- Dr. Falk Pharma GmbH v. Ellodi Pharmaceuticals, L.P.Adverse judgmentPTAB · Jun 3, 2026 · PGR2025-00086 · APJ Tawen Chang · PGR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment and terminated the PGR as to claims 1–34 after Patent Owner disclaimed all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding,” including by “[d]isclaimer of the involved application or patent” or “[c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. §§ 42.73(b)(1)–(b)(2). Accordingly, we grant Patent Owner’s Request for Adverse Judgment and terminate the proceeding. slip op. at 2
NonePatents in suitUS 12,290,598 - Shenzhen Tuozhu Technology Co. Ltd. v. Stratasys, Inc.All claims unpatentablePTAB · Jun 3, 2026 · IPR2025-00257 · APJ Lilan Ren · IPR · Final written decision
Claims 1–15 are unpatentable because Petitioner proved by a preponderance of the evidence that the asserted § 103 grounds render them unpatentable.
RulingsFinal written decision- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“proceeding, we determine Petitioner has proven by a preponderance of the evidence that each of claims 1–15 of the ’660 patent is unpatentable.” slip op. at 85
Patent outcomesUS 9,592,660 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,592,660 - Berkshire Hathaway Energy Company / Pacificorp v. Birchtech Corp.Institution deniedPTAB · May 18, 2026 · IPR2025-00278 · APJ David Cotta · IPR · Institution
The Board denied institution of Berkshire Hathaway Energy Company and PacifiCorp’s petition because it had instituted the earlier-filed IPR2025-00274 challenging the same patent.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“request from Patent Owner for Director Review, finding that Patent Owner introduced “evidence sufficient to put RPI and privity at issue” and remanding with instructions to “allow discovery, narrowly tailored to resolve the RPI and privity issues” including “at least materials sufficient to clarify the evidence the Board found to be ‘ambiguous’ and to avoid the need for the Board to ‘speculate as to the nature of the redacted material.’” Paper 57 (Decision on Request for Director Review). The Director instructed that after allowing such discovery, we “should then determine on the full record whether Petitioners have met their burden of demonstrating that the Petitions are not time-barred under § 315(b), applying the framework set forth in Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242–44 (Fed. Cir. 2018). Concurrently herewith, we issue a decision in IPR2025- 00278 finding that Petitioner has met its burden of demonstrating that its Petition is not time-barred under 35 U.S.C. § 315(b).” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Review Decision instructing that “if the Board determines that Petitioners met their burden to identify all RPIs in the Petitions, then the Board should maintain at most one IPR challenging each of the ’114 patent, the ’517 patent, the ’430 patent, and the ’225 patent.” Paper 79, 3. Together with its Petition in this proceeding and the proceeding in IPR2025-00274, Petitioner filed an Explanation Regarding the Necessity of Multiple Petitions. Paper 2 (“Explanation”); IPR2025-00274, Paper 2. In the Explanation, Petitioner “request[s] that, if the Board uses its discretion to institute the Petitions, the Board consider the merits of IPR2025-00274 . . . before IPR2025-00278.” Explanation, 3. Further to Petitioner’s request, we first considered the merits of IPR2025-00274. For the reasons discussed in our concurrently issued decision in IPR2025-00274, we institute inter partes review on the grounds set forth in the Petition in IPR2025-00274. Further to the Director’s instruction that we “maintain at most one IPR challenging . . . the ’114 patent,” and the Petitioner’s request that we consider the merits of IPR2025-00274 before IPR2025-00278, we deny institution of the Petition in this proceeding.” slip op. at 3
Discretionary denialPatents in suitUS 10,343,114 - Berkshire Hathaway Energy Company / Pacificorp v. Birchtech Corp.Institution deniedPTAB · May 18, 2026 · IPR2025-00281 · APJ David Cotta · IPR · Institution
The Board denied institution because it had instituted IPR2025-00280 challenging the same patent, consistent with the Director’s instruction to maintain at most one IPR.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“Review Decision instructing that “if the Board determines that Petitioners met their burden to identify all RPIs in the Petitions, then the Board should maintain at most one IPR challenging each of the ’114 patent, the ’517 patent, the ’430 patent, and the ’225 patent.” Paper 79, 3. Together with its Petition in this proceeding and the proceeding in IPR2025-00280, Petitioner filed an Explanation Regarding the Necessity of Multiple Petitions. Paper 2 (“Explanation”); IPR2025-00281, Paper 2. In the Explanation, Petitioner “request[s] that, if the Board uses its discretion to institute the Petitions, the Board consider the merits of IPR2025-00280 . . . before IPR2025-00281.” Explanation, 3. Further to Petitioner’s request, we first considered the merits of IPR2025-00280. For the reasons discussed in our concurrently issued decision in IPR2025-00280, we institute inter partes review on the grounds set forth in the Petition in IPR2025-00280. Further to the Director’s instruction that we “maintain at most one IPR challenging . . . the ’517 patent,” and the Petitioner’s request that we consider the merits of IPR2025-00280 before IPR2025-00281, we deny institution of the Petition in this proceeding.” slip op. at 3
Discretionary denialPatents in suitUS 10,596,517 - Microsoft Corporation v. Edge Networking Systems, LLCAdverse judgmentPTAB · Mar 25, 2026 · IPR2025-00618 · APJ Nabeel U Khan · IPR · Adverse judgment
After Patent Owner disclaimed all challenged claims, the Board entered adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b)(2).
RulingsAdverse judgment- Adverse judgmentAdverse judgmentOther
“Our rules state that “disclaimer of a claim such that a party has no remaining claim in the trial” is “construed to be a request for adverse judgment.” 37 C.F.R. § 42.73(b). Because Patent Owner has disclaimed all challenged claims and no claims remain in this proceeding, adverse judgment is appropriate. We, therefore, enter judgment adverse to the Patent Owner.” slip op. at 2
NonePatents in suitUS 11,695,823 - Google LLC v. Mindbasehq, LLCAll claims unpatentablePTAB · Mar 16, 2026 · IPR2021-01252 · APJ Kara L Szpondowski · IPR · Remand
On remand, claims 14–19, 33–40, and 43–46 were held unpatentable as obvious; the Federal Circuit’s affirmed findings leave claims 1–13, 20–32, 41, and 42 unpatentable as well.
RulingsRemand decision- RemandOther
“to both cases vacating and remanding in part and affirming in part our Final Written Decisions. Appeal Dec. With respect to Petitioner’s appeals, the Federal Circuit addressed the “dictionary routine” claims (claims 14–19 and 33–40) and the “normalization” claims (claims 43–46). Appeal Dec. 7–14. For the “dictionary routine” claims, the Federal Circuit vacated and remanded, stating that In sum, as Google contends and we now hold, the “dictionary routine” claims can be practiced by use of an already-created dictionary, and do not also require the automatic creation of a dictionary. The Board needs to consider Google’s evidence and argument by applying this construction of the automatically classifying and storing limitation, and using this understanding to determine whether Conlon may, in fact, render the “dictionary routine” claims obvious (and, relatedly, whether its prior distinctions of Conlon may be immaterial). Appeal Dec. 10–11. For the “normalization” claims, the Federal Circuit also vacated and remanded, stating that our “decision to exclude Google’s rebuttal argument and supplemental declaration is based on a clear factual error,” so on remand we “must include evaluation of the evidence and argument Google provided in reply.” Id. at 13–14. With respect to Patent Owner’s cross-appeals, the Federal Circuit affirmed. Id. at 14–16.” slip op. at 3
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The Federal Circuit concluded that Petitioner’s construction of “automatically classifying and storing” (as recited in limitation [14.3]), is correct. Appeal Dec. 8. That is, “the ‘dictionary routine’ claims can be practiced by [the] use of an already-created dictionary, and do not also require the automatic creation of a dictionary.” Id. at 10; see also Reply 7 (the limitation is “directed to the use of a dictionary function to automatically look up words and their syntax”); Appeal Dec. 8 (“nothing about the term . . . would inform a person of ordinary skill in the art that automatic ‘creation’ of a database, in addition to the ‘use’ of an already-created database, is a requirement of the dictionary routine claims”); id. (“the plain and ordinary meaning of the claim language is broad enough to include ‘use’”); id. (agreeing with Petitioner that “the specification describes the ‘dictionary routine’ as the act of looking up words already in the database”); id. at 9 (stating that “[i]t is notable, as well, that the specification nowhere describes automatically creating a dictionary; all instances of creating dictionary entries rely, at least in part, on manual data entry by users”). As directed by the Federal Circuit, we will apply this construction in our analysis.8 Id. 8 Patent Owner argues that the Federal Circuit “cherry-picks” and misinterprets the patents’ specifications, and “ignores the clearly contrary specification language.” PO Remand Br. 4–5, 10; id. at 8 (arguing that that the specification clearly set forth the definition of the claim term, and “the Board must accept term definitions . . . above all external definitions”). We do not consider these arguments on the construction of this limitation, because the Federal Circuit has directed us to proceed under its construction of the limitation. We also agree with Petitioner that the Federal Circuit’s claim construction is “foreclosed from further consideration” under its” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“We agree with Petitioner that claim 43 is obvious over the combination of Conlon, Miller, and Fong. The Federal Circuit stated, “[i]n this context, ‘normalization’ generally refers to de-duplicating and simplifying database entries (for instance, combining entries for ‘car’ and ‘automobile’).” Appeal Dec. 4 (cited at Pet. Response Br. 5). This is consistent with the disclosure in the ’433 patent. E.g., Ex. 1001, 16:55– 17:24 (discussing, for example, “recogniz[ing] that the differently named data elements in different structures are actually the same data element . . . is referred to as normalizing the names of the same data elements,” “recogniz[ing] that the same named data elements in different structures are actually different data elements . . . is referred to as normalizing the names of the different data elements,” and “normalizing multiple single data elements”). This is also consistent with how Fong describes “normalization.” Ex. 1029, 76 (The “Function” of “Normaliz[ing] the collection of entities” is to “[r]emove redundancies and detect errors”); see also Ex. 1057 ¶ 226. Patent Owner’s arguments that Fong’s normalization is “different” from the normalization described in the ’433 patent does not persuasively rebut Petitioner’s arguments. As Petitioner points out, Patent Owner does not provide a construction for “normalization,” despite claiming that the term is “defined” in the ’433 patent. Pet. Remand Resp. Br. 6; PO Remand Br. 13. Moreover, although Patent Owner purports to identify differences between the ’433 patent and Fong, the “normalization” applied is expressly recited in limitations [43.1.1], [43.1.2], and [43.2], and the subsequent actions taken on those normalized databases (i.e., comparing and recording) are recited in limitations [43.3]–[43.5]. That is, the “normalization” required by the claim is reflected in the claim language itself, and is broader than argued by Patent Owner. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art”). Patent Owner does not explain how these purported “differences” (e.g., that Fong may require the use of “database keys,” “identifiers,” “entities,” or determining ‘non-key attributes’ from key attributes) impacts the claim language, or Petitioner’s showing. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (A prior art reference “must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect”). For the same reasons, as well as those set forth by Petitioner, we are also not persuaded by Patent Owner’s arguments that each DBMS requires a normalization process that is customized for it. Pet. Remand Resp. Br. 6–7. These arguments by Patent Owner also are not commensurate with the scope of the claim language, which does not recite a DBMS, and generally recites “normalizing” or “normalized” without regard to the DBMS. Id. Dr. Jansen provides an example of a database in unnormalized form that is converted into a normalized form, based on Fong’s four conditions, as applied to the claim language. See Reply 31–35; Ex. 1057 ¶¶ 226–261. Therefore, we are not persuaded by Patent Owner’s arguments that Petitioner has not explained how the example maps onto the limitations. PO Remand Resp. Br. 6–12. Patent Owner’s complaint that Dr. Jansen created the graphic in the example does not undermine Petitioner’s showing. E.g., Trial Practice Guide,14 I.G., (“Experts may testify about the teachings of the prior art and how they relate to the patentability of the challenged claims.”). We find Dr. Jansen’s testimony credible and persuasive in explaining why the combination of Conlon and Fong teaches the claim limitations. After considering the properly presented evidence and arguments of the complete record, we determine that Petitioner has shown, by a preponderance of the evidence, that the combination of Conlon, Miller, and Fong teaches the limitations in claim 43, that one of ordinary skill in the art would have been motivated to combine the teachings of Conlon, Miller, and Fong, and that claim 44 would have been obvious over Conlon, Miller, and Fong. 2. Analysis of Dependent Claims 44–46 Claims 44–46 depend, directly or indirectly, from claim 41. We, likewise, determine whether the combination renders obvious claims 44–46, taking into account the arguments made in Petitioner’s Reply Briefs and Dr. Jansen’s Supplemental Rebuttal Declarations. Petitioner contends that dependent claims 44–46, would have been obvious over Conlon, Miller, and Fong, and provides explanation as to how the prior art teaches each claim limitation. Pet. 84–86; Reply 35–39; Pet. Remand Br. 13–14. Patent Owner does not provide further briefing on dependent claims 44–46. 14 Available at https://www.uspto.gov/patents/ptab/trial-practice-guide#step2. Patent Owner did not specifically challenge Petitioner’s contentions as” slip op. at 31
- Strike new argumentNew argument disregardedDecided for petitioner
“Patent Owner’s arguments do not undermine Petitioner’s showing. Patent Owner did not specifically challenge Petitioner’s contentions as to the sufficiency of Conlon’s disclosure for claim 1410 in the Patent Owner Response. In the Sur-replies, Patent Owner argues that the claim requires that at least some relationships are created “automatically,” and “these automatic embodiments . . . are represented in this group of claims.” Sur-reply 9. Along these lines, in the additional briefing Patent Owner argues that Conlon does not teach “automatic,” but merely teaches “semi-automatic.” PO Remand Br. 9–10. The crux of Patent Owner’s argument, however, is that the Federal Circuit did not properly construe the limitation, and ignored certain disclosures in the ’433 (and ’680) patent. Id. at 10–11; see Pet. Remand Resp. Br. 1–4; PO Remand Resp. Br. 4–5. The Federal Circuit held that “the dictionary routine claims can be satisfied by mere use of a lexical database, and do not also require the automatic creation of additional definitions.” Appeal Dec. 10. Moreover, the statements from Conlon that Patent Owner relies upon relate to creating a database, not using the database. See id. As discussed above, on remand we are directed to apply the Federal Circuit’s construction. Patent Owner does not explain 10 As discussed in the original Final Written Decisions, Patent Owner raised several arguments that generally applied to all the claims, challenging, for example, the level of ordinary skill in the art, whether Conlon, Miller, and Beckwith were analogous art, and several general arguments relating to Conlon and the motivation to combine Conlon with a DBMS. See Final Dec. 14–23, 25–27. We were not persuaded by Patent Owner’s arguments; the Federal Circuit affirmed, determining that our findings were supported by substantial evidence. Appeal Dec. 14–16. why Petitioner’s contentions are not persuasive in light of the Federal Circuit’s construction of this limitation. In addition, Patent Owner argues in the Sur-replies that “[c]laims 14– 19 are not disclosed by the proffered prior art” and cites to paragraphs 78–83 of the Ranka Rebuttal Declarations. Sur-reply 10. As discussed in the original Final Written Decisions, Patent Owner’s reliance on six paragraphs of Dr. Ranka’s Rebuttal Declarations is an improper incorporation by reference, as Patent Owner did not discuss that testimony or further elaborate on these arguments in the Sur-replies. 37 C.F.R. § 42.6(a)(3); Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 9–10 (PTAB Aug. 29, 2014) (informative); see, e.g., Final Dec. 37–39, 45, 48–50, 52. Therefore, we will not consider arguments that are not made in the Sur-replies, but are instead improperly incorporated by reference to the cited paragraphs in Dr. Ranka’s Rebuttal Declarations. Accordingly, after considering the evidence and arguments of the complete record, we determine that Petitioner has shown, by a preponderance of the evidence, that Conlon teaches limitation [14.3], and that claim 14 would have been obvious over Conlon.” slip op. at 21
Patent outcomesUS 6,665,680 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,665,680 - Google LLC v. Mindbasehq, LLCAll claims unpatentablePTAB · Mar 16, 2026 · IPR2021-01251 · APJ Kara L Szpondowski · IPR · Remand
On remand, claims 14–19, 33–40, and 43–46 were held unpatentable as obvious over Conlon alone or Conlon, Miller, and Fong; the affirmed unpatentability of claims 1–13, 20–32, 41, and 42 remains.
RulingsRemand decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“automatically classifying and storing” (as recited in limitation [14.3]), is correct. Appeal Dec. 8. That is, “the ‘dictionary routine’ claims can be practiced by [the] use of an already-created dictionary, and do not also require the automatic creation of a dictionary.” Id. at 10; see also Reply 7 (the limitation is “directed to the use of a dictionary function to automatically look up words and their syntax”); Appeal Dec. 8 (“nothing about the term . . . would inform a person of ordinary skill in the art that automatic ‘creation’ of a database, in addition to the ‘use’ of an already-created database, is a requirement of the dictionary routine claims”); id. (“the plain and ordinary meaning of the claim language is broad enough to include ‘use’”); id. (agreeing with Petitioner that “the specification describes the ‘dictionary routine’ as the act of looking up words already in the database”); id. at 9 (stating that “[i]t is notable, as well, that the specification nowhere describes automatically creating a dictionary; all instances of creating dictionary entries rely, at least in part, on manual data entry by users”). As directed by the Federal Circuit, we will apply this construction in our analysis.8 Id. 8 Patent Owner argues that the Federal Circuit “cherry-picks” and misinterprets the patents’ specifications, and “ignores the clearly contrary specification language.” PO Remand Br. 4–5, 10; id. at 8 (arguing that that the specification clearly set forth the definition of the claim term, and “the Board must accept term definitions . . . above all external definitions”). We do not consider these arguments on the construction of this limitation, because the Federal Circuit has directed us to proceed under its construction of the limitation. We also agree with Petitioner that the Federal Circuit’s claim construction is “foreclosed from further consideration” under its slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“combination of Conlon, Miller, and Fong. The Federal Circuit stated, “[i]n this context, ‘normalization’ generally refers to de-duplicating and simplifying database entries (for instance, combining entries for ‘car’ and ‘automobile’).” Appeal Dec. 4 (cited at Pet. Response Br. 5). This is consistent with the disclosure in the ’433 patent. E.g., Ex. 1001, 16:55– 17:24 (discussing, for example, “recogniz[ing] that the differently named data elements in different structures are actually the same data element . . . is referred to as normalizing the names of the same data elements,” “recogniz[ing] that the same named data elements in different structures are actually different data elements . . . is referred to as normalizing the names of the different data elements,” and “normalizing multiple single data elements”). This is also consistent with how Fong describes “normalization.” Ex. 1029, 76 (The “Function” of “Normaliz[ing] the collection of entities” is to “[r]emove redundancies and detect errors”); see also Ex. 1057 ¶ 226. Patent Owner’s arguments that Fong’s normalization is “different” from the normalization described in the ’433 patent does not persuasively rebut Petitioner’s arguments. As Petitioner points out, Patent Owner does not provide a construction for “normalization,” despite claiming that the term is “defined” in the ’433 patent. Pet. Remand Resp. Br. 6; PO Remand Br. 13. Moreover, although Patent Owner purports to identify differences between the ’433 patent and Fong, the “normalization” applied is expressly recited in limitations [43.1.1], [43.1.2], and [43.2], and the subsequent actions taken on those normalized databases (i.e., comparing and recording) are recited in limitations [43.3]–[43.5]. That is, the “normalization” required by the claim is reflected in the claim language itself, and is broader than argued by Patent Owner. See In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art”). Patent Owner does not explain how these purported “differences” (e.g., that Fong may require the use of “database keys,” “identifiers,” “entities,” or determining ‘non-key attributes’ from key attributes) impacts the claim language, or Petitioner’s showing. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (A prior art reference “must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect”). For the same reasons, as well as those set forth by Petitioner, we are also not persuaded by Patent Owner’s arguments that each DBMS requires a normalization process that is customized for it. Pet. Remand Resp. Br. 6–7. These arguments by Patent Owner also are not commensurate with the scope of the claim language, which does not recite a DBMS, and generally recites “normalizing” or “normalized” without regard to the DBMS. Id. Dr. Jansen provides an example of a database in unnormalized form that is converted into a normalized form, based on Fong’s four conditions, as applied to the claim language. See Reply 31–35; Ex. 1057 ¶¶ 226–261. Therefore, we are not persuaded by Patent Owner’s arguments that Petitioner has not explained how the example maps onto the limitations. PO Remand Resp. Br. 6–12. Patent Owner’s complaint that Dr. Jansen created the graphic in the example does not undermine Petitioner’s showing. E.g., Trial Practice Guide,14 I.G., (“Experts may testify about the teachings of the prior art and how they relate to the patentability of the challenged claims.”). We find Dr. Jansen’s testimony credible and persuasive in explaining why the combination of Conlon and Fong teaches the claim limitations.” slip op. at 31
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Dr. Jansen provides an example of a database in unnormalized form that is converted into a normalized form, based on Fong’s four conditions, as applied to the claim language. See Reply 31–35; Ex. 1057 ¶¶ 226–261. Therefore, we are not persuaded by Patent Owner’s arguments that Petitioner has not explained how the example maps onto the limitations. PO Remand Resp. Br. 6–12. Patent Owner’s complaint that Dr. Jansen created the graphic in the example does not undermine Petitioner’s showing. E.g., Trial Practice Guide,14 I.G., (“Experts may testify about the teachings of the prior art and how they relate to the patentability of the challenged claims.”). We find Dr. Jansen’s testimony credible and persuasive in explaining why the combination of Conlon and Fong teaches the claim limitations.” slip op. at 32
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“4. Summary of Ground 1 Having considered the Graham factors,11 including the level of ordinary skill in the art, the scope and content of the prior art, and the differences between the prior art and the challenged claims, we are persuaded, based on the current record, that Petitioner has shown, by a preponderance of the evidence, that claims 14–19 and 33–40 would have been obvious over Conlon.” slip op. at 24
Patent outcomesUS 6,510,433 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,510,433 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 28, 2026 · IPR2024-01174 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–8 and 10–23 are unpatentable: the Board found claims 1–15 anticipated or obvious over the asserted grounds and claims 16–23 obvious over the Native combination.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“argument that the prior art fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Reply 6–7 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that Lesniak teaches how to make stable compositions by including a secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Id. Ex. 1086 ¶ 7; see also Reply 6 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32).” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 17 (citing Ex. 1002 ¶¶ 27–29). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications at this stage of the proceeding. PO Resp. 10. For this Decision, we adopt and apply Petitioner’s proposal above, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1, 16, and 20 reciting “a deodorant stick” is limiting” as it provides antecedent basis for the recitation of “said deodorant stick being free of an aluminum salt” for each independent claim. PO Resp. 7–10. Patent Owner also points to dependent claims 6–9 as relying on the preamble reciting “a deodorant stick” as antecedent basis for claim elements. Id. at 9. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 19 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick). We determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). To the extent further discussion of the meaning any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find that the evidence of record fails to support Patent Owner’s argument that the prior art fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Reply 6–7 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that Lesniak teaches how to make stable compositions by including a secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Id. Ex. 1086 ¶ 7; see also Reply 6 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32). Having considered the parties’ positions and evidence of record, summarized above, we determine that Lesniak provides sufficient disclosure to enable a person of ordinary skill in the art to formulate deodorant stick within the parameters of claim 1. Therefore, for the reasons discussed above, we conclude that Petitioner has proved by a preponderance of evidence that Lesniak anticipates claim 1.” slip op. at 22
Patent outcomesUS 11,497,706 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,497,706 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 28, 2026 · IPR2024-01173 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–7, 9–13, and 16–19 are unpatentable: claims 16–17 are anticipated by Lesniak, and the remaining challenged claims are obvious over the stated combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“argument that the Lesniak fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Pet. Reply 8 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Ex. 1086 ¶ 7; see also Reply 8 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32).” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 24 (citing Ex. 1002 ¶¶ 27–28). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. See generally PO Resp. We adopt and apply Petitioner’s proposed definition of a POSA, which is consistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said deodorant stick being free of an aluminum salt” and “said deodorant stick” having a particular hardness range. PO Resp. 8–9. Patent Owner also points to dependent claims 5–8 as relying on the preamble reciting “a deodorant stick” as antecedent basis for claim elements. Id. at 10. We agree.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find that the evidence of record fails to support Patent Owner’s argument that the Lesniak fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Pet. Reply 8 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Ex. 1086 ¶ 7; see also Reply 8 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32). Having considered the parties’ positions and evidence of record, summarized above, we determine that Lesniak provides sufficient disclosure to enable a person of ordinary skill in the art to formulate a deodorant stick within the parameters of claims 16 and 17. e) Conclusion as to Claims 16 and 17 We agree with Petitioner that “the challenged claims recite nothing more than well-known deodorant ingredients performing their conventional functions.” Pet. Reply 2. Therefore, for the reasons discussed above, we conclude that Petitioner has proved by a preponderance of evidence that Lesniak anticipates claims 16 and 17.” slip op. at 22
Patent outcomesUS 10,905,647 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,905,647 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01105 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1, 3–8, and 11–14 as anticipated by Lesniak; claims 2, 9, 10, and 15 as obvious over the respective asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 27 (citing Ex. 1002 ¶¶ 26–28). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. PO Resp. 7– 8. We adopt and apply Petitioner’s proposed definition of a POSA, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said stick range. PO Resp. 8–10. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 27 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick).” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“disclosure to enable a person of ordinary skill in the art to formulate deodorant stick within the parameters of claim 1. d) Conclusion as to claim 1 Having considered the parties’ positions and evidence of record, summarized above, we are persuaded by Petitioner’s analysis that Lesniak discloses all elements of claim 1. We are not persuaded to Patent Owner’s arguments to the contrary. Accordingly, we determine that Lesniak anticipates claim 1.” slip op. at 20
Patent outcomesUS 10,966,915 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,966,915
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.