• Qiagen Sciences, LLC v. Tecan Genomics, Inc.All claims unpatentable
  PTAB · May 13, 2026 · IPR2025-00029 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–12 and 14–19 are unpatentable as obvious over the listed combinations; Petitioner’s motion to strike is denied.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “for purposes of this Decision, we find a POSA would have had a Ph.D. in molecular biology, molecular genetics, bioinformatics, biochemistry, or a related field. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

  Patent outcomesUS 10,876,108 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,876,108
• Qiagen Sciences, LLC v. Tecan Genomics, Inc.All claims unpatentable
  PTAB · May 12, 2026 · IPR2025-00026 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–10 are unpatentable: claims 1–3 and 5–10 are anticipated by Porreca and obvious over Schmitt and McCloskey; claims 4 and 7 are also obvious over the listed Illumina combinations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “On the initial trial record, we agreed with Patent Owner that one of ordinary skill in the art would have had experience with next generation sequencing, but were not persuaded that this would only be possible in the field of molecular biology. Instead, we found that a person of ordinary skill would have had either (1) a Ph.D. in the field of chemistry, molecular biology, or biochemistry or (2) a B.S. or M.S. degree with three to five years of experience working in any of those fields. Inst. Dec. 8. We specifically found that “[t]he person of ordinary skill would have had experience with next generation sequencing methods and a working knowledge of how those methods functioned.” Id. at 8–9. Patent Owner now submits that it does not dispute the definition of a person of ordinary skill in the art as laid out in the Institution Decision. PO Resp. 13. Reviewing the entire trial record, we maintain the same definition of a person of ordinary skill in the art and note that it is consistent with the skill level reflected in the disclosures of the ’357 patent and prior art. We further note that the skill level does not affect our analysis or our final decision.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “In the Institution Decision, the Board adopted Petitioner’s construction of the term “adaptor.” Inst. Dec. 9. Patent Owner does not dispute this construction. PO Resp. 13–14. During oral argument, Petitioner argued that claim 1 requires “an adapter to be ligated onto a target DNA, and that adapter needs to have two different sequences of DNA that are used for identification” including a “socalled identifier that's one to eight nucleotides in an indexing site.” Tr. 6:19–7:2. Patent Owner, again, did not dispute this characterization of “adaptor.” See generally Tr. Based on the entirety of the trial record, we continue to apply Petitioner’s construction of the term “adaptor,” although we note that it does not affect our analysis.” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the entirety of the trial record, we do not agree with Patent Owner’s reading of either the claims or the prior art because Patent Owner takes too narrow a view of both. First, based on the plain language of Porreca, we find it uses a combination of the sequence reads of the target sequence and differentiator tag sequences to determine whether there is duplication. See Ex. 1006 ¶¶ 139–140, 143, 148, 153. All that the claim requires is that the method identifies sequence reads with identical identifier and target sequences as duplicates. Because claim 1 contains the transition “comprising,” the claim is still satisfied if the category of identified duplicate reads contains identical labels and also contains more. Patent Owner admits that the identifier and target sequence do not have to be used simultaneously. Tr. 46:16–48:4. Instead, Patent Owner challenges whether Porreca uses the required elements in combination as recited in the challenged claims. Based on the record before us, we agree with Petitioner’s position especially in view of the open-ended nature of the claims and Patent Owner’s own admission that there is no temporal requirement for the use of target sequences and differentiator tag sequences. Specifically, we find that Porreca teaches using the combination of the target sequences and the differentiator tag sequence to determine whether particular sequence reads are unique or PCR duplicates. See Ex. 1006 ¶¶ 139–140, 143, 148, 153. The use of both such sequences meet the claim limitations. This finding is consistent with the prosecution history of the ’357 patent and how the applicant and examiner interpreted the claims. See Ex. 1013, 69–70, 78–79. Second, we find the disclosure of Porreca sufficient to demonstrate to an ordinarily skilled artisan that “collapsing” is done by comparing target sequences and differentiator tag sequences. Porreca specifically explains that: after multiple reads have been collected for a given locus, it is possible that due to bias (e.g., caused by PCR amplification steps), a large fraction of the reads are derived from a single originating molecule. This would skew the population of target sequences observed, and would affect the outcome of the genotype call.” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We do not agree with Patent Owner for at least two reasons. First, Patent Owner fails to address the fact that Schmitt cites to McCloskey 2007. We find that the citation of McCloskey 2007 in Schmitt indicates that the ordinarily skilled artisan would have considered the teachings of McCloskey to be highly relevant to the teachings of Schmitt and would have considered them to be both useful in the field of sequencing. See Ex. 1005 ¶ 6. Second, Patent Owner fails to explain or even identify the purported structural differences between Schmitt and McCloskey that would prevent the teachings of McCloskey from being relevant to Schmitt. In addition, we credit the testimony of Dr. Metzker that one of ordinary skill in the art would have understood the benefits of adding a barcode to target sequences and would have looked to McCloskey and the batch-stamps it teaches because both Schmitt and McCloskey are in the same field and address the same problems. See Ex. 1003 ¶¶ 110, 114. Accordingly, we find that Petitioner has demonstrated by a preponderance of the evidence that a person of ordinary skill in the art at the critical time would have had sufficient reason to combine the teachings of Schmitt and McCloskey to arrive at challenged claim 1.” slip op. at 48

  Patent outcomesUS 11,098,357 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,098,357
• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.All claims unpatentable
  PTAB · Apr 8, 2026 · IPR2024-01504 · APJ Georgianna W Braden · IPR · Final written decision

  Claims 1–4, 6, 7, 9, and 10 are unpatentable under § 102 over Bielas and § 103 over Iafrate and Kivioja and Bielas.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “On the initial trial record, we agreed with Patent Owner that Petitioner’s asserted level of ordinary skill in the art is higher than warranted when Petitioner argues that a person of ordinary skill “further would have had specific experience with implementing and designing library preparation methods.” Pet. 21–22. We disagreed with Patent Owner, however, that an ordinarily skilled artisan only needs to “have had experience with DNA sequencing methods” (see Prelim. Resp. 8) because an artisan with experience based only on pre-NGS sequencing methods would not qualify as a person of ordinary skill. Instead, we found that a person of ordinary skill would have had either (1) a Ph.D. in the field of chemistry, molecular biology, or biochemistry or (2) a B.S. or M.S. degree with three to five years of experience working in any of those fields. Inst. Dec. 9. We specifically found that “[t]he person of ordinary skill would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned.” Id.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “1. “indexing site” Petitioner argues that the ’357 patent defines “indexing site” as a sample index, specifically, “a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing.” Pet. 23 (citing Ex. 1004, 4:40–44). Patent Owner did not disagree initially with Petitioner’s proposed construction other than to argue that no claim requires construction. Prelim. Resp. 9. In our Institution Decision, we noted that the ’357 patent states: An indexing site is a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing. the ’357 patent to provide a definition for “indexing site,” and we construed the term in accordance therewith. The parties do not dispute this definition and we maintain that construction for our analysis here. See PO Resp. 9; Reply 6–14.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “In some embodiments, duplicate sequencing reads are differentiated from one another as being true duplicates versus apparent or perceived duplicates. Apparent or perceived duplicates may be identified from sequencing libraries and using conventional measures of duplicate reads (i.e., reads were mapped using bowtie), where all reads with the same start and end nucleic acid coordinates were counted as duplicates. True duplicates may be identified from sequencing libraries having had an identifier site introduced through ligation to differentiate between fragments of DNA that randomly have the same start and end mapping coordinates. Ex. 1004, 14:21–31; see id. at Fig. 5; see also Example 1, 18:6-15 (When evaluating two million random reads, the apparent duplicates were found to comprise 39% of all reads. However, the true duplicates, identified through The methods employing the use of an identifier site were found to considerably increase the resolution of the true number of duplicates within the pool of reads.). The ’357 patent also discloses in Example 5: “Any read that has identical sequence to any other read is identified as a duplicate and removed from the population, thus, only a single copy is retained within the file.” Ex. 1004, 20:60–62. Analyzing the patent disclosure in light of the parties’ arguments, we determine that “duplicates” in claim 1 of the ’357 patent means the sequences possess an identical sequence for both the identifier and the length of the sequence read that is obtained. Additionally, we agree with the parties that there is no temporal requirement for “identifying sequence reads” using the identifier and the target sequence, and the two do not have to be used simultaneously. Rather, based on both Examples 1 and 5 of the ’357 patent, the claims only require that the two data points be used for “identifying sequence reads.”” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner

    “4. “comprising” The Board preliminarily construed “comprising” as an open-ended transition that is not limited to the listed steps. See Inst. Dec. 13 (citing Vivid Techs., Inc., 200 F.3d at 811). Patent Owner agrees that the “comprising” transitional phrase of the challenged claims leaves open the possibility that additional steps can be included in the method, but argues that it should not “be interpreted so broadly as to effectively eliminate the step of identifying duplicates as claimed.” PO Resp. 18. Patent Owner argues that a “broad interpretation of the claims cannot be read to include a method in which the identifying duplicates step only identifies sequences with PCR or SBS errors and does not identify duplicates in the manner include only identification of reads without duplicate sequences (those that contain PCR or SBS errors) makes this limitation superfluous and cannot be the correct interpretation.” Id. Patent Owner argues that the proper construction of the claims (1) covers a method of identifying sequence reads that are identical as duplicates through a process that uses both the identifier and at least a portion of the target sequence, and (2) does not exclude methods that include a step of identifying PCR errors in addition to the claimed step of identifying duplicates. Id. at 19. Petitioner agrees with Patent Owner and states “[a]ll claim 1 requires is that two sequences are identified as duplicates using the claimed method, even if the method identifies as duplicates additional sequences that are not 100% identical.” Reply 14 (citing Ex. 1124, 55:11–57:3; Ex. 1117). The Board agrees with the parties and we construe “comprising” as an open-ended transition, meaning the claims require, but are not limited to, the listed steps.” slip op. at 16

  Patent outcomesUS 11,098,357 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,098,357
• Imperative Care, Inc. v. Inari Medical, Inc.All claims unpatentable
  PTAB · Apr 7, 2026 · IPR2025-00156 · APJ Timothy G Majors · IPR · Final written decision

  Claims 1–9 are unpatentable as obvious over Schaffer combined with Hartley or Eller, with or without Garrison; anticipation by Schaffer and obviousness over Schaffer alone were not shown.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties propose essentially the same formal educational background for the POSA, but we agree with Patent Owner that Petitioner’s proposed POSA definition lacks some specificity concerning the POSA’s work experience. That definition, if interpreted generically, could mean that a person qualifies as a POSA if they had, for example, a B.S. in mechanical engineering and only two years of experience with any type of product in any field. That is too broad. We find that a POSA would have had the agreed-upon educational credentials—an undergraduate degree in mechanical engineering or a related engineering discipline. Ex. 1003 ¶ 35; Ex. 2008 ¶ 76. 10 Although unspecified in this proceeding, in the related 1157 IPR, Patent Owner stated that the field of the invention is “hemostasis valves for use during intravascular procedures.” IPR2024-01157, Paper 13 at 22. engineering experience related to products in the field of the invention, which involves endovascular devices and the surgical procedures that use such devices. Ex. 1001, 1:24–60 (background of the invention). Such devices include, but are not necessarily limited to, hemostasis valves and catheters for minimally-invasive vascular surgeries. Id. Furthermore, as pointed out by Petitioner and consistent with the testimony of the parties’ experts, the POSA need not have had firsthand experience designing relevant medical devices, including hemostasis valves. Pet. Reply 28; see, e.g., Ex. 1019 (Zalesky Tr.), 72:11–73:7 (testifying direct experience “designing” hemostasis valves or aspiration catheters is not necessary, but “general experience with vascular devices and procedures” is required); Ex. 2006 (Thornton Tr.), 180:13–19. As Dr. Zalesky testified, the POSA’s experience related to such devices “could be as simple as bench testing and looking at clinical data.” Ex. 1019, 74:5–75:1; see also id. at 82:3–6 (testifying a POSA need not “have specific experience with different methodologies of hemostasis”). Lastly, a POSA would have had an understanding of such devices’ design requirements as determined by the needs of the physician, patient, and procedure, which understanding may be informed by work experience and/or study. Ex. 2006, 24:5–21.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “1. “aspiration catheter” Claim 1’s preamble recites “[a]n aspiration catheter.” Ex. 1001, 22:10. Petitioner contends that, as a general rule, a preamble does not limit the scope of a claim, and that the term “aspiration” here merely describes a non-limiting “intended use” of an otherwise structurally-complete invention defined by the body of the claim. Pet. 18–19. Patent Owner responds that 11 In the related 1157 IPR, Patent Owner moved to exclude Mr. Thornton’s testimony, which motion we denied. IPR2024-01157, Paper 35 at 70–72. Patent Owner filed no motion to exclude here. Owner’s arguments here.” PO Resp. 30. We need not further construe “aspiration catheter” as no dispute turns on that term’s meaning or whether it is limiting. Realtime Data, 912 F.3d at 1375 (explaining that claims need only be construed to the extent necessary to resolve matters in dispute).” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “That does not, however, resolve the dispute about “flexibility.” On that issue, after considering the full record developed through trial, we agree with Patent Owner that a “filament” as claimed is flexible. The claims support Patent Owner’s interpretation. Patent Owner cites the claim language, including the recitation that “the first filament [is] formed into a loop around the collapsible tubular sidewall defining a valve lumen” and that “a diameter of the valve lumen decreases in response to reducing a diameter of the loop.” As Patent Owner argues, and as we recognized at the institution stage, the claimed filament “must be flexible to constrict the valve lumen.” PO Resp. 23; Inst. Dec. 15–16; Ex. 2008 ¶ 68 (testifying that a POSA would understand this property of flexibility is essential to achieving the claimed loop formation and function). The Specification supports this understanding. Consider the “loop” embodiments as illustrated in Figures 6 or 7. Ex. 1001, Figs. 6–7. If the filament forming each depicted loop was somehow rigid, applying a force that seeks to pull the respective ends of the filament in opposing directions would not decrease the size of the loop—the loop would stay the same size and the filament would not circumferentially constrict and seal the elongate member’s lumen as described in the patent. Ex. 1001, 13:18–29.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner’s argument is unavailing. A steel beam or a plastic broom handle are longer than they are wide and yet conventionally rigid. And, specific to the subject matter here, as Mr. Thornton admits, machining the valve’s actuating members from plastic or metal, which Schaffer actually describes, would produce rigid members. Ex. 2005, 168:2–6; see also Ex. 2006, 152:8–10 (testifying a flexible aluminum wire would not be made from machining aluminum). Moreover, considering Schaffer’s cited drawings— Figure 32, in particular—does not show the actuating members changing shape or dynamically conforming to the outer surface of the seal module that those members are compressing, which, had that been shown, might indicate flexibility. Maybe the absence of any dynamic conformance of the surface of the actuating members is an unintended limitation or artifact of the drawing. Or maybe not, and what is shown is a rigid structure consistent with Schaffer’s other disclosures as already explained. We decline to find anticipation where Schaffer does not, with sufficient clarity and detail, describe a valve with a “filament” as claimed.21 Ultimately, on whether Schaffer describes rigid or flexible U-shaped actuating members, Dr. Zalesky’s interpretation of the reference is more plausible and we find greater evidentiary support for Patent Owner’s position on this issue. Notwithstanding Mr. Thornton’s testimony in his rebuttal declaration that a POSA reading Schaffer would have understood 21 Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (“Anticipation requires that a single reference describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.”) (emphasis added and internal quotation marks omitted). testimony on cross-examination was equivocal—he admitted “[i]t’s not clear” whether Schaffer’s U-shaped actuating members are flexible or rigid. Ex. 2006, 115:16–23 (testifying “[t]he material properties of the U-shaped actuating members are not clearly defined in the Shafer [sic] application”). Dr. Zalesky, in contrast, has consistently testified that a POSA would have understood that Schaffer describes rigid actuating members. See, e.g., Ex. 2008 ¶¶ 66–74 (citing, inter alia, Schaffer’s illustrations of the valve in operation, and the disclosed manufacturing and assembly methods as indicating that “the actuating members 55 are rigid rather than flexible”).” slip op. at 40

  Patent outcomesUS 11,697,012 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,697,012
• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.No claims unpatentable
  PTAB · Apr 6, 2026 · IPR2025-00016 · APJ Zhenyu Yang · IPR · Final written decision

  The Board found claims 1–3, 5–12, and 14–19 not shown unpatentable because Meyer did not disclose the claimed enrichment, which the obviousness grounds did not supply.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “for purposes of this Decision, we find a POSA would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had knowledge of how those methods functioned. Id. at 12.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “As an initial matter, we acknowledge that the definition “to process so as to add or increase the proportion of a desirable ingredient” has two possible interpretations. In the first interpretation, “add or increase” shares the same object “the proportion of a desirable ingredient.” When the proportion of one ingredient goes higher, the proportion of at least another ingredient would necessarily go lower. Thus, the enrichment process under this interpretation results in a higher proportion of the desirable ingredient relative to other ingredients. Patent Owner adopts this interpretation. See PO Resp. 17 (“In the context of preparing a sequencing library, [Patent Owner] Tecan proposes that a nucleic acid sequence of interest is ‘enriched’ when the proportion of nucleic acid fragments containing the sequence of interest is increased relative to other nucleic acid fragments in the sample.”). According to Patent Owner, “amplifying the one or more oligonucleotide extension products . . . thereby enriching the nucleic acid sequence of interest, by generating amplified products comprising the enriched nucleic acid sequence of interest” in step (c) means “increas[ing] the proportion of the nucleic acid sequence of interest relative to the nucleic acid fragments in the solution not containing the sequence of interest by amplifying the oligonucleotide extension product and its complement.” Id. at 19–20. Under the second interpretation, the object for “add” is “a desirable ingredient,” whereas the object for “increase” is “the proportion of a desirable ingredient.” This interpretation is broader than the first one in that the result of the enrichment process not only encompasses a higher proportion of the desirable ingredient relative to other ingredients, but also more desirable ingredient in raw number.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Dr. Sims. As explained above, the amplification step must result in at least some enrichment of the sequence of interest, even though it does not have to be the only cause. See supra Section II.C.2.b. Indeed, Petitioner acknowledges that “at least some of the enrichment must result from the recited steps.” Reply 12. Because Meyer’s enrichment for mRNA using the SMART protocol occurred before any recited steps of claim 1, we find it does not meet the claimed “enrichment” under our construction.” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “shown that Meyer discloses step (c) of claim 1, and Petitioner does not address that limitation in this ground, we find Petitioner has not met its burden to show that claims 8, 17, and 18 would have been obvious over Meyer. F. Alleged Obviousness over Meyer and Siebert Claim 2 depends from claim 1, and further recites “the nucleic acid fragment comprises genomic DNA.” Petitioner asserts that claim 2 would have been obvious over the combination of Meyer and Siebert. Pet. 62–65. Petitioner relies on Siebert for teaching the additional limitation recited in claim 2 only. Id. Because Petitioner has not shown that Meyer discloses step (c) of claim 1, and Petitioner does not rely on Siebert for teaching that limitation, we find Petitioner has not met its burden to show that claim 2 would have been obvious over the combination of Meyer and Siebert.” slip op. at 34

  Patent outcomesUS 10,876,108 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,876,108
• Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.No claims unpatentable
  PTAB · Apr 6, 2026 · IPR2025-00015 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–3 and 5–22 were not shown unpatentable because Meyer does not disclose the claimed enrichment, and the other grounds rely on Meyer for that limitation.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “for purposes of this Decision, we find a POSA would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. Additionally, the POSA would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. Id. at 14. After institution, Patent Owner states that, for purposes of this proceeding, it adopts the Board’s definition of a POSA. PO Resp. 18. After reviewing the record developed during trial, we see no reason to change our finding on this issue. As we stated in the DI, our “definition of a POSA is consistent with the skill level reflected in the disclosures of the ’012 patent and prior art.” DI 14.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “to “enrich” means to “increase[] relative to the rest of the fragments.” Tr. 12:25–26. The panel asked: “In the starting material, there are three components, A, B, C, that say it’s 30 percent, 50 percent and 20 percent. You do PCR and it -- they all get amplified and the end result is still 30 percent, 50 percent, and 20 percent. Anything got enriched?” Id. at 12:18–21. Petitioner responded that “petitioner’s position is that in that situation, there is no enrichment.” Id. at 12:22–23. In other words, Petitioner does not disagree with Patent Owner that mere increase in the raw number is not enrichment. See also id. at 13:7–9 (“[W]e would agree that if it is truly unbiased amplification, that does not result in an increase in the proportion, and so that does not meet the plain meaning of enrich.”). We find the record, including the testimony from all three declarants, supports Patent Owner’s argument. See Sur-reply 1–5 (citing Ex. 1125, 283:1–6, 286:22–287:14; Ex. 1126, 170:18–171:1; Ex. 2037, 150:18–22, 173:15–17; Ex. 2038 ¶ 95), 8 (citing Ex. 1125, 271:10–15; Ex. 2037, 188:22–189:1). Thus, we adopt Patent Owner’s proposal that “a nucleic acid sequence of interest is ‘enriched’ when the proportion of nucleic acid fragments containing the sequence of interest is increased relative to other nucleic acid fragments in the sample.”9 See PO Resp. 19.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Dr. Sims. As explained above, the amplification step must result in at least some enrichment of the sequence of interest, even though it does not have to be the only cause. See supra Section II.C.2.b. Indeed, Petitioner acknowledges that “at least some of the enrichment must result from the recited steps.” Reply 12. Because Meyer’s enrichment for mRNA using the SMART protocol occurred before any recited steps of claim 1, we find it does not meet the claimed “enrichment” under our construction.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “F. Alleged Obviousness over Meyer and Siebert Claim 2 depends from claim 1, and further recites “the nucleic acid fragment comprises genomic DNA.” Petitioner asserts that claim 2 would have been obvious over the combination of Meyer and Siebert. Pet. 69–72. Petitioner relies on Siebert for teaching the additional limitation recited in claim 2 only. Id. Because Petitioner has not shown that Meyer discloses step (d) of claim 1, and Petitioner does not rely on Siebert for teaching that limitation, we find Petitioner has not met its burden to show that claim 2 would have been obvious over the combination of Meyer and Siebert. G. Alleged Obviousness over Meyer and Kelley Claim 9 depends from claim 1, and further recites “the barcode sequence is 12 nucleotides in length.” Petitioner asserts that claim 9 would have been obvious over the combination of Meyer and Kelley. Pet. 72–74. Petitioner relies on Kelley for teaching the additional limitation recited in claim 9 only. Id. Because Petitioner has not shown that Meyer discloses step (d) of claim 1, and Petitioner does not rely on Kelley for teaching that limitation, we find Petitioner has not met its burden to show that claim 9 would have been obvious over the combination of Meyer and Kelley. H. Alleged Obviousness over Meyer, Caruccio, and Bronner Each of claims 15 and 17–19 depends from claim 1. Claim 15 further recites “the second strand of the partial duplex adaptor is ligated to a 3′ end of the nucleic acid fragment.” Claim 17 recites “[t]he method of claim 1, further comprising performing bridge amplification of the annealed strand after step e).” Claim 18 further recites “the sequencing comprises use of four labeled reversible terminators.” And claim 19 further recites “the sequencing comprises semiconductor sequencing.” Petitioner asserts that claims 15 and 17–19 would have been obvious over the combination of Meyer, Caruccio, and Bronner. Pet. 75–80. Petitioner relies on Caruccio and Bronner for teaching the additional limitation recited in claims 15 and 17–19 only. Id. Because Petitioner has not shown that Meyer discloses step (d) of claim 1, and Petitioner does not rely on Caruccio and Bronner for teaching that limitation, we find Petitioner has not met its burden to show that claims 15 and 17–19 would have been obvious over the combination of Meyer, Caruccio, and Bronner.” slip op. at 38

  Patent outcomesUS 10,036,012 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,036,012
• Valve Corporation v. Immersion CorporationAll claims unpatentable
  PTAB · Mar 23, 2026 · IPR2024-00582 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–6, 14–16, and 19 are unpatentable based on anticipation by or obviousness over Pratt, and obviousness over Pratt–Ku, Ku, or Ku–Jiang.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, PO Resp. 18. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions identified in the ’738 patent. See, e.g., Ex. 1001, 1:6–61. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposed level of skill for this decision. The outcome of our decision would be the same under Patent Owner’s proposal.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We find insufficient support in the specification or prosecution history to narrow the term “haptic effect” to only one that has not been modified or combined with another haptic effect. The ’738 patent still refers to combined or modified haptic effects as a “haptic effect.” Ex. 1001, 11:35–38 (“a haptic effect may further be modified or combined with another haptic effect” and “the haptic effect can include one or more haptic effects”). We also find no support for importing into the construction of “haptic effect” the ’738 patent’s example in which a haptic effect can be “based on the proximity signal and the touch sensor signal.” That is already an explicit claim limitation. Id. at 14:19–20 (“generate a haptic output signal based at least in part on the first [proximity] and second [touch] sensor signals”). Including that limitation as part of the construction of “haptic effect” would render the limitation superfluous. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1237 (Fed. Cir. 2016) (“The Board was correct to not include in its construction of ‘menu’ features of menus that are expressly recited in the claims . . . . Construing a claim term to include features of that term already recited in the claims would make those expressly recited features redundant.”). We also disagree with Patent Owner that the ’738 patent’s references to haptic effects modified or combined with other haptic effects are unclaimed embodiments. The ’738 patent discloses that a proximity-based haptic effect may be combined with a touch-based haptic effect, such as when “a particular haptic effect associated with a particular control on a user interface element [is] further . . . modified or combined with another haptic effect based on the proximity sensor signal,” or when “the haptic effect [to be output by the processor] . . . include[s] a haptic effect meant to confirm ‘pushing’ on a virtual button.” Ex. 1001, 11:32–40. These examples are consistent with the claim language and we find no credible evidence in the record that these embodiments are intended to be excluded from the claimed invention. Thus, we agree with Petitioner that it would be incorrect to construe the term “haptic effect” to include the extraneous limitations Patent Owner proposes. We also agree with Petitioner that a person of ordinary skill in the art reading the ’738 patent disclosure would have understood that a combined or modified haptic effect is still a haptic effect.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “To show anticipation under § 102, a petitioner must locate every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “We find Petitioner’s arguments persuasive and disagree with Patent Owner’s arguments to the contrary. Ku discloses summing two overlapping vibration signals, one “based at least in part on” data from a proximity sensor and another “based at least in part on” data from a touch sensor. Ex. 1008, Fig. 12 (items 705, 710, and 715). The summed signal 715 is the basis for generating what the user would perceive as a single haptic effect. See Ex. 1004 ¶ 210–212. This meets limitation 1F. We agree with Petitioner’s argument as to why there would have been a motivation to modify Pratt to include Ku’s teachings. Petitioner’s argument is not merely that Pratt was ready for improvement; Petitioner persuasively argues that a person of ordinary skill in the art would have had reason to add Ku’s method for confirming that the user has touched the intended icon to Pratt’s system. Both Pratt and Ku already disclose using both proximity and touch data in generating a haptic effect, and based on the evidence of record, we are of the view that combining the two teachings would not have been uniquely challenging or otherwise beyond the level of ordinary skill in the art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“Leapfrog presents no evidence that the inclusion of a reader in [electronic children's toys] was uniquely challenging or difficult to one of ordinary skill in the art.” (citing KSR, 550 U.S. at 419–420))” slip op. at 32

  Patent outcomesUS 11,175,738 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,175,738
• Aptiv Services US, LLC v. Microchip Technology, Inc.All claims unpatentable
  PTAB · Mar 20, 2026 · IPR2024-00646 · APJ Christopher L Ogden · IPR · Final written decision

  Claims 1–18 are unpatentable under § 103 over Al-Shyoukh, Ivanov, and Stanescu; the Board did not reach the alternative ground.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposal is most like Petitioner’s alternative proposal which would include a bachelor’s degree and two years of experience. However, Patent Owner does not provide a specific number of years of industry experience and Patent Owner would include mixed-signal IC design as an alternative to analog circuit design. We consider analog circuit design to be most pertinent to the problems and solution discussed in the ’074 patent. See Ex. 1001, 1:15–2:44. In addition, we find credible Petitioner’s argument that an ordinarily skilled artisan with a bachelor’s degree would have had two years of experience, whereas Patent Owner’s proposal does not provide a specific number of years. Thus, we determine that a person of ordinary skill in the art would have had a bachelor’s degree and two years of experience in analog circuit design. Nevertheless, the outcome of our decision would be the same under either of the party’s proposals.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Because neither party has argued that the district-court constructions should be modified or elaborated for this proceeding, and the constructions appear reasonable, we adopt these constructions for this decision. We also take judicial notice of the district court’s Memorandum supporting the claim construction order. Ex. 3001.9” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We agree with Petitioner that “gm boosting” is the only gm enhancement referred to in the ’074 patent, that the ’074 patent uses the terms “gm enhanced” and “gm-boost” synonymously, and that Patent Owner has failed to point to any credible intrinsic evidence of this alleged distinction. Although, “[i]n the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings, CAE Screenplates Inc. v. Heinrich Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000), in this case there is evidence to the contrary. In particular, the ’074 patent never refers to “gm enhancement” as a function separate from “gm boosting.” Indeed, the transistors (368, 370, and 382) that Patent Owner identifies as performing the function of “gm enhancement” are disclosed as part of a “gm-boost stage.” Ex. 1001, 5:8–24. Patent Owner’s alleged separation of Figure 3B into distinct “gm boosting” and “gm enhancement” is not consistent with the intrinsic evidence and is based on the conclusory testimony of Dr. Taylor. Thus, based on the evidence of record, we disagree with Patent Owner’s proposed construction distinguishing the terms “gm enhanced” and “gm-boost” in claim 1. Rather, we find persuasive Petitioner’s argument that a person of ordinary skill in the art would have regarded these terms to be synonymous. We need not otherwise construe these two terms to resolve the contested issues in this proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We find Petitioner’s argument persuasive that a person of ordinary skill in the art would have had reason to follow Ivanov’s teachings to include an enable/disable function in Al-Shyoukh’s biasing circuit to limit that circuit’s standby current for reasons of power-efficiency. Pet. 25–26; Ex. 1002 ¶¶ 67–68. The evidence of record also suggests that an enable/disable function was well known in the art and that it would have been within the level of ordinary skill in the art to add such a function to a biasing circuit, taking into consideration any known tradeoffs. Pet. Reply 17–18; Ex. 1002 ¶¶ 60, 67–68; PO Resp. 13–14 (acknowledging that “any [person of ordinary skill in the art” would attest[ that] engineering is full of tradeoffs” and listing some of the known tradeoffs that “a [person of ordinary skill in the art] would need to consider”). We also disagree with Patent Owner’s argument that Al-Shyoukh, Rincon-Mora, or other references teach away from adding an enable/disable function to Al-Shyoukh. Patent Owner has not pointed to anything in the prior art that criticizes, discredits, or otherwise discourages investigation into the claimed invention. Meiresonne v. Google, Inc., 849 F.3d at 1382.” slip op. at 34

  Patent outcomesUS 9,471,074 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,471,074
• Alamar Biosciences, Inc. v. Olink Proteomics ABNo claims unpatentable
  PTAB · Mar 4, 2026 · IPR2024-01353 · APJ Tawen Chang · IPR · Final written decision

  Claims 1–20 were not shown unpatentable: the asserted obviousness grounds failed, including because Kanan and Neri did not teach selecting the claimed cis-reactive cells.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Accordingly, for purposes of this decision we adopt Petitioner’s proposal of a person of ordinary skill in the art, with the following changes noted in italics below: A person with “an advanced degree, such as a Ph.D., in organic chemistry, molecular biology, biochemistry, or a related field; and about two years of experience in industry and/or laboratory experience relating to small molecules and proteins and would have been familiar with nucleic acid chemistry and conventional hybridization techniques; and (b) access to one or more team members having an advanced degree, such as a Ph.D., in organic chemistry, molecular biology, biochemistry, or a related field; and about two years of experience in industry and/or laboratory experience relating to high throughput screening techniques such as nucleic acid sequencing. A person could also have qualified as a POSA with less formal education and more technical or professional experience.11 We emphasize, however, that our decision would not change if we instead used Patent Owner’s proposed definition of a POSA.” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Because the parties have placed the limitation “selecting all cis- reactive cells exhibiting the detectable trace” into controversy, we construe the term below, but only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the reasons discussed below, we agree with Patent Owner that the plain and ordinary meaning of this phrase, in light of the language of the claims, the Specification, and the prosecution history of record, requires “selecting all of the [molecular complexes or structures] meeting the defined criteria for [cis-reactive cells (CRCs)] and exhibiting the detectable trace.” Sur-reply 8 (citing Ex. 2008 ¶¶ 94, 98–119). We further agree that cis-reactive cells should be construed to mean “an association of at least two interactor moieties, joined by an associated oligonucleotide.” (PO Resp. 9 (quoting Ex. 1001, 9:35-37)). Accordingly, we determine that, properly construed, the claims require that what is “selected” at step 1(d) — what is differentiated or set apart from other molecular complexes or structures in the reaction mixture at the conclusion of step 1(d) — to be “an association of at least two interactor moieties joined by an associated oligonucleotide” that exhibits the detectable trace.” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree that Petitioner has not shown that the combination of Kanan and Neri teaches “selecting all cis-reactive cells exhibiting the detectable trace,” as we have construed that phrase above. In particular, we determine that, properly construed, the limitation requires the selection of “all associations of at least two interactor moieties joined by an associated oligonucleotide and exhibiting the detectable trace.” Instead, as described in Kanan, what is “selected” is the molecules of interest joined by bond formation, with only one of the molecules of interest coupled to a nucleic acid moiety. Thus, the selected molecular complex or structure does not comprise two interactors (i.e., two molecules of interest coupled to NAMs). Moreover, to the extent there are two interactors, they are joined by the bond between the molecules of interest rather than an associated oligonucleotide.” slip op. at 35

  • ExcludeMotion to exclude, deniedDenied

    “III. PATENT OWNER’S MOTION TO EXCLUDE EVIDENCE Patent Owner moved to exclude Exhibit 1008, on the ground that it contains settlement statements and that Rule 408 of the Federal Rule of Evidence prohibits Petitioner from using the statements to impeach or contradict Patent Owner. Mot. 5. Because we do not rely in our analysis on this exhibit, we dismiss the Motion to Exclude as moot.” slip op. at 43

  Patent outcomesUS 7,883,848 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,883,848
• Charter Communications, Inc. v. Iarnach Technologies Ltd.Some claims unpatentable
  PTAB · Feb 19, 2026 · IPR2024-01287 · APJ Russell E Cass · IPR · Final written decision

  Claim 5 is unpatentable over Bernstein alone or with Tsuge; claims 1–3 and 6–11 were not shown unpatentable because the asserted grounds fail to teach required limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that an ordinarily skilled artisan at the time of the alleged invention “would have at least a bachelor’s degree in electrical engineering, computer science or comparable degree or 2–3 years industry experience designing and/or maintaining back-end networking equipment.” Pet. 11. In the Preliminary Response, Patent Owner stated that it “does not contest Petitioner’s recitation of the level of skill in the art, because even under Petitioner’s proposed level of skill,” Petitioner “has failed to demonstrate a reasonable likelihood of success.” Prelim. Resp. 17. In the Institution Decision, we adopted Petitioner’s proposed definition of a person of ordinary skill in the art, finding that it was consistent with the ’982 patent and the asserted prior art. Inst. Dec. 14 (citing Okajima, 261 F.3d at 1355).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “Following the Institution Decision, both parties submitted proposed claim constructions in the district court stating that the preamble is limiting. Ex. 2009, 3–4 (Petitioner’s Preliminary Claim Construction Chart); Ex. 2010, 7 (Patent Owner’s Preliminary Claim Construction Chart). Patent Owner states in the Patent Owner Response that “[t]he parties now agree that the entire preambles of both claims 1 and 6 are limiting.” PO Resp. 17. In its Reply, Petitioner states that “whether the Board finds the phrase ‘service auto-configuration’” in the preamble to be limiting is “immaterial” because it “does not affect the analysis of whether the prior art cited in the petition invalidates [the challenged] claims.” Pet. Reply 5. At the oral hearing, Petitioner acknowledged that it does not dispute that the entire preamble of claims 1 and 6 is limiting. Tr. 20:25–21:17, 23:15–17. Because the parties agreed in district court that the entire preamble of claims 1 and 6 is limiting, and also agree in this proceeding, we find that the preambles of claims 1 and 6 are limiting for purposes of this Decision. We will discuss the meaning of the preamble further in the sections below applying the prior art to the claims. See §§ III.A..4(a), III.A.7, III.C.1(a), III.C.7, infra.” slip op. at 15

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Based on the record before us, and for purposes of this Decision, we do not need to, and do not, construe any other claim terms to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “Based on the full trial record, we find that Petitioner has failed to meet its burden to show that Bernstein recites a “service auto-configuration” method as recited in the preamble of claim 1. As discussed above, the parties agree that the preamble of claim 1, including the “service auto-configuration method” language, is limiting. See § II.B, supra. As we explained in the Institution Decision, the Petition does not set forth a construction of “service auto-configuration method” or explain how the prior art discloses a “service auto-configuration method.” Pet. 11, 24; Inst. Dec. 32. Instead, the Petition merely explains how Bernstein teaches “a DOCSIS Provisioning of EPON (DPoE) system,” without explaining how it teaches a “service auto-configuration method.” Pet. 24 (citing Ex. 1005 ¶ 59). By failing to offer a construction of “service auto-configuration method” or explain how this limitation is met by the prior art, the Petition fails to show by a preponderance of the evidence that the prior art discloses or suggests this limitation.” slip op. at 34

  Patent outcomesUS 9,287,982 mixed
  Claim construction§ 103 obviousness
  Patents in suitUS 9,287,982

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.