. Petitioner argues that a “person of ordinary skill in the art of the ’095 patent would have had a bachelor’s degree in electrical engineering and a minimum of 3–4 years of 7 At this stage of the proceeding, Patent Owner has not offered any evidence of secondary considerations. See generally Prelim. Resp. testing of twisted-pair data cables.” Pet. 11 (citing Ex. 1007 ¶ 13). Petitioner also argues an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1–2 years).” Id. (citing Ex. 1007 ¶ 13). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposal, because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes express constructions for “data communications cable,” “dielectric pair separator,” “substantially flat,” “configurable,” and grooves.” Pet. 12–18. Patent Owner proposes an express construction of “twisted pairs” of insulated conductors. Prelim. Resp. 10–17. As explained below, on the present record, we provide a preliminary construction of the “dielectric pair separator,” “substantially flat,” configurable,” “grooves,” and “twisted pairs” and determine that we need not expressly construe any other claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) ) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy). 1. Preamble The preambles of claims 27 and 31 recite a “data communications cable comprising.” Petitioner asserts that the preambles merely states an intended purpose and are not limiting. Pet. 12. We determine that no construction of this term is required at this stage of the proceedings to resolve any issues in dispute.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “dielectric pair separator” Petitioner asserts that the ordinary and customary meaning of a “dielectric pair separator” in view of the intrinsic record is a separator that serves as a dielectric medium and that the term does not require that the separator consist entirely of dielectric material. Pet. 12 (citing Ex. 1007 ¶ 74; Ex. 1001, claim 24 (requiring that the dielectric pair separator have Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely that a dielectric pair separator is “a separator that serves as a dielectric medium” and there is no requirement that the separator consist entirely of dielectric material. 3. “substantially flat” Claim 27 recites “the configurable dielectric pair separator being substantially flat.” Claim 31 requires that the “configurable dielectric pair separator include[e] a substantially flat dielectric tape.” Petitioner asserts that the ordinary and customary meaning of a substantially flat separator is a separator that is a substantially flat member prior to being formed into the cable assembly and that the term does not require that the separator be substantially flat in the finished cable. Pet. 13 (citing Ex. 1007 ¶ 76; Ex. 1001, 6:12–25). Petitioner asserts that this construction is consistent with the specification and the construction adopted by the Patent Office during reexamination of the related Patent No. 6,998,537 (“the ’537 patent”) and by the district court. Pet. 13–15 (citing Ex. 1001, 6:12–2, Figs. 5–11, 13; Ex. 1006, 10–11; Ex. 1007 ¶¶ 77–80; Ex. 1052, 3–4). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s uncontested proposed construction of this term, namely, a separator that is a substantially flat member prior to being formed into the cable assembly, and that the term does not require that the separator be substantially flat in the finished cable. 4. “configurable” Independent claims 27 and 31 both recite a “configurable dielectric pair separator.” Petitioner asserts that the ordinary and customary meaning of a “configurable” separator in view of the intrinsic record is “flexible (citing Ex. 1007 ¶ 81). Petitioner further asserts that this construction is consistent with the construction adopted by the district court. Id. (citing Ex. 1052, 1–2 Ex. 1007 ¶¶ 81– 84). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that “configurable” means “flexible enough to be formed or shaped in the course of making the cable.” 5. “grooves” Petitioner states that, for the purposes of this proceeding, Petitioner adopts the definition provided by the district court in prior litigation: “Regions within a cable that are substantially physically separated from other regions with[in] the cable by a pair separator; i.e., they are formed by, but need not be part of, the separator.” Pet. 18 (citing Ex. 1052, 3). Patent Owner does not dispute this construction. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s proposed construction of this term, namely, that grooves are regions within a cable that are substantially physically separated from other regions within the cable by a pair separator.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,570,095 - PTAB · Dec 15, 2023 · IPR2023-01056 · APJ Kristina M Kalan · IPR · Institution
The Board instituted inter partes review on all challenged claims and all asserted grounds after finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’030 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“partes review). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. The “ordinary and customary meaning of a claim term 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.” Id. at 1313. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. 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))). The parties do not argue for any express claim construction. Petitioner argues that it “presently believes the plain meaning is enough to resolve this petition.” Pet. 14. Patent Owner’s Preliminary Response has no separate section addressing claim construction. See Prelim. Resp., passim. The parties, however, dispute the meaning of the term “lateral edge” of the two layers of the dielectric material, as recited by the independent claims. See Pet. 36–37; Prelim. Resp. 19–26. We discuss “lateral edge” below in the context of the parties’ arguments regarding patentability. Infra § II.E.4. The parties may propose and support constructions of the term “lateral edge” during trial. On the present record, we determine we need not expressly construe any claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of ordinary skill in the art, does not include the front or back edges, but rather refers to the edges of the claimed barrier tape “running along the sides of the tape parallel to (or in) the longitudinal direction.” Prelim. Resp. 19– 20, 26. Patent Owner argues that this construction is supported by the Specification (citing Ex. 1001, 7:64–8:25, 8:38–46; Figures 3B–3E, Ex. 2001 ¶¶ 58–61) and the art cited by Petitioner (citing Ex. 1010, 23:58– 67; Ex. 1009, 2:20–24, 2:42–46, 4:27–33, 4:34–40, 5:65–75, Figs. 2, 3, 10; Ex. 2001 ¶¶ 62–65). Id. at 19–24. On the present record, and for the purposes of preliminarily discussing the term “lateral edge” in the context of the parties’ Ground 3 arguments, we understand “lateral edge” as referring to the edges of the claimed barrier tape “running along the sides of the tape parallel to (or in) the longitudinal direction,” and as not including the front or back edges. Prelim. Resp. 26. Patent Owner provides reasonable support for this interpretation in the ’030 patent Specification and other references. Id. at 19–24. We note again that in Ground 3, Petitioner argues that lateral edges may include the “front” and “back” edges of the dielectric material, “in that they extend laterally (as compared to extending along the longitudinal axis)” as shown in Petitioner’s annotated Figure 13C of Glew (Pet. 36–37), but argues in Grounds 1 and 4 that the lateral edges may be along the sides of the dielectric material, as shown in Petitioner’s annotated Figures 8D and 11 of Cook (Ground 1) and annotated Figure 13C of Glew (Ground 4). Pet. 20–21, 49. Petitioner’s inconsistent position on the interpretation of the “lateral edge” term among its Grounds 1, 3, and 4 arguments undermines its position as to the interpretation of the term, and undermines its position that Glew discloses this limitation under an anticipation standard. Accordingly, we are unpersuaded that Petitioner has met its burden of demonstrating a reasonable likelihood of prevailing on its Glew-based anticipation arguments.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “a person of ordinary skill in the art (POSITA) would have had a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in connection with designing, manufacturing, and testing of twisted-pair data cables,” and an “individual with a master’s degree in electrical engineering would require less industry experience (e.g., 1-2 years).” Pet. 15 (citing Ex. 1006 ¶ 12). Patent Owner’s declarant asserts that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering and a minimum of 3-4 years of industry experience in the telecommunications industry,” and does not agree industry experience specifically with respect to twisted-pair data cables would be necessary to qualify as having ordinary skill in the art. Ex. 2001 ¶ 26 (cited at Prelim. Resp. 22 n.6). Patent Owner states, however, that any differences between the parties’ proposed definitions “are insubstantial and do not impact the analysis of the issues presented.” Prelim. Resp. 22 n.6. For the purposes of this Decision, we adopt Petitioner’s proposal, because we find Petitioner’s statement of the level of ordinary skill in the art adequate and supported on this record. The level of ordinary skill in the art also appears to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,991,030 - PTAB · Aug 11, 2023 · PGR2023-00013 · APJ Sharon Fenick · PGR · Institution
Instituted PGR on claims 1–27 on all asserted grounds; the Board found it more likely than not that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A post-grant review may be instituted only if “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons below, Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’286 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art . . . would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technologies.” slip op. at 9
- Parallel petitionsDecided for petitioner
“The Trial Practice Guide states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. “Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b), which is identical to 35 U.S.C. § 326(b)). Although rare circumstances may necessitate two petitions, “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Id. To help the Board determine whether multiple petitions are necessary, the Trial Practice Guide further instructs a petitioner filing multiple petitions challenging the same patent to explain “the differences between the petitions, why the issues addressed by the differences are material, and why identifies one petition that satisfies petitioner's burden under 35 U.S.C. § 314(a).” CTPG 59–60. Additionally, the Trial Practice Guide instructs the patent owner to “clearly proffer any necessary stipulations,” where the patent owner asserts that “the differences identified by the petitioner are directed to an issue that is not material or not in dispute.” Id. at 61. The patent owner may, for example, “seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.” Id. In light of the particular facts before us, we decline to exercise our discretion to deny the Petition pursuant to 35 U.S.C. § 324(a) on the basis of the filing of two parallel petitions. In particular, we recognize that the two petitions do not include duplicate attacks on the basis of unpatentability over prior art, but rather break the issues into two distinct parts—prior-art based unpatentability challenges, in PGR2023-00012, and 35 U.S.C. §§ 101 and 112 challenges here. The usual considerations of fairness, timing, and efficiency do not weigh in favor of exercising our discretion to deny institution. In particular, the petitions were filed concurrently, which means that Petitioner did not gain a timing advantage that might otherwise occur if the petitions were filed serially. Additionally, the proceedings can be coordinated, and a similar or common schedule can be adopted. To the extent that Patent Owner argues (see Prelim. Resp. 55–56) that Petitioner was attempting to avoid providing a single stipulation that (upon institution) Petitioner will pursue neither section 103 grounds on certain art, as per the stipulation offered in PGR2023-00012, nor section 101 and 112 grounds as per the stipulation here (see Pet. 49), discretionary denial of this Petition would not provide such a stipulation. Because we institute both here and in is equivalent to our best understanding of Patent Owner’s desired stipulation “tak[ing] into account” the two Petitions. Accordingly, based on the particular facts and circumstances before us, we decline to exercise our discretion to deny the instant Petition under § 324(a) on the basis of the Petitioner’s filing of multiple petitions.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2. Conclusion We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 23
Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · Enfish · Phillips · NautilusPatents in suitUS 11,328,286
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.