- Merck Sharp And Dohme LLC v. Halozyme, Inc.All claims unpatentablePTAB · Sep 25, 2026 · PGR2025-00039 · APJ Michael A Valek · PGR · Final written decision
Claims 1–4 and 7–11 are unpatentable because the challenged claims lack written-description support and are not enabled.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“1 Although the Petition was directed to claims 1–11 of the ’185 patent, Patent Owner filed a statutory disclaimer of claims 5 and 6 prior to institution, leaving just claims 1–4 and 7–11 at issue. See Ex. 2003.” slip op. at 2
- Skill levelOther
“II. ANALYSIS A. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“B. Claim Construction In a post-grant review, we interpret a claim “using the same claim” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“For these reasons, we find that a preponderance of the evidence” slip op. at 59
Patent outcomesUS 12,104,185 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 12,104,185 - Merck Sharp And Dohme LLC v. Halozyme, Inc.All claims unpatentablePTAB · Sep 25, 2026 · PGR2025-00033 · APJ Michael A Valek · PGR · Final written decision
Claims 1, 2, and 6–29 are unpatentable for lack of written description and enablement; the Board did not find them obvious over the ’429 patent and Chao.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“structural connections and three-dimensional modeling Patent Owner’s experts attempt to make (see, e.g., Ex. 2070 ¶¶ 126–212, 297–342; Ex. 2068 ¶¶ 123–125, 245, 294–313, 318) do not appear in the written description itself. To the extent the experts disagree on this point, we credit the testimony of Petitioner’s experts over that of Patent Owner’s. See Ex. 1133 ¶¶ 111–230 (identifying problems with the approaches proposed by Patent Owner’s experts). For these reasons, we find that a preponderance of the evidence of record better supports a finding that in the 2011–2012 timeframe, it would have been unpredictable to identify which multiple mutants retained hyaluronidase activity, even with the single substitution data provided by the ’652 patent.” slip op. at 58
- Skill levelOther
“II. ANALYSIS A. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Decided for petitioner
“exclude the use of modified PH20 polypeptides as contraceptives—the only other possible utility described in the ’652 patent—is unavailing. Resp. 39. First, “[t]he fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.” Phillips, 415 F.3d at 1327 (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 908 (Fed. Cir. 2004)). Second, unlike the definitions of “PH20” and “modified PH20 polypeptide” in the “Definitions” section of the Specification, the passages describing possible contraceptive use do not contain any characteristics suggesting they are definitional in nature. See Alnylam, 138 F.4th at 133 (enumerating “characteristics” such as the fact that the text appears in the “Definitions” section, sets the term off in quotation marks, and uses phrases like “refer to” that indicate that specification language is definitional in nature). Accordingly, the statement that “[a]lso provided are modified PH20 polypeptides that are inactive, and that can be used, for example, as antigens in contraception vaccines” (Ex. 1001, 75:56–58), does not redefine the term, nor otherwise void the definitional language in the Specification stating that a “modified PH20 polypeptide can have up to 150 amino acid replacements, so long as the resulting modified PH20 polypeptide exhibits hyaluronidase activity.” Id. at 48:47–49 (emphasis added).” slip op. at 26
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“1352. While a POSA might be able to embark on their own research program to try to find the genus of multiply-modified PH20 polypeptides recited in the challenged claims, the four corners of the written description here do not demonstrate the inventors were in possession of such. See id. at 1356–57 (recognizing that “[p]erhaps one of ordinary skill could discover this information, but this does not alter our conclusion that the description . . . just represent a wish or arguably a plan for future research”) (internal quotation omitted).” slip op. at 68
Patent outcomesUS 12,049,652 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 12,049,652 - Charles River Laboratories, Inc. v. Seikagaku CorporationAll claims unpatentablePTAB · Sep 8, 2026 · PGR2025-00023 · APJ Per Curiam · PGR · Final written decision
Claims 1–9 are unpatentable as anticipated by the ’629 publication; the claims are not entitled to the 2013 priority date.
RulingsFinal written decision- Skill levelSkill level board ownOther
“We find that a rigid requirement as to the subject of a POSITA’s doctoral degree (e.g., biochemical engineering, enzymology), or experience working specifically with horseshoe crab proteins, is not consistent with the evidence of record. See, e.g., Ex. 1067, 20:23–21:2 (Dr. Schaefer testifying that the fact the “name of [his] Ph.D. is immunology . . . does not change the fact that the core of [his] thesis training was really in molecular biology”), 22:3–15 (explaining that “the fact that the production of proteins recombinantly is mostly species agnostic”); Ex. 1069, 45:20–47:17 (Dr. Morris testifying that whether a person is a POSITA depends on the person’s “experience, [ ] publications,” and work done for the Ph.D. rather than the name of the Ph.D. program). We also find that evidence of record supports Petitioner’s assertion that, for purposes of defining a POSITA, “[m]ore education could substitute for experience, and vice versa.” See, e.g., Pet. 22; Ex. 1065, 99:14–100:3. Accordingly, based on the entirety of the trial record, we find a POSITA with respect to the claims of the ’109 patent would have had a two years of experience with cloning genes, expressing cloned genes as proteins, and/or characterizing such cloned genes and proteins, with more education being able to substitute for experience, and vice versa. A POSITA may also have collaborated with others, including those with specific experience in utilizing or assessing horseshoe crab Factor C for endotoxin detection and quantitation.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes an express construction of any claim term. See Pet. 22–23 (not proposing any constructions); PO Resp. 23 (“Patent Owner agrees that the terms can be afforded their plain and ordinary meaning.”). However, Patent Owner states that some of Petitioner’s arguments implicitly construe claim 1 in an erroneous manner. PO Resp. 23–28. “For example, Petitioner argues that ‘an adequate written description would have to either disclose representative examples of the possible working cascades of various proteins or some accurate structural feature of the claimed proteins that allow them to function in the claimed assay as a whole.’” Id. at 23 (quoting Pet. 35). Patent Owner argues that, contrary to what Petitioner’s argument allegedly implies, “Claim 1 is directed to a method for producing an endotoxin assay agent” and does not require the use – Owner that claim 1 does not require the use of endotoxin assay agent. However, the claimed endotoxin assay agent must be capable of performing the assay, as counsel for Patent Owner acknowledged. Tr. 83:5–9.” slip op. at 10
- BurdenNot shown unpatentable
“In this case, to show that the claims of the ’109 patent are unpatentable for lack of written description, Petitioner would have needed to show that the specification as filed (i.e., the ’420 application) fails to reasonably convey to those skilled in the art that Patent Owner had possession of the claimed subject matter as of the July 3, 2023, filing date. Petitioner did not. Pet. 23–24. Nor does Petitioner’s declarant offer testimony that could support such a showing. See Ex. 1003 ¶50 (“I have been asked to provide my opinions as to the state of the art in this field for purposes of determining what the inventors disclosed as their invention as of December 10, 2013.”), ¶51 (“Whenever I offer an opinion in this declaration about the knowledge of a POSA, the manner in which a POSA would have understood the claims of the ’109 patent or its description, the manner in have been led to do based on the prior art, I am referencing the December 10, 2013 timeframe.”). In our Institution Decision, we stated: Although the ’420 application is essentially identical to the ’767 application, the person of ordinary skill in 2013 is not the same as in 2023. See Ariad, 598 F.3d at 1351 (“[T]he [written description] test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” (emphasis added)). Thus, the information presented in the Petition, which is limited to the perspective of a 2013 POSITA, does not demonstrate that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable for lack of written description. Inst. Dec. 12 (alterations in original). During trial, Petitioner did not present any further arguments in support of Ground 1. See generally Pet. Reply. Petitioner has failed to prove that claims 1–9 are unpatentable for failing to meet the written description requirement set forth in 35 U.S.C. § 112(a).” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot shown unpatentable
“Although the evidence before us shows that, in 2013, a POSITA knew how to recombinantly express genes in expression systems such as CHO or HEK-293 cell lines, the evidence shows that this was true only for genes whose genetic sequences were known or readily available. See, e.g., Ex. 1069, 34:11–22 (“Q. Okay. So you would agree that the creation of the recombinant protein requires the underlying sequence of, as you said, the original animal? A. Of course.”) Because it is undisputed that, in 2013, the genetic sequence for Limulus polyphemus Factor C was unknown, or least not publicly available, Falko-Gunter does not support a finding of adequate written description here. See, e.g., Tr. 48:18–19 (“Patent Owner agrees that there had not been, as of 2013, the full length cDNA sequence for Limulus polyphemus Factor C published.”).” slip op. at 23
Patent outcomesUS 11,959,109 unpatentableClaim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 11,959,109 - Charles River Laboratories, Inc. v. Seikagaku CorporationAll claims unpatentablePTAB · Sep 8, 2026 · IPR2025-00440 · APJ Tawen Chang · IPR · Final written decision
Claim 21 is unpatentable as obvious over Mizumura with either the ’498 PCT or McClymont; the Revised Contingent Motion to Amend proposing claim 22 is denied.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“overlap to a significant degree, i.e., a person with a Ph.D. in a discipline related to biological sciences and having had at least two years of work experience. However, the parties’ proposals differ slightly in the specific subjects in which a POSA would have had a doctoral degree, and whether the person’s work experience must have been directly related to horseshoe crab Factor C. As an initial matter, we find that a rigid requirement as to the subject of a POSA’s doctoral degree (e.g., biochemical engineering, enzymology), or experience working specifically with horseshoe crab proteins, is not consistent with the evidence of record. See, e.g., Ex. 1067, 20:23–21:2 (Dr. Schaefer testifying that the fact the “name of [his] Ph.D. is immunology . . . does not change the fact that the core of [his] thesis training was really in molecular biology”), 22:3–15 (explaining “the fact that the production of proteins recombinantly is mostly species agnostic”); Ex. 1069, 45:20–47:17 (Dr. Morris testifying that whether a person is a POSA depends on the person’s “experience, [ ] publications,” and work done for the Ph.D. rather than the name of the Ph.D. program). We also find that evidence of record supports Petitioner’s assertion that, for purposes of defining a POSA, “[m]ore education could substitute for experience, and vice versa.” See, e.g., Pet. 19; Ex. 1065, 99:14–100:3. with respect to the claims of the ’318 patent would have had a Ph.D. in molecular biology, biochemistry, or a related discipline, and about two years of experience with cloning genes, expressing cloned genes as proteins, and/or characterizing such cloned genes and proteins, with more education being able to substitute for experience, and vice versa. A POSA may also have collaborated with others, including those with specific experience in utilizing or assessing horseshoe crab Factor C for endotoxin detection and quantitation.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction The parties agree that “the terms in claim 21 can be afforded their plain and ordinary meaning for purposes of this proceeding” without further construction. Pet. 19–20; PO Resp. 11. Because express claim construction is not needed to resolve the issues in this case, we need not, and do not, construe expressly any claim term for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“Carrying Out the Invention section, that “[t]he Factor C of the present invention is a Factor C derived from a horseshoe crab,” and states later in the same section that “[e]xamples of the horseshoe crab include . . . Limulus polyphemus.” Ex. 1006, 40. However, none of the remaining portions of ’767 application cited by Patent Owner relate directly to L. polyphemus; instead, the remaining portions of ’767 application cited by Patent Owner are directed to other species, in particular the Japanese horseshoe crab T. tridentatus. Further, Patent Owner’s witness, Dr. Schaefer, conceded that the ’767 application does not contain Factor C sequence information for L. polyphemus. See, e.g., Ex. 1067, 44:25–45:23. Although “[n]o length requirement exists for a disclosure to adequately describe an invention,” Falko-Gunter, 448 F.3d at 1365–1366, we are persuaded that a POSA would not, based on the totality of the above disclosures, reasonably understand that the inventors were in possession of the claimed HEK-293 recombinant L. polyphemus Factor C protein, in view of the state of the art as of December 10, 2013. In this regard, we note that adequate written description of a biological molecule, such as a HEK293 recombinant L. polyphemus Factor C protein, requires “more than a mere statement that it is part of the invention and reference to a potential method for isolating it”; instead, what is required is “‘a precise definition, such as by structure, formula, chemical name, or physical properties,’ not a mere wish or plan for obtaining the claimed chemical invention.” The Regents of the” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Neither do we see Petitioner’s arguments regarding the December 10, 2013 priority date to be “mutually opposed” as Dr. Schaefer testified. Ex. 1067, 216:4– 24. Instead, we credit evidence of record, including Dr. Jain’s testimony and the February 22, 2018 Mizumura Declaration, that existence of the full sequence would permit a more complete analysis and that such an analysis would provide a POSA with a reasonable expectation that the claimed L. polyphemus recombinant protein would have a residual activity within the claimed range. See, e.g., Ex. 1029, 2–5; Ex. 1010, 48; Ex. 1065, 117:14– 130:24 (explaining that comparison of partial sequences in the Tokunaga 1991 publication showed “difference around the cleavage site” between T. tridentatus and L. polyphemus but comparison of the full sequence revealed that “the catalytic triad of histidine, serine, aspartate . . . to be more similar between Tachypleus and Limulus”). Patent Owner asserts that “Petitioner’s reliance on a statement made by Dr. Mizumura in a declaration submitted during prosecution of the ’767 Application fails to fill the gap in the analysis” regarding reasonable expectation of success, because the declaration “offers no evidence of the percentage of conserved amino acid substitutions that exist to support the conclusion that a POSA would have expected residual activity to be maintained between Tachypleus tridentatus and Limulus polyphemus” PO Resp. 47. However, as noted above, Dr. Mizumura provides an alignment of Factor C proteins from the two different species of horseshoe crab, determines that the similarity between the amino acid sequence is 99.5%, states that the amino acid residues that can undergo N-type sugar chain that L. polyphemus, like T. tridentatus, would also be less susceptible to inhibition by ions. Ex. 1029, 4–5. For the reasons discussed above, we also disagree with Patent Owner’s assertion that Petitioner’s reasonable expectation of success argument is “nothing more than conclusory assertions with no support.” PO Resp. 46. Rather, we find Petitioner has shown, by a preponderance of the evidence, that a POSA would have had reason to combine the teachings of Mizumura and the ’498 PCT, with a reasonable expectation of success in arriving at the Factor C protein recited in claim 21.” slip op. at 38
Patent outcomesUS 11,236,318 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,236,318 - Merck Sharp & Dohme LLC v. Halozyme, Inc.All claims unpatentablePTAB · Sep 1, 2026 · PGR2025-00017 · APJ Jeffrey N Fredman · PGR · Final written decision
Claims 1, 2, 6–15, and 17–30 are unpatentable because the challenged claims lack written-description support and are not enabled.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art We consider the grounds of unpatentability in view of the” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“been able to use the data in the Specification to make reasonable predictions about the effect of multiple modifications on hyaluronidase activity, we view this testimony to at most describe a research plan (i.e., a “tool to engage in further modification”14) for finding the recited polypeptides rather than demonstrating the inventors were in possession of the full scope claimed. This is particularly so given the limits of the then-available analytical tools noted above and the fact that the structural connections and three dimensional modeling Patent Owner’s experts attempt to make (see, e.g., Ex. 2070 ¶¶ 129–213; Ex. 2068 ¶¶ 123–125) do not appear in the written description itself. To the extent the experts disagree on this point, we credit the testimony of Petitioner’s experts over that of Patent Owner’s. See Ex. 1133 ¶¶ 111–230 (identifying problems with the approaches proposed by Patent Owner’s experts). For these reasons, we find that a preponderance of the evidence of record better supports a finding that in the 2011–2012 timeframe, it would have been unpredictable to identify which multiple” slip op. at 53
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“been able to use the data in the Specification to make reasonable predictions about the effect of multiple modifications on hyaluronidase activity, we view this testimony to at most describe a research plan (i.e., a “tool to engage in further modification”14) for finding the recited polypeptides rather than demonstrating the inventors were in possession of the full scope claimed. This is particularly so given the limits of the then-available analytical tools noted above and the fact that the structural connections and three dimensional modeling Patent Owner’s experts attempt to make (see, e.g., Ex. 2070 ¶¶ 129–213; Ex. 2068 ¶¶ 123–125) do not appear in the written description itself. To the extent the experts disagree on this point, we credit the testimony of Petitioner’s experts over that of Patent Owner’s. See Ex. 1133 ¶¶ 111–230 (identifying problems with the approaches proposed by Patent Owner’s experts). For these reasons, we find that a preponderance of the evidence of record better supports a finding that in the 2011–2012 timeframe, it would have been unpredictable to identify which multiple” slip op. at 53
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledUnpatentable
“an enzyme has folded,” Dr. Naismith states, “there would need to be additional evidence to justify a conclusion that the folded enzyme is sufficiently stable to retain its folded state” and “a POSA would not believe an enzyme had ‘properly folded’ if it did not maintain activity over a meaningful period or if it formed aggregates within a short period.” Id. ¶ 59.” slip op. at 78
Patent outcomesUS 12,110,520 unpatentable§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 12,110,520 - Apple Inc. / Amazon Web Services, Inc. v. Ziklag IP LLCAll claims unpatentablePTAB · Aug 26, 2026 · IPR2026-00047 · APJ Hung H Bui · IPR · Final written decision
Claims 1–4, 6, 9–14, and 17 are unpatentable as obvious over Yurt and Logan; the Board denied Petitioner’s motion to strike.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the record before us, we are unpersuaded that Patent Owner’s “proposed level of skill” is appropriate in this proceeding for reasons discussed below.” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“McCulloh’s qualifications are grounded upon Patent Owner’s “proposed level of skill” (which we rejected) that is “higher than Petitioner’s proposed level” (which we adopted for this proceeding) and focus on their level of skill in the late 1990s timeframe (time of the invention), but there is no time requirement on when an expert acquired the requisite level of skill in the art. Osseo Imaging, LLC v. Planmeca USA Inc., 116 F. 4th 1335, 1340–1341 (declining to add a timing requirement to the minimum qualifications necessary to offer expert testimony from the perspective of a person of ordinary skill in the art). “An expert need not have acquired that skill level prior to the time of the invention to be able to testify from the vantage point of a person of ordinary skill in the art. Rather, an expert can acquire the necessary skill level later and develop an understanding of what a person of ordinary skill knew at the time of the invention. In practice, the fact that the expert was not a person of ordinary skill at the time of the invention may well be used during cross examination to undermine the credibility of the expert.” Id. Under Petitioner’s proposed level of skill (which we adopted), Dr. McCulloh is indeed qualified to testify in this proceeding because he has a Ph.D. in Computer Science from Carnegie Mellon University and extensive experience, including “hands-on deployment and academic research in distributed systems operating under real-world constraints” (Ex. 2009, Ex. 2010). See Ex. 2010 (CV) (BSIE, MS Comp. Sci, PhD Comp. Sci, Lieutenant 1994-1999, 10th Mountain Division (“led the army’s first tactical deployment of a distributed computing system”)); Ex. 2009 ¶¶ 6–10. Although Dr. McCulloh’s declaration does not include any searching or analysis of patent literature including Yurt or Logan as part of his analysis of the “background” state of the art, as correctly recognized by Petitioner (Pet. Reply 7–8 (citing Ex. 1017, 74:18–75:14; Ex. 2009 ¶ 3)), we are persuaded that Dr. McCulloh is qualified to address Dr. Lippman’s portrayal of the architecture disclosed in the ’128 patent, as advanced by Patent Owner. Ex. 2009, ¶¶ 3, 5–34; Ex. 2010. Dr. McCulloh does not provide testimony to refute Petitioner’s obviousness analysis based on Yurt and Logan. See Ex. 2009. Mr. Johnson is only offered to refute Petitioner’s obviousness analysis based on Yurt and Logan. Ex. 2007 ¶¶ 3, 18, 29. Under Petitioner’s proposed level of skill (which we adopted), Mr. Johnson, who is a co-inventor of the ’128 patent, is qualified to testify in this proceeding, especially, when his declaration states that (1) he is a POSITA “with more than 30 years of experience building technology-driven media and contentdistribution systems” and (2) he “was actively involved in the development and deployment of digital music and video distribution technologies” since the mid-1990’s, including “real-time and near-real-time electronic delivery of media content.” Ex. 2007 ¶¶ 9–10, 14, 16. Certainly, “[t]he inventor himself may qualify as an expert and testify what his claims would mean in the relevant art.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 991 (Fed. Cir. 1995).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction needed
“Plain Meaning of “Substantially Real Time” Instead, the plain meaning of “substantially real time” is readily apparent and understood by a person of skill (POSITA) in the art in the context of data distribution or transmission of the ’128 patent as referring to an acceptable time delay (i.e., “a fraction of real time”) between distribution center 18 and user device 12, via network 14, shown in Figures 1–2 of the ’128 patent and, as such, is consistent with the ‘128 patent’s specification and Dr. Lippman’s Declaration (Ex. 1003, ¶¶ 79, 126). Because the plain meaning of “substantially real time” as understood by a POSITA is readily apparent, there is no reason for the Board to consider Patent Owner’s clarification of “substantially real time” based solely on extrinsic evidence, i.e., counsel argument, Mr. Johnson’s declaration (Ex. 2007, ¶¶ 27, 29–30, 33, 39; Ex. 1018, 38:13–39:20) and Dr. McCulloh’s declaration (Ex. 2009, ¶ 19). For example, Patent Owner, relying upon Mr. Johnson’s testimony, clarifies the term “substantially real time” requires either (1) “playback while transmission is ongoing” (PO Resp. 30), or (2) “[a] coordinated system behavior in response to a user’s request” “in which a user request triggers coordinated operations, including locating content across distributed systems, routing that content, and initiating playback while transmission is ongoing” (PO Sur-Reply 4 (citing Ex. 1001, 2:67–3:2, 6:23–35)). However, Patent Owner’s shifting position regarding “substantially real time” is not commensurate with the plain reading of the term. Based on the plain meaning of “substantially real time,” we are persuaded by Petitioner that Yurt explicitly discloses transmitting data at least in “real time,” preferably “less than real time” or “a fraction of real time” for playback. Pet. Reply 9 (citing Ex.1005, code (57), 1:66–2:4, 4:68– 5:3 (teaching distributing “digital audio” in “less than real time” and in “a fraction of real time,” where the receiving system may “decompress in real time the requested material as it is distributed by transmission system 100”)).” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“teaches or renders obvious all limitations of claim 1, Petitioner also provides sufficient motivation or reasoning with a rational underpinning to combine Yurt and Logan. Specifically, Petitioner, relying on Dr. Lippman’s declaration (Ex. 1003, ¶¶ 62–73), asserts “a POSITA would have been motivated to combine Yurt with Logan for several reasons, discussed further below. Combining Logan’s usage log teachings with Yurt’s improved audio file accessibility (e.g., via popularity) to track additional user request information would have been obvious, beneficial, and predictable.” Pet. 19 (citing Ex. 1003, ¶¶ 62–72). According to Petitioner, because “Logan teaches implementation details for tracking user/usage data for billing purposes and adapting preferences ‘based on actual usage,’” “[a] POSITA would have thus been motivated to combine Yurt’s teachings (e.g., tracking information about requested items like item popularity) with Logan’s teachings (e.g., storing user data and usage information in response to user requests).” Id. at 19–20. “This would have been merely the use of a known technique (Logan’s tracking of user and usage data in response to user requests) to improve a similar method in the same way (Yurt’s tracking of information about user-requested items).” Id. at 20 (citing Ex. 1003, ¶¶ 67– 68). According to Petitioner, [T]he combination is straightforward: use Logan’s known technique for recording user data with Yurt’s existing item database teachings. See Ex. 1005, 12:28–57, 10:66–11:4; Ex. 1006, 5:33–42, 6:27–35, 8:49–58; Pet. 19–23. Since Yurt already teaches using its item database to track item popularity and request information, no modification to Yurt’s architecture is necessary. Logan merely confirms when and how to store the user information. Pet. 19–21. A POSITA would have found the combination obvious for all the reasons Dr. Lippman provided. See, e.g., Ex.1003, ¶¶ 71–72.” slip op. at 58
Patent outcomesUS 6,182,128 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,182,128 - Apple Inc. / Amazon Web Services, Inc. v. Ziklag IP LLCAll claims unpatentablePTAB · Aug 26, 2026 · IPR2025-00700 · APJ Hung H Bui · IPR · Final written decision
Claims 1–4, 6, 9–14, and 17 are unpatentable as obvious over Yurt and Logan; Petitioner’s motion to strike is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the record before us, we are unpersuaded that Patent Owner’s “proposed level of skill” is appropriate in this proceeding for reasons discussed below.” slip op. at 13
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Under Petitioner’s proposed level of skill (which we adopted), Dr. McCulloh is indeed qualified to testify in this proceeding because he has a Ph.D. in Computer Science from Carnegie Mellon University and extensive experience, including “hands-on deployment and academic research in distributed systems operating under real-world constraints” (Ex. 2009, Ex. 2010). See Ex. 2010 (CV) (BSIE, MS Comp. Sci, PhD Comp. Sci, Lieutenant 1994-1999, 10th Mountain Division (“led the army’s first tactical deployment of a distributed computing system”)); Ex. 2009 ¶¶ 6–10. Although Dr. McCulloh’s declaration does not include any searching or analysis of patent literature including Yurt or Logan as part of his analysis of the “background” state of the art, as correctly recognized by Petitioner (Pet. Reply 7–8 (citing Ex. 1017, 74:18–75:14; Ex. 2009 ¶ 3)), we are persuaded that Dr. McCulloh is qualified to address Dr. Lippman’s portrayal of the architecture disclosed in the ’128 patent, as advanced by Patent Owner. Ex. 2009, ¶¶ 3, 5–34; Ex. 2010. Dr. McCulloh does not provide testimony to refute Petitioner’s obviousness analysis based on Yurt and Logan. See Ex. 2009. Mr. Johnson is only offered to refute Petitioner’s obviousness analysis based on Yurt and Logan. Ex. 2007 ¶¶ 3, 18, 29. Under Petitioner’s proposed level of skill (which we adopted), Mr. Johnson, who is a co-inventor of the ’128 patent, is qualified to testify in this proceeding, especially, when his declaration states that (1) he is a POSITA “with more than 30 years of experience building technology-driven media and contentdistribution systems” and (2) he “was actively involved in the development and deployment of digital music and video distribution technologies” since the mid-1990’s, including “real-time and near-real-time electronic delivery of media content.” Ex. 2007 ¶¶ 9–10, 14, 16. Certainly, “[t]he inventor himself may qualify as an expert and testify what his claims would mean in the relevant art.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 991 (Fed. Cir. 1995). The fact that Johnson is a co-inventor is not in and of itself sufficient to discredit his testimony. “That an expert may have a bias or self-interest towards a party on whose behalf he or she is offering testimony, without more, generally does not require disqualifying the expert so long as the expert appears to be providing an objective analysis. Bias goes to the weight of the testimony, not necessarily its admissibility.” Apple, Inc. v. Motorola, Inc., 757 F. 3d 1286, 1321–22 (Fed. Cir. 2014). Nevertheless, the Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (“[T]he Board was well within its discretion to give more credibility to [one expert over another] unless no” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for patent owner
“Based on the record before us, we determine that neither Patent Owner’s proposed clarification nor an express construction of “substantially real time” is necessary for our proceeding. Plain Meaning of “Substantially Real Time” Instead, the plain meaning of “substantially real time” is readily apparent and understood by a person of skill (POSITA) in the art in the context of data distribution or transmission of the ’128 patent as referring to an acceptable time delay (i.e., “a fraction of real time”) between distribution center 18 and user device 12, via network 14, shown in Figures 1–2 of the ’128 patent and, as such, is consistent with the ‘128 patent’s specification and Dr. Lippman’s Declaration (Ex. 1003, ¶¶ 79, 126). Because the plain meaning of “substantially real time” as understood by a POSITA is readily apparent, there is no reason for the Board to consider Patent Owner’s clarification of “substantially real time” based solely on extrinsic evidence, i.e., counsel argument, Mr. Johnson’s declaration (Ex. 2007, ¶¶ 27, 29–30, 33, 39; Ex. 1018, 38:13–39:20) and Dr. McCulloh’s declaration (Ex. 2009, ¶ 19). For example, Patent Owner, relying upon Mr. Johnson’s testimony, clarifies the term “substantially real time” requires either (1) “playback while transmission is ongoing” (PO Resp. 30), or (2) “[a] coordinated system behavior in response to a user’s request” “in which a user request triggers coordinated operations, including locating content across distributed systems, routing that content, and initiating playback while transmission is ongoing” (PO Sur-Reply 4 (citing Ex. 1001, 2:67–3:2, 6:23–35)). However, Patent Owner’s shifting position regarding “substantially real time” is not commensurate with the plain reading of the term.” slip op. at 36
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Conclusion as to Claim 1 Petitioner has shown that (1) Yurt and Logan teach or suggest all the limitation of claim 1 and (2) reasons sufficiently existed with a rational underpinning to support the combination of Yurt and Logan.” slip op. at 63
Patent outcomesUS 6,182,128 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,182,128 - Anthony Inc. v. Controltec, LLCAll claims unpatentablePTAB · Aug 25, 2026 · IPR2025-00559 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over the five asserted grounds based on Carter, Beatenbough, King, Gatling, and Kotani.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find unpersuasive Mr. Pollock’s testimony that we limit the level of ordinary skill to “refrigerated display cases” because defining the level of skill as an engineer with experience “working with refrigerated display cases” does not relate to the technology disclosed and claimed in the ’181 patent, which is controlling condensation and conserving energy. E.g., Ex. 1001, 2:17–21 (“The invention is proactive in preventing condensation temperature at frame and door surfaces is reached. Power is then cycled off at a set point above dew point to save energy.” (emphases added)). An electrical engineer with a bachelor’s degree and 2 years of experience focused on lighting systems for refrigerated display cases would have “experience working with refrigerated display cases,” and thus meet Patent Owner’s proposed level of skill. Such a person, however, would not be experienced in controlling condensation, dew point sensor positioning, and condensation algorithm design, which is the focus of the disclosed and claimed invention, and which Mr. Pollock states “materially affect performance, energy use, and reliability” in controlling condensation in a refrigerated display case. Ex. 2014 ¶ 11. We also note that Mr. Pollock’s qualifications are a “B.S. in Mechanical Engineering, cum laude, from Drexel University (1998), with focus on thermal and mechanical systems, thermodynamics, and HVAC&R (Heating, Ventilation, Air Conditioning & Refrigeration).” Ex. 2014 ¶ 3. Accordingly, based on the prior art, the sophistication of the disclosed technology in the ’181 patent, finding Mr. Pollock’s testimony on this issue too general, and crediting Dr. Henze’s testimony with substantial probative weight, we adopt Petitioner’s definition of the level of ordinary skill. We modify it to state that more academic training will offset less experience, and more experience will offset less academic training, as did Dr. Henze (Ex. 1003 ¶ 31). Thus, in this proceeding a person of ordinary skill would have a bachelor’s degree in mechanical engineering, electrical engineering, or a comparable field and at least three to five years of professional experience working with heating, ventilating, air conditioning, and refrigeration” slip op. at 16
- Expert testimonyPetitioner expert creditedDecided for petitioner
“The fundamental role of expert testimony is that “the expert’s scientific, technical, or other specialized knowledge will help the trier of fact [here, the Board] to understand the evidence or to determine a fact in issue.” Fed. R. Evid. 702(a). The testimony must be “based on sufficient facts or data” (id. at 702(b)); must be “the product of reliable principles and methods” (id. at 702(c)); and must reflect “a reliable application of the principles and methods to the facts of the case” (id. at 702(d)). We determine, based on the record before us, that Dr. Henze’s Declaration testimony meets these requirements. He provides, as required, the facts and data to support his testimony. Indeed, Federal Rule of Evidence 702 and the Code of Federal Regulations require him to do so. 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.”). Expert testimony that “merely repeats, verbatim, the conclusory assertion for which it is offered to support,” or that “does not cite to any additional supporting evidence or provide any technical reasoning to support” the testimony is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, 15 (PTAB Aug. 24, 2022) (Precedential) (emphasis added).” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, whether the preamble is or is not limiting is not argued by Petitioner. Moreover, whether the preamble is or is not limiting is not necessary to resolve this controversy because it would not affect the outcome of this case. 2. “Adapted for” Patent Owner asserts that the term “adapted for” in independent claims 1 and 8 has its “plain and ordinary meaning.” Id. at 14. Patent Owner does not, however, provide us with a specific identification of what is the “plain and ordinary” meaning. Petitioner does not address a specific construction for this term. Thus, it is not in controversy and we need not specifically construe this term. slip op. at 21
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“only when it is analogous to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.” (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992))). The Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention, i.e., whether one of ordinary skill in the art would even look to the teachings of that reference. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). These two tests are: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id.; see also Netflix, Inc. v. DivX, LLC, 80 F.4th 1352, 1359 (Fed. Cir. 2023) (“Importantly, ‘the scope of any field of endeavor will vary with the factual description of each invention.’ Unlike the reasonable-pertinence test, the field-of-endeavor test does not look to the problem that the patent purports to address. It is enough that the prior art reference falls within the relevant field of endeavor of the patent-in-suit.”) (citations omitted); Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016) (“To determine if art is analogous, we look to ‘the purposes of both the invention and the prior art.’ If a reference disclosure and the claimed invention have a same purpose, the reference” slip op. at 42
Patent outcomesUS 7,207,181 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,207,181 - Tesla, Inc. v. Intellectual Ventures II LLCNo claims unpatentablePTAB · Aug 20, 2026 · IPR2025-00343 · APJ Scott A Daniels · IPR · Final written decision
Claims 1–6 and 8–13 were not shown unpatentable because Petitioner did not establish a reason to combine Bucknell’s multiplexing techniques with Eckert.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not expressly dispute Petitioner’s definition of a person of ordinary skill in the art. See generally PO Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’138 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
- Prior constructionPrior construction adoptedDecided for petitioner
“1. a subset of radio bearers Petitioner points out that in IPR2022-01127 the Board “preliminarily determined that a subset of the plurality of radio bearers” means “less than all of the plurality of radio bearers.” Pet 12 (citing Ex. 1019, 18–19). Petitioner explains that, in the present proceeding, it has applied “the prior art in accordance with that construction; however, in view of the asserted grounds, no claim term requires express construction to find the Challenged Claims unpatentable.” Id. (citing Nidec 868 F.3d 1017). Patent Owner neither disputes the prior construction of “a subset of radio bearers,” nor offers additional constructions. See generally PO Resp. To the extent necessary, and in accordance with our prior determination, we construe “a subset of the plurality of radio bearers” to mean “less than all of the plurality of radio bearers.”” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“bears pointing out that the specification of the ’138 patent appears to explain what “a single allocation” means: If there are multiple QoS requirements within a single 3GPP PDP context, a single physical allocation of radio resources may be made to the UE. In this manner, a single PDP context implies a single CCTrCh. This single physical allocation of radio resources provided to a UE is shared amongst a number of services, in proportion to their respective QoS requirements, for example in proportion to the signalled weight values (Stier). Ex. 1001, 9:36–43 (emphasis added). Petitioner’s expert, Dr. Ding, explains that the “abbreviation CCTrCh was understood in the art to refer to a transport channel known as the Coded Composite Transport Channel.” Ex. 1003 ¶ 88. Dr. Ding testifies that Eckert teaches selecting data for uplink within a determined TTI and scheduling the uplink transmission on a transport channel, E-DCH, where scheduling of the E-DCH in a UE is controlled by a base station. Eckert, [0012] (“[A] new dedicated transport channel called Enhanced Dedicated Channel (E-DCH) has been introduced for this purpose. The fundamental characteristics of this new transport channel include . . . scheduling controlled by the base station, also called NodeB in UMTS…” Id. ¶ 90. In addition to Eckert disclosing a single transport channel E-DCH, Petitioner argues that Eckert discloses using a “finite quantum of physical resources” where “[t]he ’138 patent disclosure parallels Eckert, with both the E-DCH and CCTrCH transport channels relating to a UMTS uplink, employing spreading codes in code division multiple access (CDMA), and Reply 6 (citing Ex. 1005, ¶¶ 3, 8, 15, 23; Ex. 1071 ¶¶ 17–20; Ex. 1011 ¶¶ 6, 51). We do not need to specifically interpret this claim phrase because there is no actual dispute as to the meaning of the claim language itself and because, ultimately, the construction of this phrase plays no part in our Decision.” slip op. at 15
- BurdenNot shown unpatentable
“D. Ground 1: Claims 1–4 and 8–11 – Alleged Obviousness over Eckert in view of Bucknell and Lohr-1 On the complete record now before us, Petitioner has not established a preponderance of evidence that claims 1–4 and 8–11 would have been obvious over Eckert, Bucknell, and Lohr-1. For the reasons explained below we determine that Petitioner has failed to show why a person of ordinary skill in the art would have modified Eckert in view of Bucknell in the manner claimed. We focus our analysis below on claim 1, and more specifically on those limitations for which the combination of Eckert and Bucknell is asserted. 1. Limitations [1.0]–[1.2] and the combination of Eckert and Bucknell The combination of Eckert and Bucknell is essential to each of Petitioner’s asserted grounds in this proceeding. Pet. 13. At the outset, we address this issue because our determination that Petitioner has failed to show why a person of ordinary skill in the art would have combined Eckert and Bucknell is dispositive as to all grounds.” slip op. at 20
Patent outcomesUS 10,292,138 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,292,138 - Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Aug 18, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision
Claims 22, 23, 28, and 30 are unpatentable over Choi, Labaziewicz, and Yu; claims 1–3, 10–12, 24, 25, 32, and 33 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“We decline Patent Owner’s invitation to construe “during a frame” of “independently controlling simultaneous data acquisition with each of the first and second channels during a frame” by importing the extraneous limitations “at some point between the beginning and the end of the exposure interval during which the image sensors capture a single image.” As pointed out by Petitioner, Patent Owner’s proposed construction is unsupported by the language of claim 22 and the ’180 Specification because Specification does not disclose an exposure interval nor suggest “during a frame” is limited to an exposure interval. Patent Owner and its expert Dr. Saber cite only extrinsic evidence (Exs. 2006, 2009) to support its argument that claim 22 should be limited to an “exposure interval during which the image sensors capture a single image.” See PO Resp. 16–17; Ex. 2020 ¶ 64. Similarly, Patent Owner relies only on extrinsic evidence (e.g., Ex. 2011, 1; Ex. 2022, 1; Ex. 2020 ¶ 66) to limit “during” to “at some point between the beginning and the end.” See id. at 18. When considered in the context of claim 22 and the ’180 Patent Specification which do not limit “during a frame” to an exposure interval, we find that we cannot rely on Patent Owner’s citations to extrinsic evidence to yield a reliable construction for “during a frame.” As demonstrated in the analysis below, we need not provide an explicit construction for “during a frame” to resolve the parties’ disputes regarding the merits of the patentability challenges. See Realtime, 912 F.3d at 1375. We apply the ordinary and customary meaning for “during a frame.” To the extent that an explicit identification of the ordinary and customary meaning may aid the understanding of our analysis, consistent with the language of claim 22 and the ’180 Patent Specification, we find that the ordinary and customary meaning for “during a frame” is “during the period of time that data for an image frame is acquired.” See Ex. 1001, code (57), 20:6–24, 25:23–35.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the prior art of record.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). Patent Owner’s arguments fail to meet this burden of production because, aside from addressing deficiencies of written description support the ’854 Provisional Application provides written description support for all of the limitations of the claimed invention. See PO Resp. 60–64; PO Sur-reply 25–28. Specifically, Patent Owner does not address written description support in the ’854 Provisional Application for “independently controlling simultaneous data acquisition with each of the first and second channels during a frame”––limitation [22.3]––the heart of the parties’ claim construction disputes addressed above in Section II.A. See PO Resp. 60–64; PO Sur-reply 25–27. Accordingly, Patent Owner has not met its burden of production in coming forward with evidence or argument to show possession of the claimed invention in the ’854 Provisional Application. As a result, the burden of production does not shift back to Petitioner, and, therefore, the ’180 Patent is not entitled to the benefit of the August 25, 2004, filing date of the ’854 Provisional Application.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner does not present arguments that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the teachings of Matsushima to acquire data for images 62A and 62B at the argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).10 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Id.” slip op. at 32
Patent outcomesUS 7,916,180 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,916,180
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.