- PTAB · Nov 10, 2025 · IPR2025-00878 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1–3 and 11 after finding a reasonable likelihood that claim 1 is anticipated by Cleveland or obvious over Nakagawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“contentions, the cited portions of Cleveland, and the testimony of Clearwater’s expert), we find, preliminarily, that Cleveland discloses each claim element in the manner recited by claim 1. Thus, on the current record, Clearwater demonstrates a reasonable likelihood that challenged claim 1 is unpatentable as anticipated by Cleveland.” slip op. at 6
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“5 Clearwater argues that Cleveland qualifies as prior art under 35 U.S.C. § 102(e)(1) “based on both its provisional and non-provisional filing dates.” Pet. 17. In support, Clearwater asserts that Cleveland’s provisional (Ex. 1006) is “virtually identical” to Cleveland itself (id. at 18) and submits claim charts to demonstrate that the Cleveland provisional provides written support for: (1) at least claim 1 of Cleveland (id. at 18–21); and (2) the subject matter relied upon in Cleveland (id. at 21–40 (citing Ex. 1006 throughout)). Based on our review of the Cleveland provisional, as well as Clearwater’s claim charts, we are persuaded that the current record demonstrates that Cleveland is prior art to the challenged patent. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015).” slip op. at 4
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“satisfies each claim element as identified above in Section I.D, i.e., elements [1.pre]–[1.6]. See id. at 22–40. Clearwater also submits annotated Figure 3 of Cleveland, reproduced below, to further illustrate the specific laminate structure of Cleveland’s coffee cup. See id. at 39.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“protective layers have “a coat weight of from 5 to 30 lbs/3000 ft2,” Clearwater submits the declaration of its expert, who explains that, because Nakagawa identifies the specific polymers and the thickness of the coat used for the plastic layers and one skilled in the art “would recognize that the disclosed polymers have a given density,” then “[w]ith these known parameters, the coat weight is easily calculated to be 23.04 lbs./ 3000 ft2 — falling squarely within the claimed range.” Pet. 53–54 (citing Ex. 1003 ¶¶ 132–133; Ex. 1008 ¶ 24; Ex. 1024, at 4). At this stage, we find that testimony credible and supported by the evidence presently of record. After reviewing the preliminary record (including Clearwater’s contentions, the cited portions of Nakagawa, and the testimony of Clearwater’s expert), we find, preliminarily, that Nakagawa discloses or otherwise suggests each claim element in the manner recited by claim 1. Thus, on the current record, Clearwater demonstrates a reasonable likelihood that challenged claim 1 is unpatentable as obvious over Nakagawa. We need not decide Clearwater’s challenge of the dependent claims based on Nakagawa alone nor its challenge of claims 1–3 based on Nakagawa and Tanner. Our analysis of these challenges, in our view, is best left for trial after full development of the record.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,637,126 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 5, 2025 · IPR2025-00895 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted challenges after finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSITA) would have had at least [a bachelor’s degree in] electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks. Additional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background. . . . A POSITA would also have familiarity with the 3GPP LTE standards, and would have understood how to search through the available Technical Specifications for implementing RAN technologies. Pet. 21–22 (citing Ex. 1003 ¶¶ 50–53). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage, with a proposed modification to insert “a bachelor’s degree in” to Petitioner’s statement. Prelim. Resp. 12–13; id. at 12, n.1. We have inserted this proposed modification in brackets in the above block quotation. We are persuaded, on the present record, that Petitioner’s proposal, as modified by Patent Owner, is consistent with the problems and solutions in the ’113 patent and prior art of record. We adopt Petitioner’s skill definition at this stage.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The parties do not propose any claim constructions. See Pet. 11–12; Prelim. Resp. 8. As no terms are in dispute, we determine that no terms require construction at this stage.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION At this stage of the proceeding, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges as to at least one challenged claim. At this preliminary stage, we have not made a final determination as to the patentability of the challenged claims or any underlying factual and legal issues. V. ORDER It is, therefore, ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of all challenged claims of the ’113 patent is instituted with respect to all challenges of unpatentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial commencing on the entry date of this Decision.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“measurement value, as Jover teaches.” Id. (citing Ex. 1005 ¶¶ 39–40; Ex. 1003 ¶¶ 115–30). Among other reasons, Petitioner contends that a POSITA would have been motivated to combine “to improve the accuracy and reliability of the beam failure determination.” Id. at 37 (citing Ex. 1003 ¶¶ 115–30). Petitioner further contends that a POSITA would have had a reasonable expectation of success because “it would have been straightforward for a POSITA to implement Jover’s triggering condition in Xia’s method.” Id. at 38 (citing Ex. 1003 ¶¶ 115–30). After considering Patent Owner’s arguments, which we address below, we agree with Petitioner at this stage that the combination of Xia and Jover renders obvious limitation [1e]. Patent Owner first argues that Jover “does not cure the deficiencies of Xia because Jover’s threshold condition for an increase in BER is not used for triggering a transmission of the first and second radio signal.” Prelim. Resp. 20. Just like Xia, Patent Owner contends, Jover discloses no “causality between the threshold being exceeded and transmitting the first and second radio signal.” Id. at 21. This argument does not undermine Petitioner’s showing at this stage because Petitioner relies on Xia, not Jover, for the claimed “triggering the transmission,” or “causality,” as Patent Owner calls it. See Pet. 36–38. That is, Petitioner relies on Jover for the triggering condition and on Xia for the actual triggering. See id. Patent Owner’s argument attacking the references individually is unpersuasive. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of refences.”). Patent Owner next contends that one of ordinary skill in the art would not have combined Xia and Jover “since Jover is directed to the opposite objective of the ’113 Patent or Xia.” Prelim. Resp. 21. That is, Patent Owner asserts, Jover teaches away from the disclosed methods. Id. at 22. Patent Owner explains, “Jover provides no attempt to improve the beam strength, but rather ignores it through beam sweeping or nullif[ies] it, in contrast to the purpose of the ’113 Patent.” Id. at 22–23. At this stage, Patent Owner’s argument is insufficient to undermine” slip op. at 15
Claim construction§ 103 obviousnessPatents in suitUS 10,568,113 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 4, 2025 · IPR2025-00898 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all asserted challenges, finding a reasonable likelihood that claims 1, 6, 11, and 16 would have been obvious over Kim and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’271 patent. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review with respect to all challenged claims and challenges asserted in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4 (citing Ex. 1003 ¶¶ 10, 16, 29–32). Patent Owner uses Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’271 patent and prior art of record. We adopt Petitioner’s definition of the level of skill at this stage.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties do not propose any explicit claim constructions. See Pet. 4–6; Prelim. Resp. 6. As no terms are in dispute, we do not construe any terms. Petitioner discusses constructions proposed by Patent Owner in the Samsung IPR, but Patent Owner does not rely on those constructions here. Pet. 4–6 (citing IPR2023-00747, Paper 14 at 11–13). We therefore do not address them at this stage.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“discloses the claimed “proportional sequence.” Prelim. Resp. 9. First, Patent Owner contends that “indexes of antenna port groups with RSRP measurement values higher than a certain threshold are not a sequence of ratios,” but rather, just an identification of antenna port groups. Id. (emphasis added). We disagree, on this record. The flaw in this reasoning is that the claim does not require the first proportional sequence to be a sequence of ratios. Rather, the claimed “first proportional sequence” merely “corresponds to . . . ratios.” Thus, Patent Owner’s argument that the indexes “are not a sequence of ratios” is not commensurate with the scope of the claim. Petitioner persuades us, at this stage, that the indexes correspond to ratios (e.g., RSRP_n/max(RSRP_i)). See Pet. 32–33.” slip op. at 7
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,951,271 - Luminex International Co., Ltd. / Menard, Inc. v. Signify Holdings B.V.Some claims unpatentablePTAB · Aug 13, 2025 · IPR2024-00101 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–7, 9–15, and 18–20 are unpatentable; claims 8, 16, and 17 are not shown unpatentable under the asserted grounds.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for patent ownerDecided for patent owner
“G. Analysis 1. REAL PARTY IN INTEREST Based on the record before us and for the reasons explained below, we” slip op. at 32
- PTAB / AIA Trials › §315(b) time barDecided for patent owner
“III. WHETHER THE PETITION IS TIME BARRED The parties dispute whether the Petition is time barred based on a” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“vacated the panel’s decision denying institution. Paper 12, 6. Among other things, the Director determined based on a “review of the current record” that (1) Menard is not a real party in interest in this proceeding and (2) Menard is not a privy of Petitioner. Id. at 5. Further, the Director remanded the case to the panel and instructed the panel “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a), and to determine whether to institute inter partes review accordingly.” Id. at 5–6.” slip op. at 3
- BurdenMixed
“U.S. Patent No. 10,299,336 B2 (“the ’336 patent”) (Exhibit 1001). For the reasons explained below, a preponderance of the evidence shows that claims 1–7, 9–15, and 18–20 in the ’336 patent are unpatentable and does not show that claims 8, 16, and 17 are unpatentable. See 35 U.S.C. § 316(e) (2024).” slip op. at 2
Patent outcomesUS 10,299,336 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,299,336 - PTAB · Jul 10, 2025 · IPR2025-00175 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the patentability of at least one claim of the ’562 patent. Accordingly, we institute an inter partes review of claims 1–17 of the ’562 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design,” and “[a]dditional education could substitute for professional experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 80–” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Neither party proposes any explicit construction of any term. See Pet. 7 (“For the purposes of this IPR, the plain meaning of each term can be applied.”). We do not expressly construe any term for purposes of this Decision.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On this record, we are persuaded that Petitioner adequately establishes that Usui discloses all of the limitations of claim 1. Usui discloses that aluminum or aluminum alloy layer 15 is in electrical contact with titanium underlayer 13, and titanium nitride layer 14 is located “intermediate the [titanium underlayer] 13 and the aluminum or aluminum alloy layer 15” to prevent “reaction between the aluminum layer 15 and underlayer 13.” Ex. 1004, 3:27–29, 3:38–41, 3:58–63. Usui further discloses that “a capping layer is provided above layer 15,” and that “[p]referred capping layers are titanium nitride and combinations of as layer 18 of a group IVA metal, preferably titanium with a titanium nitride layer 19.” Id. at 3:67–4:6. Usui teaches that titanium nitride layer 19 is about 150 to 800 Å thick, and that the thickness of titanium underlayer 13 is between about 90 to 110 Å. Id. at 3:31–33, 4:6–8. Usui also teaches that the interconnect metallurgy structures described therein “exhibit[] enhanced electromigration characteristics” and “are especially useful for forming electrical connections or wiring such as between active and/or passive devices of an integrated circuit structure.” Id. at 1:8–14. Usui’s description of a plurality of metal layers (layers 13–18) and a capping layer formed over the plurality of metal layers (layer 19), along with its description of the structure’s usefulness for forming electrical connections in an integrated circuit structure, is sufficient, on this record, to establish that Usui discloses “an electrode stack including a plurality of metal layers and a capping layer formed over said plurality of metal layers” as recited in claim 1. Usui’s teaching that the capping layer is a refractory metal nitride (titanium nitride) that has a thickness (150–800 Å) greater than the bottommost layer of the plurality of metal layers (layer 13, 90–110 Å), sufficiently establishes, on this record, that Usui discloses the “said capping layer consisting only of a refractory metal nitride, said refractory metal nitride forming a top of said electrical contact and having a thickness greater than that of a bottommost layer of said plurality of metal layers” limitation of claim 1.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 8,686,562 - PTAB · Jul 9, 2025 · IPR2025-00094 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–16 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Bonn and Mizuta.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have possessed at least a four-year degree in electrical engineering or a closely related field, and at least two years of experience in semiconductor device design.” Pet. 5 (citing Ex. 1003 ¶¶ 67–69). Petitioner also argues that “[a]dditional education could substitute for professional experience and vice versa.” Id. On the present record, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. Prelim. Resp. 1–52. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’003 patent and the asserted prior art. 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
“We apply the same claim-construction standard used in the federal courts—in other words, the claim-construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), which is articulated in Phillips. See 37 C.F.R. § 42.100(b). Under the Phillips standard, the “words of a claim ‘are generally given their ordinary and customary meaning,’” which “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, i.e., as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13. Neither party proposes construing any claim terms. Pet. 6; Prelim. Resp. 1–52. On the present record, we agree. As discussed below, we are able to determine whether to institute inter partes review of the ’003 patent without expressly construing any terms. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner argues that Petitioner does not show sufficiently that a person of ordinary skill in the art would have had a reason to modify Bonn to remove local oscillator 55. Prelim. Resp. 13–15. We disagree. Petitioner argues that, “[i]n addition to using Figure 7’s ‘dual gate FET structure in high frequency signal mixing’ applications . . . , Bonn discloses using this dual gate FET in ‘other applications such as high frequency signal amplification.’” Pet. 22 (quoting Ex. 1006, 11:26–37). Indeed, Bonn does suggest using its structure for signal amplification. Ex. 1006, 11:26–37 (“the dual gate FET structure of the present invention can be tailored to provide superior performance . . . in . . . other applications such as high frequency signal amplification”). On the present record, this appears to have provided the motivation for a person of ordinary skill in the art to use Bonn for amplification instead of for signal mixing. Petitioner relies on the testimony of Dr. Bernstein to show the modifications that a person of ordinary skill in the art would have considered necessary in order to convert Bonn’s structure for signal-amplification use. Pet. 23–25 (citing Ex. 1003 ¶¶ 98–109). In particular, Petitioner cites Dr. Bernstein’s testimony that a person of ordinary skill in the art “would have found it obvious to remove Figure 1’s LO (local oscillator) port 55 and its associated impedance matching components because the LO signal is no longer being mixed.” Ex. 1003 ¶ 98; see Pet. 23. Dr. Bernstein supports this testimony with citations to Bonn and with reasoning regarding why a person of ordinary skill in the art would have made this modification. Ex. 1003 ¶ 98 (citing Ex. 1006, 1:20–23, 3:19–21, 3:30–41). Accordingly, on the present record, we are persuaded that Petitioner has shown sufficiently that a person of ordinary skill in the art would have had reason to modify Bonn’s structure to remove the connection between a local oscillator and the gate of the second transistor. Finally, Patent Owner argues that Petitioner’s proposed modification would have rendered Bonn inoperable for its intended purpose because the modification would eliminate the ability of Bonn’s structure to conduct high frequency signal mixing. Prelim. Resp. 26–27. As Patent Owner notes, one purpose of Bonn is to mix high-frequency signals. Ex. 1006, 11:33–36. But Bonn itself teaches using its structure for “other applications,” including “high frequency signal amplification.” Id. at 11:33–37. Thus, on the present record, we are persuaded that Petitioner’s proposed modification does not render Bonn inoperable for its intended purpose so much as it acknowledges the modifications necessary to convert Bonn from one of its intended purposes to another. Thus, Petitioner has shown sufficiently for the purpose of the present Decision that a person of ordinary skill in the art would have had reason to combine Bonn and Mizuta and that the combination of Bonn and Mizuta teaches or suggests the disputed limitation of claim 1. We encourage the parties to develop the arguments and the record surrounding this issue further during the trial.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,264,003 - PTAB · Jun 18, 2025 · IPR2025-00321 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–7, 9, 16, and 17, finding a reasonable likelihood that claim 1 is anticipated by Boyer.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“approximately two weeks before the statutory deadline for a final written decision, but the most recent median time-to-trial statistics for Judge Gilstrap in the Eastern District of Texas indicate that the actual trial date will likely be in July 2026, which is later than the statutory deadline to issue a final written decision in this proceeding in mid-June 2026. See Ex. 2001, 7 (median time from filing to trial of 23.2 months); Prelim. Resp. 10. Thus, we find this factor is neutral or weighs slightly against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had (1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶¶ 14–16). Petitioner also argues that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. Patent Owner proposes a slightly different level of skill, arguing that a person of ordinary skill in the art “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 24. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’713 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We note that, as discussed below, we are able to determine whether to institute inter partes review of the ’713 patent without expressly construing the term “from multiple print heads or deposition lines.” 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))). As for Patent Owner’s argument that Petitioner has failed to carry its burden to identify how the claims are to be construed, we disagree on the present record. Although Petitioner does not provide a preferred construction for the single term it proposes requires construction, Petitioner does identify which of its two alternative constructions applies to each of its asserted grounds of unpatentability. Pet. 6 (“Under the first construction, [the obviousness grounds] are applicable, and [the anticipation ground] would be excluded from the claim scope. Under the alternative construction, all of [the asserted grounds] are applicable.”). In our view, this approach does not fail to satisfy Petitioner’s burden under 37 U.S.C. § 42.104(b)(3).” slip op. at 17
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,421,713 - PTAB · Jun 18, 2025 · IPR2025-00311 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR of claims 1, 3–11, and 17–22 on all asserted grounds because Petitioner showed a reasonable likelihood of prevailing on claim 1 over Mazumder and Mori.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on Petitioner’s first stipulation filed on December 18, 2024.15 Prelim. Resp. 13–15. Patent Owner does not address Petitioner’s updated second stipulation filed on April 8, 2025. This updated second stipulation mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of any potentially conflicting decisions. See Sand at 12. We therefore find that this factor weighs against exercising discretion to deny institution. See id., n.5. 5. Whether Petitioner and the Defendant in the Parallel Proceeding are the Same Party Whereas Petitioner does not address factor 5, Patent Owner argues that the parties to this proceeding are both in the related district court litigation. Pet. 98–99; Prelim. Resp. 15. While it is common in IPR proceedings for the petitioner and patent owner to also be parties in a related district court proceeding, this factor weighs slightly in favor of discretionary denial. Fintiv, Paper 11 at 13–14.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious over the combination of Mazumder and Mori. Accordingly, we institute inter partes review with respect to all claims and all grounds asserted in the Petition. 5. Claims 3, 5–7, 9, 10, and 19–22 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’324 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 those claims. See Prelim. Resp. 28–46. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 27
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“reference must be analogous art to the claimed invention. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). For a reference to be analogous art, it must be “either in the field of the applicant's endeavor or [be] reasonably pertinent to the problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Mazumder because “the presentation of both image types would have beneficially aided the remote user to more easily visually compare the actual image and virtual image to quickly identify any defects or problems with the fabrication process.” Pet. 23–24 (citing Ex. 1003 ¶ 113). Patent Owner argues that “it is hindsight to use ‘the invention to define the problem the invention solves.’” Prelim. Resp. 43 (quoting Mintz v. Dietz & Watson, Inc., 679 F.3d 1372, 1377 (Fed. Cir. 2012); citing AT&T Services Inc. et. al. v. Innovative Sonic Ltd., IPR2024-001143 (PTAB Feb. 11, 2025)). According to Patent Owner, because neither Mazumder nor Mori teaches visual comparison of image types, the idea to improve the Mazumder-Mori combination by simultaneously displaying different image types and thus permitting visual comparison must be driven by hindsight. Id. at 44–45. But Petitioner cites evidence other than the ’324 patent to support the person of ordinary skill in the art having a desire to visually compare the different images presented in the Mazumder-Mori combination. Pet. 23–24 (citing Ex. 1003 ¶ 113). Specifically, Dr. Wolfe testifies that “the presentation of the actual images captured by the camera and the virtual images simultaneously within the user interface would have beneficially aided the remote user to more easily visually compare the actual image and virtual image to quickly identify any defects or problems with the fabrication process” and that a person of ordinary skill in the art would have recognized this. Ex. 1003 ¶ 113. Thus, Petitioner has shown sufficiently for the purpose of the present decision that Mori teaches or suggests the disputed limitation of claim 1. We encourage the parties to develop the arguments and the record surrounding this issue further during the trial.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,562,324 - PTAB · Jun 11, 2025 · IPR2025-00115 · APJ Annette R Reimers · IPR · Institution
Instituted review of claims 1–4, 10, 11, 14, 15, 17, 21, 22, 24, 26, 28–30, 32, 33, and 35 on all asserted grounds, based on a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Determination as to a Reasonable Likelihood of Prevailing Upon consideration of the arguments and evidence of record, we conclude, for the reasons provided above, that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of claims 1–4, 10, 11, 14, 15, 17, 21, and Wampler.” slip op. at 41
- BurdenDecided for patent owner
“With respect to Patent Owner’s assertions about word count limits, the Patent Trial and Appeal Board Consolidated Trial Practice Guide November 2019 (“Consolidated TPG”) states that “deleting spacing between words, or using excessive acronyms or abbreviations for word phrases, in order to circumvent the rules on word count, may lead to a party’s brief not being considered.” Consolidated TPG, 40 (citing Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015)). As the basis for denying the Petition, Patent Owner alleges “undue prejudice.” Prelim. Resp. 76. Patent Owner, however, did not raise with the Board, prior to filing its Preliminary Response, any concern with the manner in which Petitioner formatted its Petition. As a result, Patent Owner did not avail itself of the opportunity to seek relief to address any alleged undue prejudice short of denying the Petition through, for example, an increase in the word count for its own brief. See 37 C.F.R. § 42.24(a)(2). Under the circumstances alleged improper formatting.8” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have at least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See Prelim. Resp. 1–2. We find, for purposes of the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’517 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“In sum, Petitioner maintains a narrower construction of “magneto coupling” is correct, and alleges grounds of unpatentability based on both its narrower proposed construction (a construction encompassed by the broader construction), as well as based on the broader construction that Patent Owner does not dispute. We, therefore, find no merit to Patent Owner’s argument that Petitioner’s contention “contradicts itself” or fails to present a “prima facie obviousness position.” See Prelim. Resp. 3. Patent Owner does not dispute the broader construction applied by Petitioner, which encompasses the narrower construction Petitioner proposes. For purposes of this Decision, we apply the broader construction of “magneto coupling,” which encompasses generating a rotating field either by rotating magnets or by an electromagnet / stator.” slip op. at 26
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,674,517 - PTAB · Jun 11, 2025 · IPR2025-00116 · APJ John D Hamann · IPR · Institution
The Board instituted inter partes review on all challenged claims and all asserted grounds, finding a reasonable likelihood that Abbott would prove at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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(a) (2024); see 37 C.F.R. § 42.108 (2024). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’077 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“least a bachelor’s degree in engineering; knowledge and experience in human circulatory system anatomy and physiology; and at least five years’ experience designing and developing implantable medical devices.” Pet. 6 (citing Ex. 1003 ¶ 18). At this stage, “Patent Owner takes no position regarding the appropriate level of skill for a person of ordinary skill in the art.” Prelim. Resp. 1. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 6. We view this definition for the level of ordinary skill as consistent with the ’077 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“axially adjacent.” In particular, Petitioner argues in connection with mapping cited art to challenged claims for the Wampler and Akamatsu asserted grounds that “a magnetic element sealed within a rotor is . . . ‘axially adjacent.’” Pet. 20 n.6. Petitioner fails to point to any intrinsic evidence to support this construction. Rather, Petitioner alleges that Patent Owner took this position in the parallel litigation in a chart mapping claim 1 to accused products. Id. (citing Ex. 1019,6 5–7). Petitioner does not explain how Patent Owner’s chart supports Petitioner’s construction here. See id. at 6 Petitioner identifies this exhibit as “Exhibit 13 of Complaint, dated November 27, 2023,” which comprises a claim chart mapping accused products to claim 1. when “a magnetic element [is] sealed within a rotor,” it necessarily means being “axially adjacent,” as Petitioner alleges. See Ex. 1019. Rather, we agree with Patent Owner that this chart instead labels product components that are adjacent to one another as measured along a central axis. Prelim. Resp. 21 (citing Ex. 1019, 6–7). In addition, we agree with Patent Owner that “[t]his [mapping] is in accordance with the plain and ordinary meaning of the claim terms and does not suggest that any component ‘sealed within’ another component would categorically be axially adjacent thereto.” Id. We note that Petitioner applies the plain and ordinary meaning of “axially adjacent” for other asserted grounds, arguing that components which are adjacent to one another along a central axis are “axially adjacent.” E.g., Pet. 55–57. Accordingly, we find, for purposes of this Decision, that the plain and ordinary meaning of “axially adjacent” is being adjacent to one another as measured along a central axis, and does not mean a magnetic element sealed within a rotor. Id. at 20. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“would have found it obvious to include Wampler’s “techniques related to its axially aligned inflow tube” in the HeartMateIII device taught by Bourque. Pet. 81–88. Petitioner argues that Wampler teaches an arrangement for which “[g]ood anatomic compatibility is possible . . . fitting well between the apex of the heart and the adjacent diaphragm.” Id. at 83 (quoting Ex. 1008 ¶ 76) (alterations in original). Petitioner reasons that applying Wampler’s arrangement to Bourque combines old elements performing known functions yielding expected results. Id. at 83–84. According to Petitioner, a person of ordinary skill in the art would have known from Wampler that an axial inflow, as taught by Wampler, would have improved blood flow for the device of Bourque by eliminating the flow restrictive elbow in Bourque. Id. at 84 (citing Ex. 1003 ¶¶ 648–649; Ex. 1007, 2; Ex. 1008 ¶¶ 75–76). Petitioner contends that Bourque recognized certain components, including inflow components, were the cause of clinical troubles, and that Wampler “taught how to eliminate these components that caused clinical troubles–using the inlet to also ‘serve[] as the inflow canula.’” Id. at 85–86 (citing Ex. 1003 ¶¶ 741–747; Ex. 1007, 1, 5; Ex. 1008 ¶¶ 75–76). Petitioner also argues that a person of ordinary skill in the art would have understood Wampler’s arrangement would have reduced “rates of infection” by avoiding placement of the pump in a preperitoneal pocket person of ordinary skill in the art “would have adhered to the express teachings of [Wampler], which focused on ‘[g]ood anatomic compatibility’ so that the device ‘fit[s] well between the apex of the heart and the adjacent diaphragm,’ eliminating the need for a peritoneal pocket dissection associated with increased rates of infection.” Id. at 86–87 (citing Ex. 1003 ¶¶ 651–654; Ex. 1008 ¶ 76) (second and third alterations in original). Petitioner reasons that a person of ordinary skill in the art would have had a reasonable expectation of success because the asserted combination of Bourque and Wampler “would ‘fit[] well between the apex of the heart and the adjacent diaphragm’ due to the pump’s ‘development as a compact’ device and the existence of several similar LVADs that fit well at that position.” Id. at 87 (citing Ex. 1003 ¶¶ 652–655; Ex. 1007, 5). Lastly, Petitioner argues that the asserted combination would have been obvious to try, because “there were a finite number (i.e., two) [of] options for LVAD implantation: the device would be implanted at a preperitoneal pocket, or at the cardiac apex.” Id. at 87–88 (citing Ex. 1003 ¶ 656). At this stage, we find Petitioner’s arguments persuasive, and find that Petitioner has provided sufficiently articulated reasoning with rational underpinning to support combining Wampler and Bourque’s teachings in the manner Petitioner does.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,754,077
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.