- PTAB · Oct 3, 2025 · IPR2025-00680 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR of claims 2 and 3 on all grounds in the Petition and granted Nintendo’s motion to join IPR2024-00807, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Apple IPR on all challenged claims and all asserted grounds of unpatentability. Apple IPR, Paper 10 (institution decision); see also Apple IPR, Paper 2 (the “Apple Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Apple IPR. Compare Pet. 2, with Apple Petition 1; see also Mot. 1 (asserting the instant “Petition is substantively identical to Apple Inc.’s petition (‘Apple Petition’) in the Apple IPR, including that it relies on the same expert declaration,” and asserting “the same grounds presented in the Apple IPR”). As indicated, Petitioner also relies on the same declarant as did the petition in the Apple IPR. Mot. 1; compare Ex. 1003 (Hannaford Declaration), with Apple IPR, Ex. 1003 (same). Because the grounds of unpatentability in the instant Petition are identical to those in the Apple IPR and for the same reasons stated in our Decision to Institute in the Apple IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition. See Apple IPR, Paper 10 (analyzing challenges in the Apple Petition).” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition (1) is substantially identical to the Apple Petition, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration, the Hannaford Declaration (Ex. 1003). Mot. 1, 4. Petitioner represents that “joinder will not negatively impact the Apple IPR trial schedule” and “expressly consents to the existing trial schedule.” Id. at 10; see also id. at 7 (“Proceeding with a consolidated inter partes review would avoid potential inconsistency, promote efficient review of the same claims for the same patent under the same grounds, and would result in a final written decision without delay.”). Petitioner also represents that as “long as Apple remains in the joined IPR, Nintendo remains in a limited ‘silent understudy’ role that does not actively participate in the IPR.” Id. at 8. The record supports Petitioner. In addition, the final written decision in the Apple IPR is due to issue on or before October 15, 2025, with the Oral Hearing complete and no further briefing due. See IPR 2024-00807, Paper 15 (Oral Hearing Transcript); Paper 18, 2–3. Therefore, as Petitioner argues, joinder by Petitioner will have little or no impact on the trial schedule in the Apple IPR. On the other hand, if the Board denies joinder, Petitioner submits that it “intends to file a separate petition for IPR (‘Second Petition’) that includes grounds in addition to some (or all) of the grounds in the Apple IPR.” Mot. 14.” slip op. at 10
NonePatents in suitUS 8,860,337 - Amgen, Inc. v. Bristol-Myers Squibb CompanyAdverse judgmentPTAB · Oct 1, 2025 · IPR2025-00603 · APJ Grace Karaffa Obermann · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner based on its statutory disclaimer of claims 1–18, then terminated the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“In other words, the Smith & Nephew decision makes plain that entry of adverse judgment (as opposed to a denial without adverse judgment) is appropriate in situations where a patentee seeks to regain, through continued prosecution, subject matter that is patentably indistinct from previously surrendered subject matter. Id. That is precisely the situation at hand. Claim 43, pending in the ’822 continuation application, is of the same or broader scope than disclaimed claim 1 of the ’529 patent, as shown in Petitioner’s claim chart:” slip op. at 4
NonePatents in suitUS 11,332,529 - Padagis US LLC v. Neurelis, Inc.InstitutedPTAB · Sep 16, 2025 · IPR2025-00465 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–18 because Petitioner showed a reasonable likelihood of proving claim 1 obvious over Gwozdz and Meezan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the relevant art. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) secondary considerations (i.e., objective indicia) of nonobviousness when presented.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). To show unpatentability based on a combination of teachings, “[a]n obviousness determination [also] requires finding both that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” CRFD” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A POSA] would have been a pharmaceutical scientist, chemist, or biologist involved in the research and development of pharmaceutical formulations and/or delivery, and would have at least a Bachelor’s degree with at least 5 years of experience, or a Master’s, Ph.D. or Pharm.D. degree with several years of experience. In addition, a POSA would have had knowledge of benzodiazepine structure and function, and would further have knowledge and practical experience working with intranasal and transmembrane formulations, including knowledge of the physiology and anatomy of the nasal cavity, with relevant experience in developing intranasal formulations. Pet. 23–24; Ex. 1062 ¶ 20. Patent Owner “does not dispute” Petitioner’s POSA definition at this stage. Prelim. Resp. 18. We apply Petitioner’s proposed POSA definition for this Decision, which definition appears to be generally consistent with the cited prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“standard used in a civil action before the courts under 35 U.S.C. § 282(b), including construing claim language in accordance with its ordinary and customary meaning as understood by the POSA, in view of the patent’s specification and considering the patent’s prosecution history. 37 C.F.R. § 42.100(b). We need only expressly construe terms to the extent needed to resolve the controversy before us. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019).” slip op. at 8
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“applicant, as part of the bargain with the public, must describe his or her invention so that the public will know what it is and that he or she has truly made the claimed invention.” AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014). “[T]he test for sufficiency [of the written description requirement] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date sought.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (explaining that “the description must clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed”) (internal quotation marks omitted); see also id. at 1352 (“[A] description that merely renders the invention obvious does not satisfy the requirement.”).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,241,414 - Padagis US LLC v. Neurelis, Inc.InstitutedPTAB · Sep 16, 2025 · IPR2025-00466 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on claims 1–27 because Petitioner showed a reasonable likelihood of prevailing on at least one claim, including claim 1 over Gwozdz and Meezan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. For reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’786 patent’s challenged claims.1 We institute inter partes review on all challenged claims. SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“We find that Petitioner has made a threshold showing that the ’558 Provisional does not provide written description support for claim 1’s pharmaceutical solution consisting of each of the recited elements, including n-dodecyl beta-D-maltoside. It is true that “n-Dodecyl β-D-maltoside” can be found listed in the SIGMA Catalog. Ex. 1026, 316. But Dr. Donovan’s testimony helps put that listing in context. It is merely one among well over 100 ionic and non-ionic detergents listed in the cited six pages of the SIGMA Catalog. See 1026, 316–321; Ex. 1062 ¶ 50. When further considered in the context of paragraphs 150–152 of the ’558 Provisional, which generically suggest that “enhancer” compounds can be used in “some embodiments”—then introducing at least 15 classes of potential enhancers16 including “preferred” lysophospholipids and acyl carnitines—the listing of n-dodecyl beta-D-maltoside among at least 150 biological detergents in the SIGMA Catalog is even more remote. Moreover, although satisfaction of the written description requirement is not limited to what is exemplified in a priority application, none of the ’558 Provisional’s examples use any “enhancer,” much less any detergent, any alkyl glycoside, or n-dodecyl beta-D maltoside in particular. The 16 The ’558 Provisional suggests that whether “a given compound” will function as an “enhancer” in a formulation requires testing. Ex. 1008 ¶ 150 (indicating “an in vivo or good model test” may “determin[e] whether the uptake of the drug is enhanced to a clinically significant degree”). ethanol. See Ex. 1008 ¶¶ 172–174 (Examples 1 and 2). In short, we find no sufficient disclosure of “blaze marks” in the ’558 Provisional that point to the inventors’ possession of a pharmaceutical solution that includes n-dodecyl beta-D-maltoside as claimed. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326–27 (Fed. Cir. 2000) (analogizing an application’s generic disclosures to a forest of unmarked trees and explaining that, “to satisfy the written description requirement,” there must be “blaze marks directing the skilled artisan to that tree [within the forest that represents the claimed invention]” in the application).” slip op. at 28
- PTAB / AIA Trials › §315(e) estoppelEstoppel does not applyDecided for patent owner
“and applying collateral estoppel to vacate a claim construction in an underlying IPR). In an IPR, “a party seeking to invoke collateral estoppel must show: ‘(1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) [the party against whom collateral estoppel is being asserted] had a full and fair opportunity to litigate the issue in the first action.’” Google LLC v. Hammond Development Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022) (quoting In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994)) (alteration in original).14 “It is [also] well established that patent claims need not be identical for collateral estoppel to apply.” Id. at 1381. Instead, “collateral estoppel requires the issues of patentability be identical.” Id. If “the differences between the unadjudicated patent claims and adjudicated patent claims do not materially alter the question of invalidity, collateral estoppel applies.” Ohio Willow Wood Co. v. Alps South, LLC, 735 F.3d 1333, 1342–43 (Fed. Cir. 2013) (affirming application of collateral estoppel where claims adjudicated as obvious required a “polymeric” gel whereas similar, unadjudicated claims required a “block copolymer” gel). “Collateral estoppel also applies to common issues in actions involving different but related patents.” Mycogen Plant Sci., Inc. v. Monsanto Co., 252 F.3d 1306, 1310 (Fed. Cir. 2001), vacated on other grounds, 353 U.S. 1109 (2002).” slip op. at 22
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artReference not prior artMixed
“We agree that at least one portion of Gwozdz is not prior art. To establish that the cited disclosures in Gwozdz are prior art, Petitioner must show support for those disclosures in the Gwozdz Provisional. In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025) (explaining that “the portion of the application relied on . . . as prior art must be supported by the provisional application”). Petitioner did not establish that Gwozdz’s disclosure of “penetration enhancers” finds support in the Gwozdz Provisional. Pet. 22. Conversely, Patent Owner shows that the phrase is absent in the Gwozdz Provisional. Prelim. Resp. 37.20 Based on this record, we determine that Gwozdz’s mention of “penetration enhancers” is not prior art to the 19 Patent Owner argues this “penetration enhancers” disclosure in Gwozdz is not prior art regardless which of the disputed priority dates (March 28, 2008, or March 27, 2009) one accords to the challenged claims. Prelim. Resp. 33. 20 We also agree that collateral estoppel does not bar Patent Owner from challenging Gwozdz’s prior-art status in this case. Patent Owner’s apparent concession that Gwozdz was prior art during the 451 IPR does not equate to the issue being actually litigated. Prelim. Resp. 34–35; Ex. 1040, 14 (“Patent Owner does not contest that Gwozdz is entitled to this filing date” of the Gwozdz Provisional). Purdue, 767 F. App’x at 922 (determining “[t]he priority date for the Joshi reference . . . cannot be determined based on collateral estoppel” where patentee could have argued, but did not in fact argue, Joshi’s prior-art status in an earlier matter).” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,793,786 - Padagis US LLC v. Neurelis, Inc.InstitutedPTAB · Sep 16, 2025 · IPR2025-00464 · APJ Annette R Reimers · IPR · Institution
The Board instituted IPR on claims 1–22, finding a reasonable likelihood that claim 1 would have been obvious over Gwozdz and Meezan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion For the reasons discussed above and based on the present record, we find that Petitioner has made an adequate threshold showing that the issues presented in this Petition are substantially the same as the issues the Board previously considered in IPR2019-00451 and that Gwozdz’s effective date is March 28, 2008. We therefore determine that Petitioner has shown that it is reasonably likely to prevail in establishing that at least claim 1 would have been obvious over Gwozdz and Meezan. IV. CONCLUSION Petitioner has shown a reasonable likelihood that it will prevail in establishing the unpatentability of at least one of the claims challenged in the Petition. We institute trial on all challenged claims under the grounds raised in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A POSA] would have been a pharmaceutical scientist, chemist, or biologist involved in the research and development of pharmaceutical formulations and/or delivery, and would have at least a Bachelor’s degree with at least 5 years of experience, or a Master’s, Ph.D. or Pharm.D. degree with several years of experience. In addition, a POSA would have had knowledge of benzodiazepine structure and function, and would further have knowledge and practical experience working with intranasal and transmembrane formulations, including knowledge of the physiology and anatomy of the nasal cavity, with relevant experience in developing intranasal formulations. Pet. 23; Ex. 1062 ¶ 20. Patent Owner “does not dispute” Petitioner’s POSA definition at this stage. Prelim. Resp. 16. We apply Petitioner’s proposed POSA definition for this Decision, which definition appears to be generally consistent with the cited prior art.” slip op. at 6
- PTAB / AIA Trials › §315(e) estoppelMixed
“As the Board’s decision in the 451 IPR explicitly found written description inadequate for the “alkyl glycoside” limitation in the ’558 Provisional, which is the same issue raised here for the ’546 patent, Petitioner has shown that issue was actually litigated and decided in the 451 IPR. Where the same issue is actually litigated and decided as part of a final adjudication in an earlier action, the test for invoking collateral estoppel in a later action is met. On this record and for the reasons above, we are persuaded that collateral estoppel bars Patent Owner from arguing the challenged claims are entitled to the priority date of the ’558 Provisional.” slip op. at 14
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedMixed
“We agree that at least one portion of Gwozdz is not prior art. To establish that the cited disclosures in Gwozdz are prior art, Petitioner must show support for those disclosures in the Gwozdz Provisional. In re Riggs, 131 F.4th 1377, 1384 (Fed. Cir. 2025) (explaining that “the portion of the application relied on . . . as prior art must be supported by the provisional application”). Petitioner did not establish that Gwozdz’s disclosure of “penetration enhancers” finds support in the Gwozdz Provisional. Pet. 22. Conversely, Patent Owner shows that the phrase is absent in the Gwozdz 9 Patent Owner argues that as the ’546 Patent claims priority to the ’439 Application, the “penetration enhancers” disclosure in Gwozdz is not prior art because Gwozdz and the ’439 Application were filed on the same day (March 27, 2009). Prelim. Resp. 21–22. 10 Patent Owner argues that the passage in Gwozdz concerning “penetration enhancers” is relevant solely to “a pharmaceutical composition for injection,” not for intranasal administration as required by the ’546 Patent. Prelim. Resp. 22. First, as noted above, based on the record presented, we determine that Gwozdz’s mention of “penetration enhancers” is not prior art to the challenged claims. Second, we disagree, however, that Gwozdz’s non-prior art mention of penetration enhancers is relevant solely to a pharmaceutical composition for injection as argued by Patent Owner. Gwozdz discloses that “[the] pharmaceutical compositions of the present invention” can be administered by a number of “nonlimiting” routes including intranasal administration. See Ex. 1009, 9:2–11. Provisional. Prelim. Resp. 20–21. Based on this record, we determine that Gwozdz’s mention of “penetration enhancers” is not prior art to the challenged claims. The phrase cannot, therefore, be used to establish a motivation to combine the asserted references.” slip op. at 18
§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,895,546 - PTAB · Sep 15, 2025 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 2, 7–9, 11, 12, and 20–24 are obvious over Yamaguchi-727.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Cerebrum Sensor Technologies, Inc. (“Patent Owner”) timely filed a Preliminary Response. Paper 9 (“Prelim. Resp.”).1 Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- BurdenInstituted
“We disagree. Positioning module 6 to face a “predetermined direction” is a form of preventing movement that falls within the scope of limitation 1b. Moreover, Yamaguchi-727 uses a method for preventing movement of its module 6 in its housing 20, silicone potting material, that is expressly recognized by the Specification of the ’421 patent when it states: “A common technique used to assist in fixturing the electrical sensor device 40 known within the automotive industry is to fill the internal cavity with a coating material such as a neutral silicone or the like for purposes of retaining placement position.” Ex. 1001, 13:56–60. Although the Specification also asserts that the sensor assemblies disclosed in the 421 patent “do not use or require the use of any such coating or filing agents or materials for any fixturing of the electrical sensor device 40,” id. at 13:61–64, limitation 1b merely requires that the “sensor device . . . is disposed within the internal cavity and attached therein to prevent movement of the device within the internal cavity,” id. at 30:25–27. Absent a persuasive argument to the contrary, we preliminarily conclude that Yamaguchi-727’s use of potting material to hold its module 6 in place within its housing 20 meets the requirements of limitation 1b. Both parties are encouraged to adduce intrinsic evidence relating to the meaning of limitation 1b at trial. For all the reasons set forth above, we find that Petitioner has established a reasonable likelihood of proving the Yamaguchi-727 renders claim 1 unpatentable as obvious. 2. Dependent Claims 2, 7–9, 11, 12, and 20–24 Petitioner identifies the portions of Yamaguchi-727 that teach the limitations introduced in dependent claims 2, 7–9, 11, 12, and 20–24, all of which ultimately depend from claim 1. Pet. 32–40. Patent Owner relies upon its argument that Petitioner’s showing for claim 1 is deficient as the reason why Petitioner’s challenge to dependent claims 2, 7–9, 11, 12, and 20–24 fails. We reject this argument for the reasons stated in Part II.C.1 above. Based on our review of Petitioner’s otherwise uncontested argument and evidence cited in support, we find that Petitioner also establishes a reasonable likelihood of proving that Yamaguchi-727 renders dependent claims 2, 7–9, 11, 12, and 20–24 unpatentable as obvious. D. Remaining Challenges” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner complies with the requirement of identifying “[h]ow the claim language is to be construed” by setting forth proposed interpretations of various claim terms in the table above.7 Both cases cited by Patent Owner relate to an issue presented by a petitioner’s alleged inconsistent handling of whether a claim term is subject to interpretation as a means-plus-function element under 35 U.S.C. § 112(f). Orthopediatrics Corp. v. K2M, Inc., IPR2018-01546, Paper 10 at 11 (PTAB Feb. 14, 2019); 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023- 7 Neither party has identified any claim language that might invoke interpretation as a means-plus-function limitation, and we discern no such claim language. Additionally, we do not imply that a petitioner must always propose express interpretations for specific claim language to comply with Rule 42.104(b)(3). Rather, we only note that Petitioner has, by any measure, complied by expressly proposing interpretations for identified claim language.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree. Positioning module 6 to face a “predetermined direction” is a form of preventing movement that falls within the scope of limitation 1b. Moreover, Yamaguchi-727 uses a method for preventing movement of its module 6 in its housing 20, silicone potting material, that is expressly recognized by the Specification of the ’421 patent when it states: “A common technique used to assist in fixturing the electrical sensor device 40 known within the automotive industry is to fill the internal cavity with a coating material such as a neutral silicone or the like for purposes of retaining placement position.” Ex. 1001, 13:56–60. Although the Specification also asserts that the sensor assemblies disclosed in the 421 patent “do not use or require the use of any such coating or filing agents or materials for any fixturing of the electrical sensor device 40,” id. at 13:61–64, limitation 1b merely requires that the “sensor device . . . is disposed within the internal cavity and attached therein to prevent movement of the device within the internal cavity,” id. at 30:25–27. Absent a persuasive argument to the contrary, we preliminarily conclude that Yamaguchi-727’s use of potting material to hold its module 6 in place within its housing 20 meets the requirements of limitation 1b. Both parties are encouraged to adduce intrinsic evidence relating to the meaning of limitation 1b at trial. For all the reasons set forth above, we find that Petitioner has established a reasonable likelihood of proving the Yamaguchi-727 renders claim 1 unpatentable as obvious. 2. Dependent Claims 2, 7–9, 11, 12, and 20–24 Petitioner identifies the portions of Yamaguchi-727 that teach the limitations introduced in dependent claims 2, 7–9, 11, 12, and 20–24, all of which ultimately depend from claim 1. Pet. 32–40. Patent Owner relies upon its argument that Petitioner’s showing for claim 1 is deficient as the reason why Petitioner’s challenge to dependent claims 2, 7–9, 11, 12, and 20–24 fails. We reject this argument for the reasons stated in Part II.C.1 above. Based on our review of Petitioner’s otherwise uncontested argument and evidence cited in support, we find that Petitioner also establishes a reasonable likelihood of proving that Yamaguchi-727 renders dependent claims 2, 7–9, 11, 12, and 20–24 unpatentable as obvious. D. Remaining Challenges” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,835,421 - LG Energy Solution, Ltd. v. Molecular Rebar Design, LLCAdverse judgmentPTAB · Sep 2, 2025 · IPR2025-00355 · APJ Avelyn Ross · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed claims 1–23, terminated the IPR, and cancelled the scheduled hearing.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under our rules, a party may request adverse judgment against itself at any time during a proceeding, and we construe a disclaimer of all claims involved in a trial as a request for adverse judgment. 37 C.F.R. §42.73(b). Because Patent Owner has disclaimed all challenged claims, and has requested adverse judgment, we determine that it is appropriate to enter adverse judgment against Patent Owner pursuant to 37 C.F.R. § 42.73(b) and to terminate this proceeding. Under these circumstances, we grant Patent Owner’s Motion, and grant Patent Owner’s request that the hearing in this matter, scheduled for September 15, 2025, be cancelled.” slip op. at 2
NonePatents in suitUS 9,636,649 - LG Energy Solution, Ltd. v. Molecular Rebar Design, LLCAdverse judgmentPTAB · Sep 2, 2025 · IPR2024-01005 · APJ Avelyn Ross · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner, terminated review of claims 1–23, and cancelled the scheduled hearing after Patent Owner disclaimed all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under our rules, a party may request adverse judgment against itself at any time during a proceeding, and we construe a disclaimer of all claims involved in a trial as a request for adverse judgment. 37 C.F.R. §42.73(b). Because Patent Owner has disclaimed all challenged claims, and has requested adverse judgment, we determine that it is appropriate to enter adverse judgment against Patent Owner pursuant to 37 C.F.R. § 42.73(b) and to terminate this proceeding. Under these circumstances, we grant Patent Owner’s Motion, and” slip op. at 2
NonePatents in suitUS 9,636,649 - PTAB · Aug 25, 2025 · IPR2025-00631 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–9, 11–13, and 15–22 on all five asserted § 103 grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’027 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–3, 5, 7–9, 11–13, and 15–22) of the ’027 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “possessed an undergraduate degree in chemistry, polymers, materials science, chemical engineering (or related field) and one to two years of experience with constructing and manufacturing tires, tire patches, tire decals/stickers and/or the like.” Pet. 8 (citing Ex. 1003 ¶¶ 6–11). According to Petitioner, “Additional education could compensate for less practical experience. Conversely, additional practical experience could compensate for less education.” Id. Patent Owner does not provide an alternate definition, but, “Patent Owner does not acquiesce to, and reserves the right to address, [Petitioner’s] definition of a POSA.” Prelim. Resp. 6 n.6. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’027 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We disagree with Patent Owner’s contentions that these disclosures indicate that Wilson’s patch would not meet the construction of “barrier material composition.” None of these disclosures even suggests that the base of Wilson’s patch is rigid as Patent Owner suggests. To begin with, the fact that the housing is “more rigid” provides no information about the absolute rigidness of the patch. See Ex. 1009, 9:16–21. As for the disclosure that the patch is contoured (id. at 3:35–67), Patent Owner provides only attorney argument to support its contention that the contour demonstrates that Wilson’s patch must be so rigid that it cannot be meet the claim limitation. In contrast, Petitioner demonstrates that Wilson discloses using the exact same materials described in the challenged patent (see Ex. 1001, 6:33–58 (noting “[e]lastomeric materials useful for forming the intermediate layer 24 include but are not limited to gum rubber, vulcanized natural rubber SBR . . . or comparable materials”); Ex. 1009, 3:49–55 (noting the patch may be constructed from natural rubber (NR), a preferred mixture of chlorobutyl rubber and natural rubber (CR/NR), or a preferred mixture of SBR and natural rubber (SBR/NR)), and provides detailed testimony from its expert to support its contentions (see Ex. 1003 ¶¶ 114–119). On the current record, we find Petitioner’s reasoning and evidence to be persuasive, and find that Petitioner has shown sufficiently that Willson discloses or teaches this limitation.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,027 - PTAB · Aug 11, 2025 · IPR2025-00560 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–29 and every asserted ground, finding a reasonable likelihood that claim 1 is unpatentable over Chang and Fang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had “bachelor’s degree in mechanical engineering or a similar field and at least two years of experience designing human breast pump equipment. More education could substitute for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 15–18). Mr. Bauer’s Declaration testimony states he considered some of the factors listed above. Ex. 1003 ¶ 17. Mr. Bauer testifies that based on his background and experience, in his opinion, the level of ordinary skill is as stated by Petitioner. Id. at 18. For purposes of this Decision, based on the prior art, the sophistication of the disclosed technology in the ’381 patent, and Mr. Bauer’s undisputed testimony, we adopt Petitioner’s definition of the level of ordinary skill.13” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because binding. We wish to have the record developed before rendering any binding determination, finding, or conclusion. 14 The citation to Ex. 1005, 2290 appears to be an error. We do not find the cited claim construction at this location. we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted)).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner also asserts that “[m]ultiple reasons would have prompted a POSITA to implement a diaphragm pump in Chang’s breast pump device in accordance with Fang’s suggestions.” Id. at 21–24. Based on the record before us, we agree that Fang discloses a diaphragm, as recited in clause 1[a][1]. We also agree, based on the record before us, that a person of ordinary skill would have had multiple reasons to use Fang’s diaphragm pump in Chang’s device with a reasonable expectation of success.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,813,381
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.