- Merck Sharp & Dohme LLC v. The Johns Hopkins UniversityAll claims unpatentablePTAB · Jun 9, 2025 · IPR2024-00240 · APJ Deborah Katz · IPR · Final written decision
Claims 1–42 are unpatentable: claims 1–42 are anticipated by the MSR, and the Board also finds the challenged claims obvious over the MSR and cited combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“claims a method of treating a human patient with colorectal cancer having certain characteristics using pembrolizumab and the main prior art reference cited by Petitioner discloses testing pembrolizumab to treat human patients. (See Ex. 1001, 25:40–50, Ex. 1005; see Decision 8–9.) Accordingly, the relevant field of Patent Owner’s claims is treating human patients, as well as testing existing compounds. Neither party directs us to evidence of the level of skill in the art beyond what we considered for institution of trial. In the Decision to institute trial, we determined that the level of skill in the art relevant to the claims of the ’393 patent is not limited to knowledge of and experience with conducting research relating to oncology or developing and conducting clinical trials. (See Dec. 8–9.) We determined that the level of skill also includes knowledge of and experience with treating colorectal cancer patients with immunotherapy compounds, identifying the conditions these patients may have, and understanding the literature regarding clinical trials for such colorectal cancers and the associated conditions and immunotherapy. (See id.) Because the parties do not present additional evidence or argument, we maintain that determination.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“what one of ordinary skill in the art would have known and understood at the relevant time. Specifically, Petitioner relies on the testimony of Alfred L. Neugut, M.D., Ph.D., M.P.H.3 (Ex. 1003) and Paul E. Oberstein, M.D. (Ex. 1150). Patent Owner relies on the testimony of Nils Lonberg, Ph.D. (Ex. 2001) and Richard Goldberg, M.D. (Ex. 2090).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“1 requires a causal relationship wherein the patient must be tested for MSI-H and, if he or she is determined to be MSI-H or dMMR, then the patient is treated with 10 mg/kg of pembrolizumab every 14 days. We further agree that this relationship is different than the use of the term “after” in claims 7, 20, and 27, wherein patients must be treated with a different cancer therapy, and wherein the cancer must have later progressed for the treatment to be within the scope of these claims. (Ex. 1001, 25:66–7, 26:44–46, 26:63–64.) In claim 1, a biological sample from the patient must be tested to determine if the cancer is MSI-H and, if so, the patient is treated with a therapeutically effective amount of pembrolizumab. For this reason, if the prior art teaches the limitations of 1) testing a biological sample obtained from a patient having colorectal cancer to determine that the patient’s colorectal cancer is microsatellite instability high or mismatch repair deficient, and 2) treating the patient with a therapeutically effective amount of pembrolizumab if the patient’s colorectal cancer is determined to be microsatellite instability high or DNA mismatch repair deficient, the art anticipates claim 1. We are not persuaded that claim 1 requires or excludes anything else because nothing else is recited in the claim.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Microsatellite Unstable (MSI) Tumors.” (Ex. 1005, 2.) The parties’ witnesses agree that MK-3475 is pembrolizumab, the compound recited in claim 1. (See Neugut Decl., Ex. 1003 ¶ 37; see Lonberg Decl., Ex. 2001, ¶ 65.) Patent Owner does not dispute Petitioner’s assertion that the MSR was published on a government web site on June 10, 2013, more than two years before the priority date of the ’393 patent on July 10, 2015. (See Pet. 7 (citing Ex. 1005, 3, Ex. 1003 ¶ 35).)” slip op. at 17
Patent outcomesUS 11,591,393 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,591,393 - PTAB · Mar 24, 2025 · IPR2024-01235 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–3, 6–11, and 14–16 on all proposed grounds after finding a reasonable likelihood of prevailing on the §103 ground over Mañosa and Patel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016), 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“[T]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. . . . [T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“May” expresses a possibility. The Specification reflects this interpretation of “may” when it states that “[i]n one embodiment, the organic material is not lyotropic. Thus, the organic material may not be a phospholipid.” Ex. 1001, 8:27–28 (emphasis added). One of ordinary skill would understand from this that the organic material “may not be” a phospholipid if the organic material is not lyotropic. It follows that if the organic material is lyotropic, then the organic material may be a phospholipid. Reading the statement “[t]he organic material may not be . . . a phospholipid” (id. at 8:59–63) in light of the earlier stated possibility that the organic material may be a phospholipid if the organic material is lyotropic, one of ordinary skill in the art would interpret “may not be” as excluding phospholipids under some conditions, not under all conditions. Taking the Specification’s discussion about phospholipids as exemplifying the permissive nature of the word “may,” we are unpersuaded that in stating that “[t]he organic material may not be [PMMA], a polyvinylidene difluoride-containing polymer, such as [PVDF] or PVDF- TrFE-CTFE, or a phospholipid, such as [DHPE]’” (Ex. 1001, 8:59–63), the specification “contains a clear and unmistakable disavowal of the compounds PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE” and “disclaims the listed compounds” from the “organic material” of the claims under all conditions, as Patent Owner argues. Prelim. Resp. 6–7. Moreover, the claims themselves limit the “organic material” only to the extent that it is “barocaloric cooling or heating agent” and can perform in the manner claimed. See Ex. 1001, claim 1, supra. As broadly worded, the claims do not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE per se from the group of organic materials employed by the claimed method. Adopting Patent Owner’s construction would impermissibly import a limitation (i.e., not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE) into the claims. For the reasons stated, at this stage of the proceeding, we agree with Petitioner’s broad construction of “organic material.” We do not adopt Patent Owner’s proposed construction whereby PMMA, PVDF, PVDF- TrFE-CTFE, and DHPE are excluded from the scope of the claim term “organic material.” The parties are invited to address this issue further during trial, if desired. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner shows that (a) Mañosa (i.e., inorganic compounds such as Ni-Mn-In, Gd5Si2Ge2, and La-Fe-Co-Si) and (b) Patel (i.e., PVDF-TrFE- CTFE) teach materials exhibiting inverse BCEs. Pet. 59 (citing, inter alia, Ex. 1007, pages 4–8; Ex. 1009, 1, 4–5; Ex. 1004 ¶ 108). In our view, at this stage, Petitioner sufficiently shows (via the five reasons listed supra) why it would have been obvious to one of ordinary skill in the art to substitute the barocaloric cooling or heating agent of Patel for that taught in Mañosa, thereby reaching the claimed method with a reasonable expectation of success. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S., 2007) (“The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”)” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,230,656 - Kinderfarms LLC v. Genexa Inc.All claims unpatentablePTAB · Mar 24, 2025 · PGR2023-00051 · APJ Deborah Katz · PGR · Final written decision
Claims 1–24 are unpatentable as obvious under § 103 over FR458 with the ’4666 patent and WO133; claims 1–17 are also unpatentable over WO742 with the ’4666 patent and WO133.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ positions about the level of ordinary skill in the art are similar. (See Pet., 13–14; see PO Resp., 10–12.) In light of the parties’ arguments and evidence, we determine that the ordinarily skilled artisan would have had a bachelor of science degree in a relevant life sciences field, such as chemistry, biochemistry, or pharmacy, with at least three to four years of work or laboratory experience in pharmaceutical formulations and would have had access to team members having experience in pharmaceutical formulation and pharmaceutical regulatory approvals. (See Pet. 13–14; see PO Resp. 10–12; see Dec. 6–7.) Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’795 patent and the asserted prior art. The distinction between the parties’ proposals is minimal and would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Although Petitioner puts forth constructions for terms in the claims of the ’795 patent, Patent Owner argues that we need not expressly construe any terms to resolve the controversy between the parties. (See Pet. 14–19; see PO Resp. 12.) Except as indicated below, we agree that express construction of the claim terms is not required because the parties do not materially dispute the meanings of the 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))). Limitation (c) of claim 1 recites “syrup formulation” once and then “syrup” by itself twice. The parties agree that two recitations of “syrup” by itself mean and are synonymous with “syrup formulation.” (See Tr. 15:16– 19 (counsel for Petitioner: “[T]he term, syrup, by itself, means the formulation. And for that reason, we--it’s our position that it’s the syrup formulation that has the specific viscosity requirements as well as the other features that we discussed.”); 31:17–20 (counsel for Patent Owner: “But those wherein clauses, what it’s referring to, the syrup formulation and the syrup -- it was all to a complete to a final formulation, right, it’s not just the agave syrup. Everybody here recognizes and understands that from that perspective.”).) Thus, the parties agree that the “viscosity of less than 1500 centipoise at about 22 degrees” limits the final “pharmaceutical syrup formulation for oral administration,” not the “agave syrup” limitation in limitation (b) of claim 1.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner argues further that Dr. Crowley testifies that, “[g]enerally, suspensions having a viscosity in the range of 20 to 150 cP are considered readily pourable,” but that this range is well below the viscosity range of 200–900 cP taught in WO133 and the preferred viscosity range of 1000–3000 cP taught in the ’4666 patent. (See PO Resp. 45 (quoting Ex. 1003 ¶ 59).) Dr. Crowley testifies that “increasing the viscosity of a suspension formulation has been shown to impair the dissolution characteristics of immediate release acetaminophen” and that, “[w]ith respect to suspensions for oral administration, having a higher viscosity is generally not desirable.” (Ex. 1003 ¶ 59.) According to Patent Owner, this is a “teaching away” because Petitioner’s own expert testimony demonstrates a motivation not to combine the acetaminophen formulation of FR458- Example 1 with the 1000-3000 cP range of the ’4666 patent and the 200-900 cP range of WO133 since by his own admission doing so would yield bad results (i.e., impairing the dissolution characteristics of the acetaminophen) and generally undesirable higher viscosity. (PO Resp. 46 (citing Berkland Decl., Ex. 2009 ¶ 148).) Dr. Crowley’s cited testimony, however, is about general characteristics of suspensions for oral administration, whereas the WO133 refers specifically to sweetened analgesic formulations. (See Ex. 1006, 8:1– 3 (“The viscosity of the acetaminophen composition generally ranges from about 200–900 centipoise, preferably from about 300–700 centipoise.”); see Pet. Reply 8–9.) As Petitioner notes, Dr. Crowley also testifies that the viscosity of 29 commercially available, pediatric liquid oral antibiotic formulations were measured and determined to range from 20 to 1,780 cP” and that “[t]he viscosity of Children’s Tylenol has been reported to be less than 1,000 centipoise at shear rates between 0.05 and 0.2 reciprocal seconds.” (Ex. 1005 ¶ 58.) Thus, we are not persuaded that Dr. Crowley’s testimony contradicts the teachings regarding viscosity of analgesic formulations in the cited prior art.” slip op. at 23
Patent outcomesUS 11,617,795 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 11,617,795 - Motorola Solutions, Inc. v. Sta Group LLCAll claims unpatentablePTAB · Mar 17, 2025 · IPR2023-01295 · APJ Kevin C Trock · IPR · Final written decision
Claims 1–5, 7–19, and 21–24 are unpatentable as obvious over Shaffer and Saylor; the Board did not reach the alternative Gogic and Opitz ground.
RulingsFinal written decision- Skill levelOther
“1. Shaffer (Ex. 1004) Shaffer is a U.S. Patent Application Publication published on” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“1. Rationale to Combine Shaffer and Saylor Petitioner contends that a person of ordinary skill in the art “would” slip op. at 23
- BurdenFwd all claims unpatentableUnpatentable
“For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1–5, 7–19, and 21–24 of U.S. Patent 8,994,830 B2 are unpatentable on the bases set forth in the following table. Claim(s)” slip op. at 86
Patent outcomesUS 8,994,830 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,994,830 - Motorola Solutions, Inc. v. Sta Group LLCAll claims unpatentablePTAB · Mar 14, 2025 · IPR2023-01294 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1, 2, 6–9, 11, 12, 15–17, and 20 as obvious over Kim; claims 3–5, 13, 14, 18, and 19 over Kim and Ishibashi; and claim 10 over Kim and Goss.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“patent “would have had a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 5; see also id. (“A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard.”). Patent Owner very similarly proposes that the skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two to three years [of] experience in designing or developing telecommunication systems.” PO Resp. 24–25 (citing Ex. 2005 ¶42). Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’664 patent and the asserted prior art. The distinction between the parties’ proposals is minimal and would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“16). We generally agree, with the one caveat acknowledged by counsel for Patent Owner during the hearing. The caveat is that, although step [a] must be performed before step [b], it is within the scope of claim 1 if step [a] continues to be performed even after step [b] begins. Tr. 25:25–26:3 (Mr. Engel: “Well, I think in practicality, there would always be monitoring because there’s multiple media streams. So, you could have multiple alerts come in and the system could decide which one is more important. So, I don’t think you stop monitoring per se.”). We agree that continued performance of step [a], even after step [b] begins, is within the scope of claim 1. Second, Patent Owner proposes that “endpoint” means “end-user device,” as agreed to in district court. PO Resp. 10 (citing Ex. 2004, 16). We adopt this construction. However, as will become evident below, this construction does little to address the actual dispute between the parties regarding application of “endpoint” to the prior art asserted in Ground 7 (Kim). Third, Patent Owner proposes that “media stream” means “audio or video or both, which may include associated data,” as adjudicated in district court. PO Resp. 11 (citing Ex. 2004, 42). We adopt this construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner argues that a person of ordinary skill in the art would have combined Kim and Ishibashi because the former teaches “that a goal of emergency warning broadcast systems is to ensure that the viewer receives the emergency warning information” and the latter teaches a means to achieving that goal. Pet. 80–81 (citing Ex. 1008, 3:13–19; Ex. 1002 ¶304; Ex. 1009 ¶¶5, 15, 17). More specifically, Petitioner argues that a person of ordinary skill in the art “would have been motivated to implement Ishibashi’s audio output-switchover circuit in Kim’s controller system . . . to ensure that an emergency warning broadcast is received by the viewer even in situations where a headphone jack is left plugged in but unattended (e.g., not being worn) by the viewer.” Pet. 81 (citing Ex. 1002 ¶305). Petitioner argues that the skilled artisan would have had a reasonable expectation of success in making such a combination and the result would have been predictable. Id. at 82 (citing Ex. 1002 ¶306). We are persuaded by Petitioner’s stated reasons for the combination as well as that there would have been a reasonable expectation of success in making the combination. Further, Patent Owner does not dispute these factual assertions underlying the obviousness analysis. PO Resp. 57.” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artUnpatentable
“2. Combination of Kim and Ishibashi Petitioner argues that both references are from the same field of endeavor as the ’664 patent, namely emergency communication systems. Pet. 80 (citing various portions of Exhibits 1001, 1008, and 1009). We are persuaded of this fact, which, in any event, Patent Owner does not dispute. See PO Resp. 57 (arguing against Ground 8 solely on the basis of its Ground 7 arguments). Petitioner argues that a person of ordinary skill in the art would have combined Kim and Ishibashi because the former teaches “that a goal of emergency warning broadcast systems is to ensure that the viewer receives the emergency warning information” and the latter teaches a means to achieving that goal. Pet. 80–81 (citing Ex. 1008, 3:13–19; Ex. 1002 ¶304; Ex. 1009 ¶¶5, 15, 17). More specifically, Petitioner argues that a person of ordinary skill in the art “would have been motivated to implement Ishibashi’s audio output-switchover circuit in Kim’s controller system . . . to ensure that an emergency warning broadcast is received by the viewer even in situations where a headphone jack is left plugged in but unattended (e.g., not being worn) by the viewer.” Pet. 81 (citing Ex. 1002 ¶305). Petitioner argues that the skilled artisan would have had a reasonable expectation of success in making such a combination and the result would have been predictable. Id. at 82 (citing Ex. 1002 ¶306). We are persuaded by Petitioner’s stated reasons for the combination as well as that there would have been a reasonable expectation of success in making the combination. Further, Patent Owner does not dispute these factual assertions underlying the obviousness analysis. PO Resp. 57.” slip op. at 29
Patent outcomesUS 8,831,664 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,831,664 - Duration Media LLC v. Rich Media Club LLCAll claims unpatentablePTAB · Mar 7, 2025 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Remand
On remand, the Board held claims 1–10 unpatentable as obvious over Krassner, Badros, and Harkins; it did not reach the alternative Badros and Harkins ground.
RulingsRemand decision- RemandOther
“On August 16, 2024, Petitioner filed a Request for Director Review of the Final Written Decision. Paper 73 (“Req.”). Patent Owner opposed the Request. Paper 77. On December 12, 2024, Director Vidal granted the Request and entered a Director Decision. Paper 78 (“Director Dec.”). The Director Decision states that “Petitioner persuasively shows that Badros discloses the viewability test.” Director Dec. 9. Accordingly, the Director Decision vacated the Previous FWD, and remanded back to us for further proceedings. Id. at 13. We have jurisdiction under 35 U.S.C. § 6 and pursuant to the Director’s Decision. For the reasons discussed below, we determine that Petitioner has met its burden to prove, by a preponderance of the evidence, that claims 1–10 of the ’329 patent are unpatentable.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience in computer programming with at least one year of said experience being in the field of internet advertising.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artReference not prior artDecided for patent owner
“Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“subject matter [sought to be patented] pertains,’ this determination is frequently couched in terms of whether the art is analogous or not, i.e., whether the art is ‘too remote to be treated as prior art.’” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). “Whether a reference in the prior art is ‘analogous’ is a determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 658–59.” slip op. at 19
Patent outcomesUS 11,443,329 unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,443,329 - Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentablePTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision
Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35
Patent outcomesUS 7,324,802 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,324,802 - Novartis Pharmaceuticals Corporation v. Regents Of The University Of Michigan And University Of South FloridaAll claims unpatentablePTAB · Mar 5, 2025 · IPR2023-01346 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 10, 11, and 18 are unpatentable because Hickey anticipates each claim; the Board did not reach the alternative Almarsson grounds.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“For a functionally-defined genus, “the written description requirement [can be met] when the art has established a correlation between structure and function.” Ariad, 598 F.3d at 1350. Here, the challenge claims recite two types of functional limitations. First, independent claim 10 requires the coformer to have a second chemical functionality, which is defined as being complementary to the first chemical functionality via non-covalent hydrogen bonding. That is, the co-former’s second chemical functionality must be complementary to either a carboxamide, carbonyl, or amine functionality of an API via non-covalent hydrogen bonding. Second, the non-covalent hydrogen bonding between the first chemical functionality of the API and the second chemical functionality of the co-former must result in the formation of supramolecular synthons.” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“We therefore find that the parent ’956 application lacks written description support for the challenged claims, and thus, on the record before us, we determine that the effective filing date of the challenged claims is February 13, 2014, the filing date the ’344 patent. Thus, the references relied upon by Petitioner (Hickey, Almarsson, and Martindale) qualify as prior art to the ’344 patent. Pet. 33, 45.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“III. ANALYSIS A. Principles of Law To anticipate a claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). Accordingly, “‘the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)).” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7–8. “Patent Owners do not contest the level of ordinary skill in the art set forth in the Petition.” PO Resp. 11. Because Petitioner’s unopposed definition is consistent with the ’344 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
Patent outcomesUS 10,633,344 unpatentable§ 102 anticipation§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,633,344 - Parse Biosciences, Inc. v. 10x Genomics, Inc.All claims unpatentablePTAB · Feb 3, 2025 · IPR2023-00958 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–28 are unpatentable as obvious: claims 1–12 and 19–28 over Linnarsson, McCloskey, and ordinary skill; claims 13–18 over those references plus McCloskey II.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“Clearly, the second Hall-Ellis declaration is offered to prove that McCloskey is a prior art printed publication. See, e.g., Ex. 1085 ¶50 (“In view of the foregoing, it is my opinion that [McCloskey] was publicly available no later than [January 3, 2008].”). Thus, the second Hall-Ellis declaration should have been served within ten business days of Patent Owner’s February 15, 2024, objection to the admissibility of McCloskey. See 37 C.F.R. § 42.64(b)(2) (“The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.”). In its Opposition to the Motion to Exclude, Petitioner argues that, under Hulu LLC v. Sound View Innovations, LLC, No. IPR2018-01039, Paper 29 (Dec. 20, 2019) (precedential), it was allowed to wait until its Reply to file the second Hall-Ellis declaration. Paper 37, 2. The Board in Hulu does state that, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Hulu, at 15 (37 C.F.R. § 42.23). However, the Board’s statement was referring to the scope of permissible reply arguments under 37 C.F.R. § 42.23(b). See Hulu at 14 (quoting 37 C.F.R. § 42.23(b)’s requirement that “[a] reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response”). The Board in Hulu does not purport to interpret 37 C.F.R. § 42.64 or even discuss supplemental evidence. Petitioner clearly missed the deadline imposed by 37 C.F.R. § 42.64(b)(2), which was triggered by Patent Owner’s February 15, 2024, objection to McCloskey (i.e., Ex. 1004). Patent Owner’s Motion to Exclude is granted with respect to the second Hall-Ellis declaration (i.e., Ex. 1085).” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Patent Owner is correct that, under Sanofi-Aventis, a petitioner bears the burden of persuasion to establish that an asserted prior art reference is analogous art to the claimed invention. See Sanofi-Aventis, 66 F.4th at 1377 (“We agree with [the patent owner] that [the petitioner] did not carry its burden to argue that de Gennes is analogous to the [challenged] patent.”); id. (“In evaluating whether a reference is analogous, we have consistently held that a patent challenger must compare the reference to the challenged patent.”); id. at 1378–79 (“We have routinely held that the petitioner has the burden of proving unpatentability.”). However, as we noted when instituting this proceeding, “Sanofi-Aventis further held: ‘A petitioner is not required to anticipate and raise analogous art arguments in its petition; instead a petitioner can use its reply to “respond to arguments raised in the corresponding opposition, patent owner preliminary response, patent owner response, or decision on institution.”’” Dec. on Reh’g 16 (quoting Sanofi- Aventis, 66 F.4th at 1379 (quoting 37 C.F.R. § 42.23)).” slip op. at 15
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Clearly, the second Hall-Ellis declaration is offered to prove that McCloskey is a prior art printed publication. See, e.g., Ex. 1085 ¶50 (“In view of the foregoing, it is my opinion that [McCloskey] was publicly available no later than [January 3, 2008].”). Thus, the second Hall-Ellis declaration should have been served within ten business days of Patent Owner’s February 15, 2024, objection to the admissibility of McCloskey. See 37 C.F.R. § 42.64(b)(2) (“The party relying on evidence to which an objection is timely served may respond to the objection by serving supplemental evidence within ten business days of service of the objection.”). In its Opposition to the Motion to Exclude, Petitioner argues that, under Hulu LLC v. Sound View Innovations, LLC, No. IPR2018-01039, Paper 29 (Dec. 20, 2019) (precedential), it was allowed to wait until its Reply to file the second Hall-Ellis declaration. Paper 37, 2. The Board in Hulu does state that, “if the patent owner challenges a reference’s status as a printed publication, a petitioner may submit a supporting declaration with its reply to further support its argument that a reference qualifies as a printed publication.” Hulu, at 15 (37 C.F.R. § 42.23). However, the Board’s statement was referring to the scope of permissible reply arguments under 37 C.F.R. § 42.23(b). See Hulu at 14 (quoting 37 C.F.R. § 42.23(b)’s requirement that “[a] reply may only respond to arguments raised in the corresponding opposition, patent owner preliminary response, or patent owner response”). The Board in Hulu does not purport to interpret 37 C.F.R. § 42.64 or even discuss supplemental evidence. Petitioner clearly missed the deadline imposed by 37 C.F.R. § 42.64(b)(2), which was triggered by Patent Owner’s February 15, 2024, objection to McCloskey (i.e., Ex. 1004). Patent Owner’s Motion to Exclude is granted with respect to the second Hall-Ellis declaration (i.e., Ex. 1085). Despite the exclusion of the second Hall-Ellis declaration, there is ample evidence in the record demonstrating that McCloskey is a prior art printed publication. McCloskey itself states: “Received: 31 January 2007 / Accepted: 29 May 2007 / Published online: 23 October 2007.” Ex. 1004, 1. McCloskey additionally states that it was published in a 2007 print issue of “Biochem Genet,” with Petitioner adding that the full name of the journal is BIOCHEMICAL GENETICS and that McCloskey was published in a December 2007 volume of the journal. Id.; Pet. 22. McCloskey also includes a copyright notice by “Springer Science+Business Media, LLC” with a date of 2007. Ex. 1004, 1. Patent Owner argues that this is unreliable hearsay that should be excluded. PO Mot. To Exclude 4 (citing Neste Oil Oyj v. REG Synthetic Fuels, LLC, No. IPR2013-00578, Paper 53 at 5–7 (Mar. 12, 2015); Standard Innovation Corp. v. Lelo, Inc., No. IPR2014-00148, Paper 429 at 13–18, 21–22 (Apr. 23, 2015)). We are not persuaded by Patent Owner’s argument or its reliance on these cases. The facts before us are different.” slip op. at 18
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not directly dispute Petitioner’s proposal but does offer its own proposal. PO Resp. 21. Patent Owner proposes that the skilled artisan “would have had a Ph.D. in molecular biology, molecular genetics, biochemistry, physics, mechanical engineering, or a related discipline, with 7 Exhibit 1002 is a declaration by Petitioner’s witness, Gregory Cooper, Ph.D. two years of academic, research, or industry experience in the field of genomic or transcriptome sequencing.” Id. (citing Ex. 2013 ¶¶25–268). Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’013 patent and the asserted prior art. The distinction between the parties’ proposals would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 9
Patent outcomesUS 10,697,013 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,697,013 - Samsung Electronics Co., Ltd v. Mojo Mobility Inc.All claims unpatentablePTAB · Jan 2, 2025 · IPR2023-01090 · APJ Kara L Szpondowski · IPR · Final written decision
Claims 8, 13, and 15–18 are unpatentable under § 103 over the Fells-based combinations set out in the grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“at least a master’s degree in electrical engineering, or a similar discipline, and two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems.” Pet. 4 (citing Ex. 1002 ¶¶ 20–21). Petitioner further asserts that “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner has not proposed a level of ordinary skill in the art. Because nothing in the record persuades us that our preliminary finding in the Institution Decision (Dec. 13) adopting Petitioner’s proposal was incorrect, we maintain our adoption of Petitioner’s proposed level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“charger surface, to inductively transfer power to the receiver [of the first mobile device],” as recited in limitation 1(k). Pet. 5 (bolding omitted). Petitioner contends this term should be construed as a means-plus-function term, and that the underlined portion identified above identifies the function. Id. at 5–6. Petitioner contends that the corresponding structure is described in the Specification and in dependent claims 24 and 25. Id. at 6 (citing Ex. 1001, 14:35–38 (“[T]he charger and or receiver can include means to provide more precise alignment between the charger and receiver coils and antennas. These can include visual, physical, or magnetic means to assist the user in alignment of parts.”); 25:56–63 (claim 24: “the means for position includes one or more magnets to position the receiver in the power transfer position”, claim 25: “means for positioning includes one or more members of a group consistent of visual, physical, or magnetic means to assist in the positioning the receiver in the power transfer position.”)). Patent Owner does not contest Petitioner’s position on this term. See PO Resp. Our Decision does not require an express construction of any particular 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 15
- BurdenFwd all claims unpatentableUnpatentable
“Final Written Decision under 35 U.S.C. § 318(a) as to the patentability of the claims on which we instituted trial. Petitioner has the burden of proving unpatentability of a claim by a preponderance of the evidence. 35 U.S.C. § 316(e). As stated above, Patent Owner does not contest Petitioner’s contentions. We have reviewed Petitioner’s contentions and conclude that they show, by a preponderance of the evidence, that claims 8, 13, and 15–18 of the ’349 patent are unpatentable.” slip op. at 3
- Expert testimonyOther
“[T]he compelling merits standard is a higher standard than the standard for institution set by statute.” Commscope at 3 (referring to 35 U.S.C. § 314(a)). “[W]hen determining whether there is a compelling unpatentability challenge, the Board evaluates whether the Petition presents challenges in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. (emphasis added). This is the standard I previously applied to Petitioner’s Ground 1 challenge to claim 17. Inst. Dec. (Fitzpatrick, J., concurring at 2). During trial, all of Petitioner’s challenges went unrebutted, including Petitioner’s Ground 1 challenge to claim 17. See PO Resp. 1 (Patent Owner “elects to not proffer additional argument on the papers or through any hearings that may occur in this proceeding.”). Thus, because I previously determined Petitioner’s Ground 1 challenge to claim 17 presented compelling merits and because Patent Owner did not rebut that challenge during trial, I conclude that Petitioner has necessarily met its burden of proving claim 17 unpatentable by a preponderance of the evidence. slip op. at 46
Patent outcomesUS 11,292,349 unpatentableClaim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,292,349
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.