- Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 14, 2025 · IPR2025-00909 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Ying and Yang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Petitioner’s contentions are supported by the testimony of Dr. Akl and are persuasive based on the current record. See Pet. 7–28; Ex. 1003 ¶¶ 58–83. Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Ying and Yang. Accordingly, we institute review “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). 4. Claims 2–20 Patent Owner does not argue dependent claims 2–20 separately. Prelim. Resp. 3–5. On this record, we disagree with Patent Owner’s arguments regarding parent claim 1 and are persuaded that Petitioner has shown a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Ying and Yang. See supra Section II.D.3. Accordingly, we need not determine at this time whether Petitioner also has shown a reasonable likelihood of prevailing as to any of the other challenged claims. See 37 C.F.R. § 42.108(a).” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and 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). Petitioner argues that “no claim terms need be construed.” Pet. 6–7. Patent Owner states that “claim construction is not required to resolve any issues.” Prelim. Resp. 2. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’695 patent (November 2019),4 a person of ordinary skill in the art would have had “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, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 6 (citing Ex. 1003 ¶¶ 29–32). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 2. Based on the record presented, including our review of the ’695 patent and the types of problems and solutions described in the ’695 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Claim 1 a) Petitioner’s Contentions Petitioner argues that Ying and Yang collectively teach all of the limitations of claim 1 and a person of ordinary skill in the art would have been motivated to combine their teachings, with a reasonable expectation of success. Pet. 11–28. As to the combination of references, Petitioner asserts that a person of ordinary skill in the art “would have been motivated to include configuration parameters for both the NUL and SUL carriers, as taught in Ying, in a single DCI, as expressly depicted in Yang, to coordinate both normal uplink (NUL) and supplemental uplink (SUL) transmissions in a mobile communication environment.” Id. at 12 (citing Ex. 1003 ¶¶ 58–59). According to Petitioner, “[t]he combination involves coordinating both carriers already operating in the mobile communication environment by implementing Ying’s DCI example (e.g., in Listing 6) to provide cancellation indications for both the normal uplink (NUL) and the SUL in one DCI,” achieving the “predictable result” of “improv[ed] communication capacity, speed, flexibility, and/or efficiency.” Id. at 12–13 (quoting Ex. 1004, col. 1, ll. 31–41). Petitioner also alleges various other reasons for why a person of ordinary skill in the art would have been motivated to combine the references’ teachings in that manner, including “reduced communication overhead,” simplification of the UE’s decoder operation, and the need to choose from only two options (i.e., “using one DCI to encode both NUL and SUL carriers . . . or using two DCIs”). Id. at 13–17 (citing Ex. 1003 ¶¶ 60–64).” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,986,695 - Apple Inc. v. Apex Beam Technologies LLCInstitutedPTAB · Nov 14, 2025 · IPR2025-00907 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over the three 3GPP references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute an inter partes review as to claims 1–20 of the ’944 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’944 patent (November 2019),2 a person of ordinary skill in the art would have had “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, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” where “[a]dditional years of experience could substitute for an advanced-level degree (and vice versa).” Pet. 10 (citing Ex. 1003 ¶¶ 39–44). Patent Owner “utilizes Petitioner’s proposed level of skill in the art” for its Preliminary Response. Prelim. Resp. 8. Based on the record presented, including our review of the ’944 patent and the types of problems and solutions described in the ’944 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and 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). Petitioner argues that “no claim terms need be construed.” Pet. 8. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding, but encourage the parties to address various claim interpretation issues identified below during trial. See infra Section II.D.5; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Patent Owner responds that Petitioner fails to show that the 3GPP-38.213-CR “document sent to [the] 3GPP email list on November 3 was available to non-3GPP members by November 5, 2019” (the alleged critical date for the ’944 patent). Prelim. Resp. 3 (emphasis omitted); see Pet. 10. According to Patent Owner, the listserv archive of emails cited by Mr. Rodermund “only shows that the November 3, 2019 email is available now—not that it was uploaded within a day of when the original email was sent”—and Mr. Rodermund provides only his uncorroborated opinion that uploads were “automatic” and “immediate.” Prelim. Resp. 5–6 (citing Ex. 1008 ¶¶ 43–63, 72–80). Patent Owner also contends that the November 2, 2019, metadata only relates to creation of 3GPP-38.213-CR and does not support Petitioner’s contention that the email was immediately uploaded. Id. at 6. Finally, Patent Owner argues that whether the subject matter of 3GPP-38.213-CR was discussed at the 3GPP meeting in October 2019 is “irrelevant,” given the date of the metadata, and has no bearing on whether the document itself was later publicly accessible. Id. at 6–7. Assessing the evidence of record collectively, however, we are persuaded that Petitioner has shown a reasonable likelihood that 3GPP-38.213-CR was publicly accessible from the ETSI email archive before November 5, 2019. Given his many years of experience with ETSI, in particular his responsibilities pertaining to management of documents like change requests, and as the “list owner” “responsible for managing and administrating” several email exploder lists, Mr. Rodermund appears to be well-qualified to testify to the matters in his declaration. See Ex. 1008 ¶¶ 7, 10–15, 47. He explains in detail how, based on his experience, emails sent” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,139,944 - 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 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.All claims unpatentablePTAB · Oct 27, 2025 · IPR2021-01257 · APJ Sheila F Mcshane · IPR · Remand
On remand, the Board held claims 1, 2, 6–8, 13, 14, 16, 18, 19, 21–23, 26, and 30 unpatentable as obvious over the stated Newton and Reime grounds.
RulingsRemand decision- RemandOther
“On February 12, 2025, the Federal Circuit issued an opinion vacating and remanding our Final Written Decision based on the determination of the construction of the impingement term recited in the ’170 patent. Appeal Dec. 9. More specifically, the Federal Circuit found that the Board’s construction was too limited. Id. at 8–9. The Federal Circuit found that As properly construed, in the context of the challenged claims, ‘impingement of an electromagnetic radiation spot’ must include ‘reflected, projected, and interrupted or blocked radiation.’ In other words, when a finger or non-light-emitting stylus interrupts or blocks a beam of electromagnetic radiation, and does so over a certain spot on the surface of a device, the claim limitation is satisfied. Contrary to the Board’s construction, as articulated by Power2B on appeal, the ‘electromagnetic radiation spot on . . . [the] interactive surface element’ does not ‘require[that] radiation imping[e] on the surface element’ and, hence, does not exclude interrupting or blocking radiation. Appeal Dec. 9 (citations omitted).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“better definition for purposes of this proceeding, except we again decline to adopt “at least” because that language is vague and open-ended. With respect to the educational qualifications, Petitioner’s proposed qualifications are that one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field. Pet. 8 (citing Ex. 1002 ¶ 41) (emphasis added). The claims are directed to an interactive assembly comprising at least one input sensor to provide an output indicative of an impingement of an electromagnetic radiation spot. Individuals with bachelor’s degrees in physics would be knowledgeable in researching, designing, or developing such assemblies and would be able to comprehend and evaluate the teachings of the prior art. Accordingly, Petitioner’s proposed qualifications are overly narrow in not including individuals with bachelor’s degrees in physics. With respect to work experience, a person having two years of experience would be able to comprehend and evaluate the teachings of the prior art, consistent with Petitioner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“impingement of an electromagnetic radiation spot” includes “reflected, projected, and interrupted or blocked radiation” and “when a finger or nonlight-emitting stylus interrupts or blocks a beam of electromagnetic radiation, and does so over a certain spot on the surface of a device, the claim limitation is satisfied.” Appeal Dec. 9. Under this construction, we determine that Petitioner has demonstrated that Newton teaches this claim limitation. More specifically, Newton discloses that a user touch interrupts beams of electromagnetic radiation over certain spots over a surface, which provides an output. See Ex. 1012 ¶¶ 13, 25; see also Ex. 1002 ¶ 72. slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We agree with Petitioner that the claims do not require a detector assembly to be physically separate from the interactive surface element. The language of the claims does not require this, nor is there any disclosure in the ’170 patent specification that indicates that separation of these elements is required. Patent Owner refers to certain embodiments that have separate structures, but we decline to import this as a requirement to the claim term. We also agree with Petitioner that the ’170 patent broadly views what it means to be “at an edge,” and that can include being behind, about, or along an edge within its scope. See Ex. 1001, 55:63–56:2.” slip op. at 24
Patent outcomesUS 9,317,170 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,317,170 - Microchip Technology Inc. v. Aptiv Technologies AGAll claims unpatentablePTAB · Jul 30, 2025 · IPR2024-00230 · APJ John D Hamann · IPR · Final written decision
Claim 1 is unpatentable as obvious over Chang and Chang II; the Board did not reach the Chang, Chang II, and Chutorash ground.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner and find that “computer network protocols” is correct in light of the ’072 patent’s disclosure and claim 1. In particular, the ’072 patent teaches that it “generally relates to [USB] connectivity between, for example, mobile consumer devices and vehicle electronic systems.” Ex. 1009, 1:21–23. And the ’072 patent’s teachings focus on common network components (e.g., hub, bridge, ports) and common networking concepts (e.g., master/slave network architecture and bridging) which are used in the USB context, rather than detailed aspects (e.g., signal timing, signal levels, power levels) of the USB protocol. See generally Ex. 1009; see also Ex. 1084, 103:21–104:2, 104:24–105:4; Pet. Reply 4 (citing Ex. 1084,7 100:17–101:12 (acknowledging that Dr. Houh testifies that one of ordinary skill in the art “would know basic USB concepts like bridging, master/slave architecture, etc.”), 102:3–8, 103:21– 104:2, 104:24–105:4). Likewise, claim 1 repeatedly recites “USB,” but does so to identify that all of the components of the data system (i.e., USB ports, USB hub, USB bridge, USB host, USB multiplexing switches) employ the USB protocol. Ex. 1009, 9:15–10:18. As the ’072 patent teaches, “USB 7 Houh Deposition Tr. (2024/12/18, Day 1). technology . . . [wa]s commonly available, familiar to the end user, cost effective and ubiquitous.” Id. at 1:35–37. Thus, although the ’072 patent is taught in the USB context, “computer network protocols” concepts are the focus. For these same reasons, we find unavailing Petitioner’s argument that one of ordinary skill in the art “would have been well-versed in USB standards (including the USB 2.0 and 3.0 Specifications and the OTG Supplement) and the design/deployment of USB hosts, USB devices, and USB hubs, including suitable environments for USB systems.” Pet. 26.” slip op. at 11
- Expert testimonyPetitioner expert discountedOther
“Lastly, we give little weight to Mr. Welch’s testimony regarding the level of one of ordinary skill as he does not indicate what precisely constitutes the basis of his testimony on this issue. See Ex. 1013 ¶ 47.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Here, Petitioner argues that “embedded USB host” means “USB host physically embedded in a vehicle.” See Pet. 27–28. “Patent Owner does not contend that any claim construction is required.” PO Resp. 5. We agree with Patent Owner that we do not need to construe any term to resolve the disputes between the parties. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). And we afford the claim terms their plain and ordinary meaning.” slip op. at 13
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“that the asserted objective evidence is tied to a specific product that ‘embodies the claimed features, and is coextensive with them.’” Id. (quoting Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000)). In other words, “[a] presumption of nexus requires both that the product embodies the invention and is coextensive with it.” Id. at 1211 (citing Brown, 229 F.3d at 1130). Patent Owner fails to show either of these requirements. First, Patent Owner argues that in his Supplemental Declaration, Dr. Houh “provides on a per limitation basis how [Patent Owner]’s dual role hub meets all limitations of claim 1.” PO Resp. 73 (citing Ex. 2019 ¶ 136). Notably, Patent Owner cites to a single paragraph in this declaration, without providing any specific arguments in its Response that its product practices claim 1. Id. Rather, Patent Owner incorporates its arguments by reference, which is not permitted. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). Thus, we do not consider these arguments, and we are not persuaded that Patent Owner’s product practices claim 1. Consolidated Trial Practice Guide November 2019,8 35–36 (citing Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 (PTAB Aug. 29, 2014) (informative)) (“[P]arties that incorporate expert testimony by reference in their petitions . . . without providing explanation of such testimony risk having the testimony not considered by the Board.”).” slip op. at 16
Patent outcomesUS 11,176,072 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,176,072 - 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 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 - PTAB · Jun 9, 2025 · IPR2025-00112 · APJ James A Tartal · IPR · Institution
The Board instituted IPR on claims 1–3, 10, 11, 14, and 17 on all petitioned grounds, finding a reasonable likelihood of success on obviousness 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 ’357 patent.” slip op. at 2
- BurdenDecided for petitioner
“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 1–3, 10, 11, 14, and 17 of the ’357 patent as obvious over Bourque and Wampler.” slip op. at 37
- 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. 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 ’357 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 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided 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 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,351,357
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.