- 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 - Avation Medical, Inc. v. Emkinetics, Inc.All claims unpatentablePTAB · Mar 16, 2026 · IPR2024-01378 · APJ John G New · IPR · Final written decision
Claims 1–10 are unpatentable as anticipated by Svihra or obvious over the asserted combinations; the cited non-patent references qualify as printed publications.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Legal Standards Anticipation A claim is unpatentable as anticipated under 35 U.S.C. § 102 only when “every element and limitation of the claim was previously described in a single prior art reference, either expressly or inherently, so as to place a person of ordinary skill in possession of the invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008). However, a reference may inherently anticipate if a claim limitation that is not expressly disclosed “is necessarily present, or inherent, in the single anticipating reference.” Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1337 (Fed. Cir. 2010). The “very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question.” Agilent Technologies, Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009).” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“(citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). Of particular relevance to the case presently before us is the VidStream court’s holding that “[w]hen there is an established publisher there is a presumption of public accessibility as of the publication date.” VidStream, 981 F.3d at 1065. Hulu addressed, inter alia, whether certain asserted references were shown to be publicly available and could be considered as prior art. IPR2018-01039, Paper 29 at 8. In Hulu, the Board held that, although testimonial evidence is one way to prove public accessibility, there are also various indicia of publication and other evidence that may be considered as a totality of the evidence to determine if an asserted reference was publicly accessible and prior art. Id. at 18. Facts to be considered in analyzing the issue, other than testimonial evidence, include, for example, whether there is an established publisher, a copyright date/notice, other publication-related dates (impression, printing, etc.), an ISBN number, citations to the reference before (and to a lesser degree, after) the priority date at issue corroborating its availability and/or that the publisher was established. Id. at 19–20 (see Valve Corp. v. Ironburg Inventions Ltd., 8 F.4th 1364, 1374 (Fed. Cir. 2021)). Here, we find the totality of evidence supports the conclusion that Petitioner has made a sufficient showing that Svihra and Amarenco (as well as the other identified non-patent references) were printed publications, and publicly accessible, prior to the ’477 patent’s priority date. We note at the outset that Patent Owner does not allege that any contested reference is fabricated, or a counterfeit document, but only that Petitioner has not set forth sufficient facts establishing that such references were published and available. Resp. 4. Svihra bears sufficient indicia of publication to conclude it was a printed publication and publicly accessible as of 2002. Ex. 1004. First, it appears on its face to be a legitimate scientific journal article; it indicates it was included at pages 480–83 in volume 103 (No. 12) of Bratisl Lek Listy, the Bratislava Medical Journal, which was established in 1921. The article identifies that it was received for publication on May 30, 2002, and accepted for publication on December 9, 2002; and multiple means of contact for the author and publisher are provided. Id. at 480, 483. Each of these indicia supports the contention that Svihra was published and publicly available in 2002. There is no direct evidence that Svihra was publicly accessed as of this date, but the article is cited as a reference in each of Exhibits 1085–1087, which further supports that Svihra was, generally, publicly available to interested individuals of ordinary skill in the art, which further corroborates that it was a published and publicly accessible publication. Having an established publisher also creates a presumption of publication for Svihra, which has not been rebutted by Patent Owner. VidStream, 981 F.3d at 1065.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Petitioner also explains why a person of ordinary skill would have been motivated to combine the cited references, again citing specific disclosures from the references, and the supporting testimony of Dr. Wingeier. See Pet. at 27–28. Based on our review of Petitioner’s arguments and the evidence of record, we determine that Petitioner has established, by a preponderance of the evidence, that the cited references teach or suggest all of the limitations of challenged claim 1, and that Petitioner has established why a person of ordinary skill would have been motivated to combine the references, as proposed, with a reasonable expectation of success, for the reasons advocated by Petitioner with respect to Ground 2.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could substitute for a formal degree and vice versa.” Pet. 14 (citing Ex. 1003 ¶ 21). Patent Owner does not dispute Petitioner’s proposal. See generally Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and the level of skill in the prior art, we adopt Petitioner’s proposed definition and additionally use the term “skilled artisans” to refer to people with such skill at the time the invention was filed.” slip op. at 10
Patent outcomesUS 9,002,477 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,002,477 - Avation Medical, Inc. v. Emkinetics, Inc.All claims unpatentablePTAB · Mar 16, 2026 · IPR2024-01375 · APJ John G New · IPR · Final written decision
Claims 1–13 are unpatentable as obvious under § 103 over Svihra, Mann, and Ponsford, and independently over Amarenco, Mann, and Ponsford.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Ex. 1001, claim 1. In other words, to effectuate “direct” stimulation of the PTN nerve branch, a practitioner of the ’742 patent must: (1) non-invasively position an electrical stimulator relative to a portion of a patient’s body, such that a branch of a posterior tibial nerve within the first portion of the body is directly targeted by the electrical stimulator; (2) passing a current through the electrical stimulator; and (3) delivering an electrical stimulus from the electrical stimulator to the branch of the posterior tibial nerve such that the branch directly receives the electrical stimulation. Merely “placing electrodes over branches of the PTN” cannot be said, in and of itself, to “directly” target and stimulate the branches, as Petitioner argues.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of filing “would have had an undergraduate degree in the field of biomedical engineering or a related discipline, such as electrical engineering, and at least two years of experience in the design and/or analysis of biomedical devices” and that “[a]dditional work experience could substitute for a formal degree and vice versa.” Pet. 21 (citing Ex. 1003 ¶¶ 20–21). Patent Owner does not dispute Petitioner’s proposal. See generally Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt this definition, and also use the term “skilled artisan” to refer to persons with such skill at the time the invention was filed.” slip op. at 13
- Expert testimonyPetitioner expert creditedOther
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“the evidence of record, that a person of ordinary skill in the art would have found it obvious to modify the teachings of Svihra by non-invasively stimulating a nerve branch of the PTN, e.g., the medial or lateral plantar nerves, as taught by Ponsford, to treat OAB/urinary incontinence. A skilled artisan would have understood that the fibers of a given branch of the PTN necessarily constitute a subset of the PTN fibers, stimulation of which is known to be effective in the treatment of OAB/urinary incontinence. See Ex. 1004, 480–481. Just as it was known in the art that stimulation of the much larger sacral nerve, of which the fibers of the PTN form a part, could have beneficial effects in the treatment of incontinence, and that stimulation of the PTN itself could have a similar effect (see Ex. 1084, col. 12, ll. 33–52), so, a skilled artisan could reason, might electrical stimulation of a branch of the PTN exert a similar effect. We also agree that a person of ordinary skill in the art would have been motivated to stimulate a smaller nerve branch of the PTN, rather than the entire PTN itself, so as to minimize undesirable side effects of stimulating the entire PTN, i.e., the recruitment of downstream muscular contraction, as taught by Mann. With respect as to whether a person of ordinary skill in the art would have had a reasonable expectation of success in the treatment of OAB/incontinence via stimulation of a branch of the PTN, rather than the entire PTN itself, we agree with Petitioner that a person of ordinary skill in the art, would understand from Mann that electrical stimulation of the larger, more central sacral nerve could be employed to treat OAB/urinary incontinence, and that a subset of those PTN fibers could be electrically stimulated to achieve a similar effect. See Ex. 1084, col. 12, ll. 33–52. Such a skilled artisan could similarly reason that a subset of those PTN fibers, i.e., a branch of the PTN, particularly major branches such as the plantar nerves, could also be similarly electrically stimulated to treat OAB/urinary incontinence. Although success in such an experiment would not be guaranteed, “only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness.” In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985).” slip op. at 46
Patent outcomesUS 11,224,742 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,224,742 - Dr. Falk Pharma GmbH v. Ellodi Pharmaceuticals, L.P.Adverse judgmentPTAB · Jan 26, 2026 · IPR2025-00055 · APJ Zhenyu Yang · IPR · Adverse judgment
The Board granted Patent Owner’s motion, entered adverse judgment against Patent Owner on claims 1–42 after statutory disclaimer, and terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. 37 C.F.R. § 42.73(b). Under the Rules, actions construed as a request for entry of adverse judgment include “[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)(2). Here, Patent Owner has disclaimed, under 37 C.F.R. § 1.321, claims 1–42 of the ’407 patent, which constitute all challenged claims involved in this trial. See Ex. 2031. We thus construe the statutory disclaimer as a request for entry of adverse judgment. Having reviewed the statutory disclaimer, we determine that adverse judgment against Patent Owner with respect to claims 1–42 of the ’407 patent is appropriate.” slip op. at 2
NonePatents in suitUS 9,486,407 - Dr. Falk Pharma GmbH v. Ellodi Pharmaceuticals, L.P.Adverse judgmentPTAB · Jan 23, 2026 · IPR2025-00054 · APJ John G New · IPR · Adverse judgment
The Board granted Patent Owner’s unopposed motion and entered adverse judgment against Patent Owner as to claims 1–16 after statutory disclaimer.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include … [d]isclaimer of the involved application or patent.” 37 C.F.R. § 42.73(b)(1). We find that good cause exists to grant Patent Owner’s unopposed request for adverse judgment and to terminate this proceeding. Consequently, we grant Patent Owner’s Motion to Terminate and Request for Adverse Judgment. slip op. at 2
NonePatents in suitUS 11,246,828 - Dr. Falk Pharma GmbH v. Ellodi Pharmaceuticals, L.P.Adverse judgmentPTAB · Jan 23, 2026 · IPR2025-00052 · APJ John G New · IPR · Adverse judgment
The Board granted Patent Owner’s unopposed motion and entered adverse judgment against Patent Owner as to claims 1–17 following statutory disclaimer of all claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include … [d]isclaimer of the involved application or patent.” 37 C.F.R. § 42.73(b)(1). We find that good cause exists to grant Patent Owner’s unopposed request for adverse judgment and to terminate this proceeding. Consequently, we grant Patent Owner’s Motion to Terminate and Request for Adverse Judgment. slip op. at 2
NonePatents in suitUS 10,632,069 - Dr. Falk Pharma GmbH v. Ellodi Pharmaceuticals, L.P.Adverse judgmentPTAB · Jan 23, 2026 · IPR2025-00056 · APJ Ryan H Flax · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on claims 1–30 after it statutorily disclaimed all claims, and terminated the IPR.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include . . . [d]isclaimer of the involved application or patent.” 37 C.F.R. § 42.73(b)(1). We find good cause exists to grant Patent Owner’s unopposed request for adverse judgement and to terminate this proceeding. Thus, we grant Patent Owner’s Motion to Terminate and Request for Adverse Judgment. slip op. at 2
NonePatents in suitUS 11,260,061 - PTAB · Jan 14, 2026 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Remand
On remand, the Board reinstituted review of all challenged claims on all grounds after finding Petitioner sufficiently explained its differing claim-construction positions.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. The Director neither addressed the merits of Petitioner’s challenges nor found that our prior consideration of those merits was faulty. Accordingly, we understand that we need not reconsider our conclusion that Petitioner had demonstrated a reasonable likelihood of proving that claims 1, 2, 7–9, 11, 12, and 20–24 were unpatentable or that the merits of patentability set forth in the Petition warranted institution of inter partes review.” slip op. at 5
- BurdenDecided for petitioner
“The question before us, therefore, is whether the Petitioner’s proffered explanation that it has proposed a different claim interpretation before the Board because the District Court may decline to adopt the narrower claim interpretations it advocates there is sufficient. We find that Petitioner’s explanation is sufficient because it follows the Director’s exemplary logic. Whether a district court has already or might in the future decline to adopt constructions that a petitioner proposes in related district court litigation merely reflects the timing of when a dispute over claim interpretation will be resolved. The Director and Patent Owner both recognize that, to resolve the dispute over claim interpretation that exists here, a decision-maker must determine “a single claim construction that best captures the true meaning of the patent claim.” Remand 4; PO Remand Br. 3. Based on the record presented by the parties to date in this proceeding, no dispute exists that the disputed claim terms mean what Patent Owner says they mean in the Litigation. Accordingly, we find that, at this stage of the proceeding, it is undisputed that Patent Owner’s interpretations of the claim terms represent the “single claim construction that best captures the true meaning of the patent claim.”8 Under that claim interpretation, we” slip op. at 8
NonePatents in suitUS 11,835,421 - Mylan Pharmaceuticals Inc. / Teva Pharmaceuticals USA, Inc. et al. v. Bayer Pharma AktiengesellschaftAdverse judgmentPTAB · Jan 12, 2026 · IPR2022-01513 · APJ Ryan H Flax · IPR · Adverse judgment
The Board granted Petitioners’ withdrawal and entered adverse judgment against them on remanded claims 5–8; claims 1–4 remained affirmed as unpatentable.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“A party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include: . . . [a]bandonment of the contest.” 37 C.F.R. §42.73(b)(4). We find good cause exists to grant Petitioners’ request to withdraw from the proceedings, which is a request for adverse judgement (with respect to challenged claims 5–8). slip op. at 3
NonePatents in suitUS 10,828,310
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.