- PTAB · Oct 21, 2025 · IPR2025-00749 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–16 based on the petition’s grounds and granted ZF’s motion to join the Mobileye IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the grounds of unpatentability in the instant Petition are identical to those in the Mobileye IPR and for the same reasons stated in our Decision to Institute in the Mobileye IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Mobileye IPR, Paper 14 (analyzing challenges in the Mobileye Petition).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board Consolidated Trial Practice Guide 76 (Nov. 2019).2 Petitioner’s Motion addresses each of these considerations. Mot. 4–8. According to Petitioner, “the Petition involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art submitted in the Mobileye Petition” and “does not present any new grounds of unpatentability and is substantively identical to the Mobileye Petition.” Id. at 5. Petitioner argues that, “[b]ecause the Petition is substantively identical to the Mobileye Petition, with the same grounds challenging the same claims as instituted by the Board, there are no new issues for Patent Owner to address” and, therefore, joinder with the Mobileye IPR would “not unduly burden or negatively impact the trial schedule in any meaningful way.” Id. at 6. Further, “Petitioner explicitly agrees to take an ‘understudy’ role in the joined proceeding” and “will assume the primary role only if Petitioner in the Mobileye IPR ceases to participate.” Id. at 7–8 (quoting Noven Pharms., Inc. v. Novartis AG, IPR2014-00550, Paper 38 at 5 (PTAB Apr. 10, 2015).” slip op. at 6
NonePatents in suitUS 9,671,328 - PTAB · Oct 21, 2025 · IPR2025-00748 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted review of claim 15 under § 103(a) based on Gallagher and Lumia, granted joinder in the Mobileye IPR subject to participation limits, and terminated this proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the grounds of unpatentability in the instant Petition are identical to those in the Mobileye IPR and for the same reasons stated in our Decision to Institute in the Mobileye IPR, we institute inter partes review in this proceeding on the ground presented in the Petition. See Mobileye IPR, Paper 16 (analyzing challenges in the Mobileye Petition).” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Under the circumstances outlined above, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in the Mobileye IPR. Therefore, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 9,335,255 - PTAB · Oct 6, 2025 · IPR2025-00812 · APJ Robert L Kinder · IPR · Institution
Instituted IPR of claims 1–28 on all petitioned grounds because the petition showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“According to Petitioner, “no express constructions are required in this proceeding.” Pet. 4. Patent Owner “agrees that the terms of the ’728 Patent have their plain and ordinary meaning.” Prelim. Resp. 7. However, Patent Owner contends that Petitioner construes the claim language “during the driving period” to mean “throughout the driving period.” Id. at 10 (claim language found in claims 1, 13, 24, and 25). Patent Owner contends Petitioner consistently uses the term “during” rather than “throughout” in the analysis of the challenged claims. Id. Patent Owner does not provide support for any specific construction or explain why any claim construction would be necessary for resolution of this proceeding. Based on the current record, we determine the differentiation asserted by Patent Owner between the use of “during” and “throughout” does not require express interpretation as the terms “during” and “throughout” are synonymous.8 Upon review of the record, we determine that no claim terms require express construction 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 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Dr. Michalson propose “that a person of ordinary skill in the art in this matter would have had at least a Bachelor of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, and about 2-3 years of experience in the field of telematics systems.” Ex. 1003 ¶ 15; Pet. 2, 11. Dr. Michalson further proposes “[a] greater amount of education, e.g., a doctorate in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience.” Id. Patent Owner does not dispute this level of skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal, which comports with the teachings of the ’728 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on our review of the preliminary record, we conclude Petitioner has explained with supporting evidence how the combination of Callopy, Curry, and Thompson teaches or suggests claim 1, sufficiently to justify institution of review. That is, Petitioner explains how a person of ordinary skill in the art would have been motivated to supplement the risk assessment capabilities of Callopy-Curry with the well-known accident detection techniques of Thompson’s WreckWatch application to reduce vehicular accidents and casualties. For the purposes of institution, Petitioner has articulated a reasoned explanation why a POSITA would have been motivated to modify Callopy’s wireless device with Curry’s calculation techniques, and Thompson’s accident detection capabilities. The Petitioner has explained in detail that Curry contemplates the need for multi-modal operation for nuanced driving conditions, and that the incorporation of Callopy would be a natural modification that aligns with standard insurance evaluation methods. Petitioner further explains the implementation of Curry’s scoring system, which is capable of logging data and processing safety statistics, in combination with Callopy’s system leads to enhanced sensor-based driving evaluation in the determination of a driver’s risk profile for insurance purposes. Petitioner further explains in detail how Thompson’s implementation further provides motivation for Curry’s initiatives to “reduce traffic-related fatalities and injuries” and that a POSITA would seek the well-known accident detection technique of Thompson to achieve this. Petitioner identifies that the combination of Callopy, Curry, and Thompson not only can be achieved without any changes to underlying hardware, but also provides the functionality of recording sensor data relating to driving, calculating driving safety statistics, and detecting driving-related incidents. Moreover, as discussed, Petitioner has provided citations to the references along with corroborating testimony from Dr. Michalson that support its arguments for why and how a POSITA would have combined the prior art disclosures with a reasonable expectation of success. See Ex. 1003 ¶¶ 100–116.” slip op. at 34
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information presented shows a reasonable likelihood that Petitioner will prevail in showing the unpatentability of at least one of the challenged claims at issue. Pursuant to § 314, we hereby institute an inter partes review as to challenged claims 1–28 of the ’728 patent.” slip op. at 3
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,236,728 - Anthony Inc. v. Controltec, LLCInstitutedPTAB · Sep 30, 2025 · IPR2025-00636 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood of success on claim 8 over Carter.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“On July 16, 2025, the Acting Director issued her decision, which denied Patent Owner’s request for discretionary denial and referred this case to the Board. Paper 9, 3. The Decision stated “Petitioner provides persuasive reasoning, supported by evidence, that the Office erred in a manner material to the patentability of the challenged patents during patent examination, and, accordingly, discretionary denial under 35 U.S.C. § 325(d) is not appropriate.” Id. The Decision also stated “it is an appropriate use of Office resources to review the potential error.” Id. As stated in the Acting Director’s decision, “the Petitions [in IPR2025-00559; 00636] are referred to the Board to handle the cases in the normal course, including by issuing a decision on institution addressing the merits and other nondiscretionary considerations, as appropriate.” Id. (emphasis added). Thus, the scope of our delegated authority only extends to “the merits and other nondiscretionary considerations.” Accordingly, we do not address the discretionary denial issue raised in the Petition and in the Patent Owner’s Preliminary Response.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, based on the prior art, the sophistication of the disclosed technology in the ’847 patent, and Dr. Henze’s undisputed testimony, we adopt Petitioner’s definition of the level of ordinary skill.8” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We do not perceive the need to construe any claim limitation at this time. Our conclusion concerning instituting an inter partes review would be unaffected by a determination that the preambles of the claims are limiting. Accordingly, for this initial Decision to institute an inter partes review, the words “display” or “frame,” and the term “display case” will be given their ordinary and customary 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. slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,421,847 - Anthony Inc. v. Controltec, LLCInstitutedPTAB · Aug 25, 2025 · IPR2025-00559 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the Petition, the Preliminary Response, and the evidence of record, based on the analysis in this Decision, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018). Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art would have had “a bachelor’s degree in mechanical engineering, electrical engineering, or a comparable field and at least three to five years of experience related to heating, ventilating, air conditioning, and refrigeration (HVAC&R) systems.” Pet. 4 (citing Ex. 1003 ¶¶ 31–35). Dr. Henze’s Declaration testimony states he considered some of the factors listed above. Ex. 1003 ¶¶ 31–35). Dr. Henze testifies that, in his opinion, the level of ordinary skill is as stated by Petitioner. Id. at 31. He also states that “[s]uch experience could be obtained through research and study in a graduate program or through comparable exposure through industry employment, and additional years of experience could substitute for the advanced-level degree.” Id. Patent Owner does not assert a level of ordinary skill, nor does Patent Owner dispute Petitioner’s definition of the level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, based on the prior art, the sophistication of the disclosed technology in the ’181 patent, and Dr. of ordinary skill.9” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that nine terms are “mean-plus-function claim terms.” Pet. 4–10. As required by our rule, (37 C.F.R. § 104(b)(3)), for each of the mean-plus-function claim terms, Petitioner identifies the function as well as the specific portions of the ’181 patent’s specification that describe the corresponding structures. Id. Patent Owner does not comment on Petitioner’s proposed means-plus- function claim constructions. See generally Prelim. Resp. Thus, for purposes of this initial decision, we will adopt the means-plus-function constructions proposed by Petitioner.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“We do not perceive the need to construe any additional claim limitation. Our conclusion concerning instituting an inter partes review would be unaffected by a determination that the preambles of the claims are limiting. Accordingly, for this initial Decision to institute an inter partes review, the words “display” or “frame,” and the term “display case” will be given their ordinary and customary 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.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,207,181 - 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 - PTAB · Jun 11, 2025 · IPR2025-00139 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“d. Overlap of Issues “[I]f the petition includes the same or substantially the same claims, grounds, arguments, and evidence as presented in the parallel proceeding, this fact has favored denial.” Fintiv, Paper 11 at 12. “Conversely, if the petition includes materially different grounds, arguments, and/or evidence than those presented in the district court, this fact has tended to weigh against exercising discretion to deny institution under NHK.” Id. at 12–13. Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel district court litigation the grounds advanced in the petition. Sand Revolution II, LLC v. Cont’l Intermodal Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB June 16, 2020) (informative). The Board suggested that a broader stipulation such as one stipulating that the petitioner “would not pursue any ground raised or that could have been reasonably raised in an IPR, i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patents or printed publications” would better address concerns relating to overlapping issues. Id. at 12 n.5. Here, Petitioner’s stipulation is broader—Petitioner stipulates that, if the Board institutes IPR in this proceeding on the grounds presented in the Petition, Petitioners will not pursue an invalidity defense in the [Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the grounds that were raised or any grounds Petitioner[] reasonably could have raised in the IPR. Prelim. Reply 3. Petitioner’s stipulation is similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part), which was found to obviate much, if not all, of any potential overlap between the issues in the proceeding and the district court proceeding. See Prelim. Sur-reply 3 (acknowledging that “Petitioner[] offered a Sotera stipulation.”) Accordingly, the facts underlying this factor weigh strongly against exercising our discretion to deny institution.” slip op. at 13
- Other 314aDenied
“Patent Owner argues that the Petition improperly presents voluminous and excessive grounds challenging the claims of the ’878 patent. Prelim. Resp. 10–14. Patent Owner argues that the twenty distinct grounds set forth in the Petition alone is reason to deny institution. Id. at 11. Patent Owner argues that Petitioner’s showing regarding the VFD, switchgear, and enclosure recitations of claim 1 require us to “pick-and-choose” which “prior art evidence” is being applied. Id. at 14. We are not persuaded that the Petition sets forth such voluminous or excessive grounds asserting unpatentability that we should deny institution. Although Petitioner does set forth twenty grounds, sixteen of the grounds are directed to a single dependent claim. See Pet. 16–17. And of the four grounds challenging independent claim 1, Petitioner relies primarily on the combined teachings of Morris and Oehring IV to disclose or teach most of the claim recitations, relying on Premset Catalog and Premset Brochure to teach front-aligned, shielded cable connections and on Payne to provide an alternate teaching of using a common support structure. See Pet. 48–51, 70–74. The instant Petition is quite unlike those in the decisions cited by Patent Owner, which dealt with petitions asserting challenges containing multiple instances of “and/or” that resulted in hundreds of challenges or asserting multiple challenges grouped together in an indiscernible claim chart. See Prelim. Resp. 10 (citing Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 (PTAB Mar. 6, 2019) (informative); Uber Techs., Inc. v. Surgetech LLC, IPR2023-00738, Paper 8 (PTAB Oct. 23, 2023); EnergySouce Mins., LLC v. TerraLithium LLC, IPR2019-01607, Paper 10 (PTAB May 4, 2020)). And although we agree that the Petition is not the epitome of clarity, we are able to interpret Petitioner’s arguments as set forth below. Accordingly, we determine that the circumstances presented weigh against exercising discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the number of challenges presented in the Petition.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, 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 of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds. slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the effective filing date would have had either “a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field, as well as at least 2 years academic or industry 2 At this stage of the proceeding, the parties have not directed us to any such objective evidence. experience in the oil and gas industry, including well drilling, completion, or production” or “at least four years industry experience in the oil and gas industry including well drilling, completion, or production.” Pet. 17 (citing Ex. 1003 §§ V.A, VII). “Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 9. We find Petitioner’s uncontested definition to be consistent with the problems and solutions disclosed in the ’878 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,208,878 - PTAB · Jun 11, 2025 · IPR2025-00148 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–20 on both §103 grounds, finding a reasonable likelihood that the claims would have been shown obvious over Doughty and Van Boucq, with or without Maginnis.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedOther
“Petitioner’s proposed definition appears to be consistent with the disclosure of the ’947 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction is necessary for any claim 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We find that Petitioner has shown a sufficient motivation to combine. Although Patent Owner is correct in its description of the respective inventions of Doughty and Van Boucq, we do not see how the particular differences of the overall systems matter or would dissuade a POSITA from combining the particular teachings that Petitioner identifies. As Petitioner explains, these references are in same field of endeavor—tracking users for internet advertising, and Petitioner does not propose wholesale incorporation of the system of Van Boucq into Doughty—and therefore qualify as prior art to the ’947 patent and can be combined to show obviousness. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Petitioner proposes using certain teachings from Van Boucq’s system to improve certain aspects of Doughty. Thus, on this record, we find Petitioner has shown an adequate motivation combine and do not find Patent Owner’s arguments diminish that showing.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“G. Balancing the Fintiv Factors A holistic balancing of the Fintiv factors weighs against discretionary denial. As discussed above, Factors 2 and 3 weigh heavily against denial. Factors 4 and 6 weigh marginally against denial, Factors 1 is neutral, and Factor 5 weighs against denial. Thus, on balance, the evidence of record weighs against exercising our discretion to deny institution of inter partes review.” slip op. at 47
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,556,947 - PTAB · Jun 10, 2025 · IPR2025-00114 · APJ Annette R Reimers · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7, 8, 11, 12, 14–16, and 18–20 on all petitioned grounds, finding a reasonable likelihood of unpatentability over Bourque and Wampler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review as to the Challenged Claims of the ’879 patent.” slip op. at 2
- BurdenMixed
“Decision we find “axially adjacent” to mean “adjacent to one another as measured along a central axis.” Petitioner does not contend or show in the Petition that Wampler teaches a magnetically driven rotor adjacent to a first magnetic device as measured along a central axis. See Pet. 24–26. In” slip op. at 30
- 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. 7 (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. We find, for purposes of this appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’879 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 board ownDecided for patent owner
“Magnetic Device” and “Magnetically Driven Rotor” along a “Central Axis”. Ex. 1019, 6. We find nothing in Exhibit 1019 that defines “axially adjacent” to mean “a magnetic element sealed within a rotor,” as Petitioner alleges. In this regard, Patent Owner argues as follows: Exhibit 1019 contains no mention of “a magnetic element sealed within a rotor” or a contention that such a configuration would represent an “axially adjacent” orientation of such components. Instead, [in Exhibit 1019], Patent Owner illustrates a Petitioner product and labels components identified as the claimed magnetically driven rotor and first magnetic device that are adjacent to one another as measured along a central axis. [See Ex. 1019 at 5]. This 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.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,572,879
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.