- Par Health, Inc. v. Inforlife, S.A.Institution deniedPTAB · Aug 20, 2026 · PGR2026-00036 · APJ John A Squires · PGR · Institution
The Director denied institution because the petition did not show that Biomed was publicly accessible as prior art, so it failed to show any challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently that Biomed qualifies as a prior art printed publication. The Board’s precedential decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential), addresses prior-art qualification in the related context of instituting an inter partes review. Hulu states that “the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Id. at 13; see also Jazz Pharm. Inc. v. Amneal Pharm., LLC. 895 F.3d 1347, 1356 (Fed. Cir. 2018) (“[T]he IPR petitioner . . . had the burden to prove that a particular reference is a printed publication.”). The same guidance applies to post-grant reviews, albeit with the “more likely than not” standard applicable. See 35 U.S.C. § 324(a); Hulu, Paper 29 at 13 n.5. Hulu also states that “there is no presumption in favor of institution or in favor of finding a reference to be a printed publication under [37] § 42.108(c).” Hulu, Paper 29 at 16.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“sufficiently that Biomed qualifies as a prior art printed publication. The Board’s precedential decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential), addresses prior-art qualification in the related context of instituting an inter partes review. Hulu states that “the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Id. at 13; see also Jazz Pharm. Inc. v. Amneal Pharm., LLC. 895 F.3d 1347, 1356 (Fed. Cir. 2018) (“[T]he IPR petitioner . . . had the burden to prove that a particular reference is a printed publication.”). The same guidance applies to post-grant reviews, albeit with the “more likely than not” standard applicable. See 35 U.S.C. § 324(a); Hulu, Paper 29 at 13 n.5. Hulu also states that “there is no presumption in favor of institution or in favor of finding a reference to be a printed publication under [37] § 42.108(c).” Hulu, Paper 29 at 16. In this case, Petitioner merely cites a “date of revision” appearing within Biomed. Pet. 6 (citing Ex. 1005, 11). Yet, a revision date alone does not establish that Biomed was disseminated or made publicly available. And, although indicia appearing within a reference can sometimes support the printed publication status of the reference, I find the record to be devoid of any such indicia, or other evidence, supporting that Biomed was publicly disseminated or accessible by the June 15, 2021 “date of revision.” See Hulu, Paper 29 at 16–18. Thus, Petitioner fails to show that it is more likely” slip op. at 3
- Obviousness (§103) › Analogous artNot reached
“sufficiently that Biomed qualifies as a prior art printed publication. The Board’s precedential decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) (precedential), addresses prior-art qualification in the related context of instituting an inter partes review. Hulu states that “the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Id. at 13; see also Jazz Pharm. Inc. v. Amneal Pharm., LLC. 895 F.3d 1347, 1356 (Fed. Cir. 2018) (“[T]he IPR petitioner . . . had the burden to prove that a particular reference is a printed publication.”). The same guidance applies to post-grant reviews, albeit with the “more likely than not” standard applicable. See 35 U.S.C. § 324(a); Hulu, Paper 29 at 13 n.5. Hulu also states that “there is no presumption in favor of institution or in favor of finding a reference to be a printed publication under [37] § 42.108(c).” Hulu, Paper 29 at 16. In this case, Petitioner merely cites a “date of revision” appearing within Biomed. Pet. 6 (citing Ex. 1005, 11). Yet, a revision date alone does not establish that Biomed was disseminated or made publicly available. And, although indicia appearing within a reference can sometimes support the printed publication status of the reference, I find the record to be devoid of any such indicia, or other evidence, supporting that Biomed was publicly disseminated or accessible by the June 15, 2021 “date of revision.” See Hulu, Paper 29 at 16–18. Thus, Petitioner fails to show that it is more likely” slip op. at 3
§ 102 anticipation§ 103 obviousnessPatents in suitUS 12,370,153 - Meta Platforms, Inc. v. Sitnet LLCInstitution deniedPTAB · Jul 2, 2026 · IPR2026-00112 · APJ John A Squires · IPR · Director review
Institution was denied for claims 1–12 because the petition did not show that the cited search results taught the claimed “data feed.”
RulingsDirector review decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Although Petitioner asserts that the ’463 patent “does not limit the form of a data feed,” Petitioner does not explain what the ordinary and customary meaning of “data feed” was at the time of the claimed invention or otherwise propose an express construction of “data feed.” Pet. 6–7, 23. Nor does Petitioner point to any prosecution history that bears on the meaning of “data feed.” Id.; see 37 C.F.R. § 42.100. Accordingly, Petitioner does not provide sufficient evidence showing that Kraft’s or Wong’s disclosure of search results in response to a user-entered search query teaches a “data feed,” as recited in each challenged claim of the ’463 patent. As such, Petitioner does not demonstrate a reasonable likelihood it would prevail in showing at least one claim is unpatentable, as 35 U.S.C. § 314(a) requires.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“I agree with Patent Owner. Neither Kraft nor Wong uses the term “data feed” or characterizes its listing of Web pages (Kraft) or nodes (Wong) provided in response to a user-provided query as a “data feed.” See Ex. 1005, 5:8–12, 6:52–59, 16:52–59, 18:31–54, 18:61–19:23; Ex. 1007 ¶¶ 22, 28, 35. Petitioner points to a disclosure in the ’463 patent of a user requesting a personal information aggregator (PIA) to “receive a data feed.” Pet. 23 (citing Ex. 1001, 12:52–64). But Petitioner does not sufficiently explain how this disclosure provides support for broadly construing “browsing a data feed” to encompass a user entering criteria for a search (and not specifically requesting a “data feed”) and receiving a listing of Web pages or nodes in response. See Pet. 23, 58–59; Ex. 1003 ¶¶ 102, 201–202; Ex. 1005, 6:57–59 (describing users searching a data store for models that match “user-specified criteria”), 18:41–54 (describing a user submitting a query); Ex. 1007 ¶ 28 (describing “searching and selecting from keyword identifiers or other search terms”). Petitioner’s reliance on a separate disclosure in the ’463 patent of the PIA “searching . . . the network for information about the situation or event” also is not persuasive, because the ’463 patent does not describe that embodiment as involving a data feed or browsing a data feed. See Pet. 23 (citing Ex. 1001, 20:46–51) (emphasis omitted); Ex. 1001, 20:46–51.” slip op. at 3
§ 103 obviousnessPatents in suitUS 12,256,463 - Apple, Inc. v. Wecrevention, Inc.Institution deniedPTAB · Jun 24, 2026 · IPR2026-00242 · APJ John A Squires · IPR · Director review
The Director denied the petitions and instituted no trial, exercising discretion based on Petitioner’s unexplained inconsistent claim-construction positions before the Board and district court.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 11,894,098 - Apple, Inc. v. Wecrevention, Inc.Institution deniedPTAB · Jun 24, 2026 · IPR2026-00241 · APJ John A Squires · IPR · Director review
The Director denied institution of the IPR, finding Apple's unexplained inconsistent claim-construction positions before the Board and district court problematic.
RulingsDirector review decision- Other 314aInstitution denied discretionary otherDenied
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“that “[a]ll claim terms should be construed according to their ordinary and customary meaning,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Paper 2, 4 (emphasis added). Petitioner also states, as part of its analysis of the challenged claims, that “Petitioner does not concede that the preambles of the Challenged Claims are limiting.” Id. at 9 n.5 (emphasis added). In district court, however, Petitioner tells a different story, arguing there that the preamble is limiting. Ex. 2016, 6, 7, 9, 12. Indeed, Petitioner specifically denotes that “[r]eview of ‘the entirety of the patent’ makes clear that the preamble phrase ‘high speed memory chip module’ contains the core of what the inventors ‘actually invented and intended to encompass by the claims,’ . . . and so the preamble should be limiting.” Id. at 7 (internal citations omitted, emphasis added).” slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 10,998,017 - Apple, Inc. v. Wecrevention, Inc.Institution deniedPTAB · Jun 24, 2026 · IPR2026-00240 · APJ John A Squires · IPR · Director review
The Director denied Apple’s petitions and instituted no trial, exercising discretion based on Apple’s unexplained inconsistent claim-construction positions before the Board and district court.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“As I have indicated previously, petitioners should be presenting a single construction and applying that construction consistently. See Infineon Techs. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic and raises concerns of strategic litigation behavior spill-over into the PTAB inconsistent with Congress’s intent to provide a quick and cost-effective alternative to district court litigation. Id.; Revvo, Paper 20 at 3–4; see H.R. Rep. No. 112-98 at 48 (2011). Here, Petitioner offers no explanation for its divergent positions.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notOther
“that “[a]ll claim terms should be construed according to their ordinary and customary meaning,” and that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Paper 2, 4 (emphasis added). Petitioner also states, as part of its analysis of the challenged claims, that “Petitioner does not concede that the preambles of the Challenged Claims are limiting.” Id. at 9 n.5 (emphasis added). In district court, however, Petitioner tells a different story, arguing there that the preamble is limiting. Ex. 2016, 6, 7, 9, 12. Indeed, Petitioner specifically denotes that “[r]eview of ‘the entirety of the patent’ makes clear that the preamble phrase ‘high speed memory chip module’ contains the core of what the inventors ‘actually invented and intended to encompass by the claims,’ . . . and so the preamble should be limiting.” Id. at 7 (internal citations omitted, emphasis added).” slip op. at 2
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Other
“IPR2026-00243 are similarly problematic. In its Petitions, Petitioner identifies “input/output unit” as a means-plus-function limitation and identifies the corresponding structure as input/output unit 106 in the challenged patent. See, e.g., IPR2026-00241, Paper 2, 4. Petitioner also asserts “the applied prior art anticipates or renders obvious the Challenged Claims, regardless of whether ‘input/output unit’ is construed as a §112(f) means-plus-function limitation,” and that “Petitioner is not conceding . . . that the ’017 Patent provides adequate structure for the ‘input/output unit.’” Id. at 5 (emphasis added). In District Court, however, Petitioner once again takes a different position, arguing that the claim term “input/output unit” should be construed as a means-plus-function limitation, identifying the function as “performing input and/or output functions with respect to memory,” and asserting that the challenged patent “[l]acks sufficient structure (indefinite).” IPR2026-00241, Ex. 2016, 12. According to Petitioner, “[t]he specification fails to disclose sufficient corresponding structure for performing input and output operations with respect to memory, much less for performing those operations within any particular voltage range.” Id. at 19. Petitioner fails to adequately explain its different positions here before the Board and those it propounds in district court. See, e.g., IPR2026-00241, Paper 9. Patent Owner well states the issue; that “[t]o the extent § 112(f) governs, then either input/output unit 106 is sufficient corresponding structure (in which case [Petitioner’s] district-court indefiniteness argument fails), or it is not (in which case [Petitioner’s] IPR mapping relies on a structure [Petitioner] itself maintains is inadequate).” IPR2026-00241, Paper 8, 8–9. I agree. Petitioner’s statement that it does not concede the challenged patent provides adequate structure for the “input/output unit” thus only compounds the problem.” slip op. at 3
Claim constructionDiscretionary denialPatents in suitUS 9,201,834 - Westinghouse Air Brake Technologies Corp. v. Railware, Inc.Institution deniedPTAB · May 15, 2026 · IPR2026-00133 · APJ John A Squires · IPR · Director review
The Director denied the petitions and instituted no trial, exercising discretion based on the complete record and the petitioner’s failure to present a consistent claim construction position.
RulingsDirector review decision- PTAB / AIA Trials › Discretionary denialInstitution denied discretionary otherInstitution denied
“As I have indicated previously, a petitioner should present a single construction and apply that construction consistently. See Infineon Techs. 1 Citations are to papers in IPR2026-00133. The parties filed similar papers in IPR2026-00134 and IPR2026-00135. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic. Id.; Revvo, Paper 20 at 3–4. A petitioner may not avoid presenting its own claim construction position in a proceeding before the Office by presenting an analysis based on claim construction positions taken by other parties in a different proceeding. See 37 C.F.R. § 42.104(b)(3) (requiring that the petition must “set forth . . . [h]ow the challenged claim is to be construed”); Trial Practice Guide2 §§ II.B.(3) and (6). Permitting such conduct would allow a petitioner to avoid taking a consistent claim construction position. Such conduct would undermine the purpose of inter partes review proceedings and detract from the Office’s goal of “providing greater predictability and certainty in the patent system.” Revvo, Paper 20 at 4–5. While certain arguments are highlighted above, the determination to exercise discretion to deny institution is based on the complete record and a holistic assessment of all of the evidence in light of the arguments presented.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“As I have indicated previously, a petitioner should present a single construction and apply that construction consistently. See Infineon Techs. 1 Citations are to papers in IPR2026-00133. The parties filed similar papers in IPR2026-00134 and IPR2026-00135. Americas Corp. v. Mosaid Techs. Corp., IPR2025-01456, Paper 27 at 3–4 (Director Mar. 17, 2026). Failure to do so, without adequate explanation, is problematic. Id.; Revvo, Paper 20 at 3–4. A petitioner may not avoid presenting its own claim construction position in a proceeding before the Office by presenting an analysis based on claim construction positions taken by other parties in a different proceeding. See 37 C.F.R. § 42.104(b)(3) (requiring that the petition must “set forth . . . [h]ow the challenged claim is to be construed”); Trial Practice Guide2 §§ II.B.(3) and (6). Permitting such conduct would allow a petitioner to avoid taking a consistent claim construction position. Such conduct would undermine the purpose of inter partes review proceedings and detract from the Office’s goal of “providing greater predictability and certainty in the patent system.” Revvo, Paper 20 at 4–5.” slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 9,517,782 - Whoop, Inc. v. Omni Medsci, Inc.InstitutedPTAB · May 6, 2026 · PGR2026-00003 · APJ John A Squires · PGR · Director review
The Director instituted post-grant review of claim 7 of the ’790 patent under 35 U.S.C. § 324(a).
RulingsDirector review decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In this proceeding, Petitioner persuasively shows, on the current record, that the ’790 patent is an AIA patent. As Petitioner notes, during prosecution of the ’790 patent, Patent Owner certified that the ’790 patent application “contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013.” Ex. 1002, 246; see Pet. 11–12. Patent Owner, therefore, acknowledged that the application was to be examined under the first inventor to file provisions of the AIA. Id. Also, Petitioner shows, for purposes of institution, that the provisional applications to which the ’790 patent claims priority do not provide written description support for a “wearable device adapted to be placed on a wrist or a hand dorsal of a user,” such that the detection system of the wearable device has a “plurality of detectors arranged along an arc,” as recited in claim 2. Pet. 13.1 Although Patent Owner asserts that one of the provisional applications provides written description support via a figure illustrating a mouth guard design and a disclosure that “[t]he non-invasive devices may be part of a series of biosensors applied to the patient,” I do not find this persuasive based on the current record. See Paper 6, 16–17 (citing Ex. 1071, 15–16, 29, 40); Ex. 1071, 7, 29, 40. Even if the mouth guard could be considered to have detectors arranged in an arc, the mouth guard is used to “perform a non-invasive measurement for dental caries” and is not described as “adapted to be placed on a wrist or a hand dorsal of a user,” as claim 2 requires. See Ex. 1071, 7, 29, 18–19, 40.” slip op. at 3
- Disclosure Requirements (§112) › Written description (Ariad)Decided for petitioner
“record, that the ’790 patent is an AIA patent. As Petitioner notes, during prosecution of the ’790 patent, Patent Owner certified that the ’790 patent application “contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013.” Ex. 1002, 246; see Pet. 11–12. Patent Owner, therefore, acknowledged that the application was to be examined under the first inventor to file provisions of the AIA. Id. Also, Petitioner shows, for purposes of institution, that the provisional applications to which the ’790 patent claims priority do not provide written description support for a “wearable device adapted to be placed on a wrist or a hand dorsal of a user,” such that the detection system of the wearable device has a “plurality of detectors arranged along an arc,” as recited in claim 2. Pet. 13.1 Although Patent Owner asserts that one of the provisional applications provides written description support via a figure illustrating a mouth guard design and a disclosure that “[t]he non-invasive devices may be part of a series of biosensors applied to the patient,” I do not find this persuasive based on the current record. See Paper 6, 16–17 (citing Ex. 1071, 15–16, 29, 40); Ex. 1071, 7, 29, 40. Even if the mouth guard could be considered to have detectors arranged in an arc, the mouth guard is used to “perform a non-invasive measurement for dental caries” and is not described as “adapted to be placed on a wrist or a hand dorsal of a user,” as claim 2 requires. See Ex. 1071, 7, 29, 18–19, 40.” slip op. at 3
§ 112 disclosurePatents in suitUS 12,193,790 - PTAB · Mar 17, 2026 · IPR2025-01487 · APJ John A Squires · IPR · Director review
The Director instituted review of claims 1–21 and bound Petitioner to its district court construction of “clock output signal” for claims 4, 5, and 19.
RulingsDirector review decision- Director reviewDirector review, grantedGranted
“Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–21 of the ’381 patent is instituted; FURTHER ORDERED that Petitioner shall be bound by its proposed district court construction of the term “clock output signal” in its analysis of claims 4, 5, and 19 of the ’381 patent; and” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–21 of the ’381 patent is instituted;” slip op. at 4
- Prior constructionTerm construed petitioner constructionDecided for patent owner
“positions in the district court that are inconsistent with those presented in the Petition and fails to sufficiently explain why those different positions are warranted. Prelim. Resp. 3–4, 9 (citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 (Director Nov. 3, 2025) (precedential) (“Revvo”)). In particular, Patent Owner notes that in District Court, Petitioner has proposed a construction of the term “clock output signal” in dependent claims 4, 5, and 19 as being “a periodic signal that synchronizes system operations.” Id. at 9 (quoting Ex. 2007, 12). In the Petition, however, Petitioner contends that “no claim terms require a formal construction for purposes of addressing the grounds in this Petition.” Pet. 2.” slip op. at 2
Claim constructionPatents in suitUS 9,972,381 - Apple Inc. v. Ginko LLCInstitution deniedPTAB · Mar 2, 2026 · IPR2025-01388 · APJ John A Squires · IPR · Director review
The Director denied institution because the petition did not sufficiently show that the asserted prior art disclosed the challenged claims’ requirement that a contact request include a permission setting.
RulingsDirector review decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Petitioner’s arguments are not persuasive. Petitioner fails to show that Robertson discloses that the request to become a contact with a potential contact includes a first permission level for the potential contact. In other words, Petitioner does not establish that any of the cited passages in Robertson disclose that the request includes a first permission setting. See Pet. 15–17 (citing Robertson, 7:42–45, 7:55–58, 8:10–17, 8:23–24, Fig. 9). In particular, each passage is silent as to when the permission levels are set. At most, Robertson discloses specifying permissions after contact has been established. See Robertson, 7:50–53. But Petitioner fails to account for the claim requirement that the first permission level is part of the request to establish contact. “In an [inter partes review], the petitioner has the burden from the onset 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”)). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). “The IPR petition, thus, must provide an understandable explanation of the element-by-element specifics of the patentability challenges, including the identification of particular portions of prior art on which the petitioner is relying.” Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1001 (Fed. Cir. 2023).” slip op. at 3
- BurdenNot shown unpatentable
“Petitioner’s arguments are not persuasive. Petitioner fails to show that Robertson discloses that the request to become a contact with a potential contact includes a first permission level for the potential contact. In other words, Petitioner does not establish that any of the cited passages in Robertson disclose that the request includes a first permission setting. See Pet. 15–17 (citing Robertson, 7:42–45, 7:55–58, 8:10–17, 8:23–24, Fig. 9). In particular, each passage is silent as to when the permission levels are set. At most, Robertson discloses specifying permissions after contact has been established. See Robertson, 7:50–53. But Petitioner fails to account for the claim requirement that the first permission level is part of the request to establish contact. “In an [inter partes review], the petitioner has the burden from the onset 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”)). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). “The IPR petition, thus, must provide an understandable explanation of the element-by-element specifics of the patentability challenges, including the identification of particular portions of prior art on which the petitioner is relying.” Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1001 (Fed. Cir. 2023).” slip op. at 3
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner’s arguments are not persuasive. Petitioner fails to show that Robertson discloses that the request to become a contact with a potential contact includes a first permission level for the potential contact. In other words, Petitioner does not establish that any of the cited passages in Robertson disclose that the request includes a first permission setting. See Pet. 15–17 (citing Robertson, 7:42–45, 7:55–58, 8:10–17, 8:23–24, Fig. 9). In particular, each passage is silent as to when the permission levels are set. At most, Robertson discloses specifying permissions after contact has been established. See Robertson, 7:50–53. But Petitioner fails to account for the claim requirement that the first permission level is part of the request to establish contact. “In an [inter partes review], the petitioner has the burden from the onset 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”)). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). “The IPR petition, thus, must provide an understandable explanation of the element-by-element specifics of the patentability challenges, including the identification of particular portions of prior art on which the petitioner is relying.” Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1001 (Fed. Cir. 2023).” slip op. at 3
§ 103 obviousnessPatents in suitUS 11,025,573 - Tiktok, Inc. v. Shopsee, Inc.Institution deniedPTAB · Jan 16, 2026 · IPR2025-01485 · APJ John A Squires · IPR · Director review
The Director granted Patent Owner’s request for discretionary denial and denied the Petition under § 314(a), declining to institute an IPR.
RulingsDirector review decision- Other 314aInstitution denied discretionary otherInstitution denied
“[W]hen a petitioner advances different positions before the Board and a district court, that petitioner is required to explain why those different positions are warranted.” Tesla Inc., v. Intellectual Ventures II, LLC, IPR2025-00340, Paper 18 at 3 (Director Nov. 5, 2025) (informative) (citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 at 3–5 (Director Nov. 3, 2025) (precedential)). Petitioner has not done so. Rather, Petitioner has stipulated that it will continue to pursue different constructions and abandon the inconsistent construction in district court if the IPR is instituted. This is not in keeping with our precedent, and I decline to modify it to permit this approach. Additionally, Petitioner’s claim construction stipulation is distinguishable from its stipulation that “it will not pursue in the parallel litigation the grounds it raised or could have reasonably raised in the petition, and that it will not pursue any ground that relies on Ohliger or the Veepio system.” DD Opp. 1–2. The latter stipulation increases efficiency by reducing duplication between the district court and the Board. It also minimizes the potential for inconsistent outcomes in the two proceedings. Petitioner’s stipulation not to continue to advance different claim construction positions lacks similar benefits. At best, it replaces one argument in district court for another argument at the Board. Accordingly, the Petition is denied under 35 U.S.C. § 314(a). slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Decided for patent owner
“[W]hen a petitioner advances different positions before the Board and a district court, that petitioner is required to explain why those different positions are warranted.” Tesla Inc., v. Intellectual Ventures II, LLC, IPR2025-00340, Paper 18 at 3 (Director Nov. 5, 2025) (informative) (citing Revvo Techs., Inc. v. Cerebrum Sensor Techs., Inc., IPR2025-00632, Paper 20 at 3–5 (Director Nov. 3, 2025) (precedential)). Petitioner has not done so. Rather, Petitioner has stipulated that it will continue to pursue different constructions and abandon the inconsistent construction in district court if the IPR is instituted. This is not in keeping with our precedent, and I decline to modify it to permit this approach. slip op. at 2
Claim constructionDiscretionary denialPatents in suitUS 11,134,316
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.