- PTAB · Feb 25, 2025 · IPR2024-01294 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted IPR on claims 1, 12, 25, and 26 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Zwinkels.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion Regarding Claim 1 Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1 as unpatentable under 35 U.S.C. § 102 as anticipated by Zwinkels. D. Remaining Claims of Ground 1 and Grounds 2 and 3 The threshold for institution is a reasonable likelihood of Petitioner prevailing as to any single claim. 35 U.S.C. § 314(a). “Once that single claim threshold is satisfied, it doesn’t matter whether the [P]etitioner is likely to prevail on any additional claims.” SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018). Thus, because we have decided to grant review of claim 1, we do the same for all claims challenged and all grounds raised. Id.; see also 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.”). III. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in establishing that at least one of the challenged claims is unpatentable. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is granted and inter partes review is hereby instituted as to claims 1, 12, 25, and 26 of U.S. Patent No. 10,434,394 B2 on the grounds presented; and” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“to move forwardly and rearwardly relative to the frame. Pet. 33–38. For example, paragraph 20, as cited by Petitioner, discloses that the rollers “are movably suspended in the frame in vertical direction, wherein the suspension of said roll or rollers is arranged to convert relative horizontal movements of the roll or rollers into vertical movements thereby compensating and/or attenuating said horizontal movements by gravity.” Ex. 1004 ¶20 (cited at Pet. 34). Further, Zwinkels attributes the forward and rearward movement to the use of the bicycle by the person exercising on it. See Ex. 1004 ¶27 (describing the “horizontal movements induced by the accelerations and decelerations of the training cyclist”) (cited at Pet. 35). Petitioner also cites multiple figures that illustrate forward and rearward movement. Pet. 35–37 (reproducing Ex. 1004, Figs. 3, 5, and 6). There is a reasonable likelihood Zwinkels teaches “wherein the movable interconnection of the upper member with the lower member is configured to enable the upper member to move forwardly and rearwardly in the fore-aft direction relative to the lower member in response to fore-aft forces that are transferred to the upper member from the item of exercise equipment in response to use of the item of exercise equipment,” as recited in claim 1. e) “wherein the movable interconnection of the upper member with the lower member is further configured to provide upward and downward movement of the upper member relative to the support surface during movement of the upper member forwardly and rearwardly in the fore-aft direction relative to the lower member.” Petitioner argues that Zwinkels’s pendulum arms 6 enable the rollers to move upward and downward relative to the frame while the rollers are also moving forwardly and rearwardly relative to the frame. Pet. 39–42. For example, paragraph 24, as cited by Petitioner, discloses that the pendulum arms connecting the rollers at fixed pivoting points on the frame “provides an easy and effective solution for absorbing and attenuating horizontal movements by converting these horizontal movements to vertical movements.” Ex. 1004 ¶24 (cited at Pet. 39). Petitioner also reproduces Figures 5 and 6, which illustrate the displacement of rollers in both the vertical and horizontal directions. Pet. 40 (citing Ex. 1004, Figs. 5–6). Figure 5 is reproduced below. Figure 5, reproduced above, “shows the embodiment in which there are two rollers 4 for the bicycle back wheel.” Ex. 1004 ¶34. Figure 5 shows two configurations of the embodiment on left and right sides. Ex. 1004 ¶34, Fig. 5. The configuration “at the left of FIG. 5 shows the pendulum arms 6 in a resting position, whereas the [configuration] on the right shows the pendulum arms 6 after they have due to the connecting link 7 concertedly moved to the right due to a force FH, causing that the rollers 4 have moved vertically upwards.” Ex. 1004 ¶34. There is a reasonable likelihood Zwinkels teaches “wherein the movable interconnection of the upper member with the lower member is further configured to provide upward and downward movement of the upper member relative to the support surface during movement of the upper member forwardly and rearwardly in the fore-aft direction relative to the lower member,” as recited in claim 1. f) “wherein the upper member is oriented parallel to the support surface plane during movement of the upper member relative to the lower member in the fore-aft direction and during upward and downward movement of the upper member relative to the support surface” Petitioner argues that Zwinkels’s rollers are oriented parallel to the ground or floor at all times. Pet. 42–44. Petitioner argues that this is clearly shown in Figure 5, which we reproduced in the immediate section above. See Pet. 43 (citing and annotating Ex. 1004, Fig. 5). We agree. There is a reasonable likelihood Zwinkels teaches “wherein the upper member is oriented parallel to the support surface plane during movement of the upper member relative to the lower member in the fore-aft direction and during upward and downward movement of the upper member relative to the support surface,” as recited in claim 1. 3. Conclusion Regarding Claim 1 Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1 as unpatentable under 35 U.S.C. § 102 as anticipated by Zwinkels.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“1. Zwinkels (Ex. 1004) Zwinkels was filed November 4, 2010, and published June 9, 2011. Ex. 1004, codes (22), (43). Petitioner argues that, based on its filing date, “Zwinkels is thus prior art under at least 35 U.S.C. § 102(a)(2).” Pet. 15. On the record presented, we agree. In addition, the current record supports that, based on its publication date, Zwinkels is prior art also under 35 U.S.C. § 102(a)(1).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose an express construction of any term of claim 1. See Pet. 14 (“Petitioner submits that for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.”). At this stage of the proceeding, we discern no need to provide an express construction of any term of any claim.” slip op. at 8
Claim construction§ 102 anticipationPatents in suitUS 10,434,394 - Menard, Inc. v. Signify Holdings B.V.InstitutedPTAB · Feb 14, 2025 · IPR2024-01469 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned challenges and granted Menard’s motion to join the Luminex IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Here, Petitioner presents substantively identical challenges to claims 1–20 in the ’336 patent based on the same prior art, the same evidence, and the same unpatentability theories as Luminex presents in the Luminex IPR. Compare Pet. 15–89, with IPR2024-00101, Paper 1 (“Luminex Pet.”) at 15–89. According to Petitioner, the Petition differs from Luminex’s petition only because of different party names and updated sections concerning standing, related matters, real parties in interest, and counsel. Mot. 4. Because Petitioner presents substantively identical challenges to claims 1–20 in the ’336 patent based on the same prior art, the same evidence, and the same unpatentability theories as Luminex presents in the Luminex IPR, Petitioner satisfies the “reasonable likelihood” standard for instituting trial for the same reasons Luminex satisfied the “reasonable likelihood” standard for instituting trial. See Luminex Pet. 15–89; Luminex Inst. Dec. 19–64; Pet. 15–89.” slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Consistent with § 315(b) and § 315(c), the Board’s rules provide that “[a]ny request for joinder must be filed, as a motion under § 42.22, no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b). The Board’s rules also provide that § 42.101(b)’s one-year time bar “shall not apply when the petition is accompanied by a request for joinder.” Id. We instituted an inter partes review in the Luminex IPR on September 9, 2024. Luminex Inst. Dec. 1. On September 23, 2024, Petitioner filed the Petition and the Motion for Joinder. Pet. 91; Mot. 7. Under § 42.122(b), Petitioner timely filed the Petition and the Motion for Joinder. See 37 C.F.R. § 42.122(b).” slip op. at 15
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“If joined to the Luminex IPR, Petitioner agrees to take an “understudy” role and only “substantively participate” if Luminex is terminated from the Luminex IPR. Mot. 1, 5–6. Further Petitioner agrees that the following conditions will apply to it in its “understudy” role “so long as Luminex remains an active party”: (1) “all filings by [Petitioner] in the joined proceeding be consolidated with the filings of Luminex, unless a filing solely concerns issues that do not involve Luminex”; (2) Petitioner “shall not be permitted to raise any new grounds not instituted by the Board in the Luminex IPR, or introduce any argument not already introduced by Luminex”; and (3) “with regard to taking of testimony, [Petitioner] will abide by 37 C.F.R. § 42.53 or any agreement between the Patent Owner and Luminex.”” slip op. at 17
- PTAB / AIA Trials › §315(e) estoppelEstoppel appliesOther
“5. CONCLUSION For the reasons discussed above, we determine that it is appropriate under the circumstances here to join Petitioner as a party to the Luminex IPR. See §§ III.D.2–III.D.4. The estoppel provisions of 35 U.S.C. § 315(e) will apply to Petitioner.” slip op. at 18
NonePatents in suitUS 10,299,336 - PTAB · Feb 6, 2025 · IPR2024-01212 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR of claims 1–27 on all petitioned grounds after finding a reasonable likelihood that claim 1 would be obvious over Racz, Fitz, and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314. An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . 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). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a). After considering the evidence and arguments presented in the Petition, we determine that Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims of the ’664 patent is unpatentable. Accordingly, we institute an inter partes review as to all the challenged claims of the ’664 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, the relevant technical field is “‘thermal ablation systems and methods,’ which includes ‘methods for performing Radio Frequency (RF) neurotomy.”’ Pet. 11 (citing Ex. 1003, 1:24–27). Relying on the testimony of Dr. Tucker, Petitioner contends that the ordinarily skilled artisan in this field would have had at least (i) a bachelor’s degree in biomedical engineering, or a related field, such as mechanical engineering, biomechanical engineering, or bioengineering, who also has at least 3 years of experience with thermal ablation system and methods; or (ii) an advanced degree in the same areas of academic study with at least 1 years of experience with thermal ablation systems and methods. Id. (citing Ex. 1034 ¶ 105) (paragraphing added). Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears consistent with the prior art and is supported by the presently unopposed testimony of Dr. Tucker. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself). We note, however, that Petitioner’s open-ended language “at least” expands the ranges of education and experience indefinitely with no upper bound, thereby encompassing those of extraordinary skill. Therefore, we do not adopt this aspect of Petitioner’s formulation. B.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Claim Construction The Board interprets claim terms in an inter partes review using the same claim construction standard that is used to construe claims in a civil action in federal district court. See 37 C.F.R. § 42.100(b)). In construing claims, district courts give claims 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.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). With respect to the challenged claims, Petitioner contends that no claim term requires express construction. Pet. 11 (citing Ex. 1034 ¶ 106 (Dr. Tucker’s testimony that “the terms in the Challenged Claims would be understood by a POSA to have their plain and ordinary meaning and do not require a special construction or definition”)). On the presents record, we agree with Petitioner that no term requires express construction. C.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“through [1e]. Pet. 28–30. Petitioner further relies on “Racz as modified in view of Fitz and Lee,” with respect to elements [1e] through [1h]. See generally, id. at 30–47. Supported by the testimony of Dr. Tucker, Petitioner contends that one of ordinary skill in the art would have been motivated to combine the teachings of Racz, Fitz, and Lee with a reasonable expectation of success of arriving at the claimed invention. Id. at 1–6, 21–27; Ex. 1034 ¶¶ 132–149. In short, Petitioner contends that “[m]ost of the recited RF needle features—including an elongate cannula, a removable RF probe, a conductive tip, and a monopolar configuration—are conventional features disclosed in . . . Racz,” whereas Fitz discloses that a single-tip device, such as disclosed in Racz, “would produce limited ablation volumes and would have motivated a POSA to solve this problem by adding deployable filaments,” as recited in claim elements [1e] and [1f]. Id. at 4–5, 21–22. In addition to its reliance on the multiple electrode tips disclosed in Fitz, Petitioner contends that Lee would have “motivate[ed] a POSA to implement deployable filaments on the tip of Racz’s device using channels within the cannula,” and “also shows how the filaments can extend outwardly around the needle’s tip to advantageously expand and control the ablation volume.” Id. at 5–6. Accordingly, Petitioner contends, one of ordinary skill in the art “would have found it obvious to modify Racz’s device to include the well-known deployable filaments described in Fitz and Lee,” and would have implemented this combination as “a matter of routine engineering.” Id. at 6, 27.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,925,664 - PTAB · Feb 6, 2025 · IPR2024-01211 · APJ John G New · IPR · Institution
The Board instituted IPR on claims 18–47 and 53–74 and all petition grounds, finding a reasonable likelihood that claims 18–25, 27, and 29–33 are obvious over Racz, Fitz, and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314. An inter partes review may not be instituted unless “the information presented in the petition … and any response … 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). Further, a decision to institute may not do so on fewer than all of the claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yesor-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears to be consistent with the level of skill of the prior art and is supported by the presently unopposed testimony of Dr. Tucker. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself). We note, however, that the open-ended language ‘at least’ expands the ranges of education and experience indefinitely with no upper bound, thereby also encompassing those of extraordinary skill as well. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to the challenged claims, Petitioner contends that no claim term requires express construction. Pet. 11 (citing Ex. 1033 ¶ 120 (Dr. Tucker’s testimony that “the terms in the Challenged Claims would be understood by a POSA to have their plain and ordinary meaning and do not require a special construction or definition”)). We agree with Petitioner that, on the record presently before us, no claim term requires express construction.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that, in view of these teachings in Racz and Lee, a skilled artisan would have found implementing Lee’s perimeter filaments (22/1622) on Racz’s distal tip (14/38) to be a routine engineering task. Pet. 39 (citing Ex. 1033 ¶ 179). According to Petitioner, a person of ordinary skill in the arts would have recognized that it would be appropriate to implement Lee’s perimeter filaments (22/1622) without including Lee’s central filament. Id. Petitioner asserts that Lee discloses that any number and arrangement of filaments may be implemented to provide a desired ablation volume. Id. at 38 (citing Ex. 1010 ¶¶ 103, 105, 106). Additionally, Petitioner argues, because Racz’s tip (14/38) is already active, a skilled artisan would have recognized that Lee’s central filament would not be necessary. Id. (citing Ex. 1009, col. 3, ll. 60–63, col. 4, ll. 18–23; Ex. 1033 ¶ 179). Petitioner therefore argues that a person of ordinary skill in the art a person of ordinary skill in the art would have been motivated to implement Lee’s perimeter deployable filaments (22/1622) on the distal tip (14/38) of Racz’s cannula (10/33) for the purpose of expanding and controlling the energy coverage area of Racz’s device. Pet. 40. Specifically, Petitioner asserts that a skilled artisan would have been motivated to implement Lee’s perimeter filaments (22/1622) around Racz’s tip (14/38) to provide a desired ablation volume (e.g., in a full or partial “cone” shape) and omit Lee’s central filament. Pet. 38 (citing Ex. 1033 ¶¶ 179, 73–75, 79–83). Petitioner contends that, as both Lee and Fitz confirm, this would improve Racz’s device by providing an expanded and controlled energy coverage area. Id. (citing Ex. 1011 ¶¶ 9–10, Abstr.; Ex. 1010 ¶¶ 12, 84, 123–131; Ex. 1033 ¶ 179). Petitioner argues further that, in implementing Lee’s perimeter filaments (22/1622) on Racz’s distal tip (14/38), a person of ordinary skill in the art would have found it obvious to modify Racz’s tip (14/38) to include internal deflection surfaces (12/1612) (e.g., channels and ramps as disclosed in Lee) to guide the perimeter filaments (22/1622) outwardly around Racz’s tip (14/38). Pet. 41 (citing Ex. 1010 ¶¶ 16, 18, 92, 102, claims 8, 10; Ex. 1033 ¶ 180). Petitioner asserts that it would have been obvious to provide openings in Racz’s distal tip (14/38) (e.g., in communication the internal deflection surfaces as disclosed in Lee) such that Lee’s perimeter filaments (22/1622) can, when deployed, exit Racz’s distal tip (14/38). Id. (citing Ex. 1010 ¶ 92, 102; Ex. 1033 ¶ 180). Furthermore, argues Petitioner, and to preserve the functionality of Racz’s removable electrical probe (22/52) and active tip (14/38) (and consistent with Lee’s teachings) a skilled artisan would have arranged the perimeter filaments, channels, and ramps around the internal perimeter of Racz’s cannula (10/33). Pet. 41 (citing Ex. 1010 ¶¶ 91, 92, 98, 102; Ex. 1033 ¶ 181). Petitioner recapitulates that Racz’s probe (22/52) is configured to extend the full length of the cannula’s shaft (12/34) to supply RF energy to the tip (14/38) and measure tissue temperature. Pet. 42. According to Petitioner, by omitting Lee’s central filament and arranging the perimeter filaments, channels, and ramps around the inner perimeter of Racz’s cannula (10/33), a skilled artisan could have implemented Lee’s perimeter filaments (22/1622) without obstructing Racz’s cannula (10/33). Id. at 40. Petitioner contends that this modification would preserve the functionality of Racz’s electrical probe (22/52), which is needed to transmit RF energy. Id. (citing Ex. 1033 ¶ 181–182).” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,736,688 - PTAB · Feb 6, 2025 · IPR2024-01210 · APJ John G New · IPR · Institution
The Board instituted IPR on claims 1–17 and 48–52 on all asserted grounds, finding a reasonable likelihood that at least one claim was obvious over Racz, Fitz, and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 314. An inter partes review may not be instituted unless “the information presented in the petition … and any response … 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). Further, a decision to institute may not do so on fewer than all of the claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yesor-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears to be consistent with the level of skill of the prior art and is supported by the presently unopposed testimony of Dr. Tucker. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself). We note, however, that the open-ended language ‘at least’ expands the ranges of education and experience indefinitely with no upper bound, thereby also encompassing those of extraordinary skill as well. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to the challenged claims, Petitioner contends that no claim term requires express construction. Pet. 11 (citing Ex. 1032 ¶ 120 (Dr. Tucker’s testimony that “the terms in the Challenged Claims would be understood by a POSA to have their plain and ordinary meaning and do not require a special construction or definition”)). We agree with Petitioner that, on the record presently before us, no claim term requires express construction.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“person of ordinary skill in the art would have been motivated to implement Lee’s perimeter deployable filaments (22/1622) on the distal tip (14/38) of Racz’s cannula (10/33) for the purpose of expanding and controlling the energy coverage area of Racz’s device. Pet. 35. Specifically, Petitioner asserts that a skilled artisan would have been motivated to implement Lee’s perimeter filaments (22/1622) around Racz’s tip (14/38) to provide a desired ablation volume (e.g., in a full or partial “cone” shape) and omit Lee’s central filament. Pet. 38 (citing Ex. 1032 ¶¶ 179, 73–75, 79–83). Petitioner contends that, as both Lee and Fitz confirm, this would improve Racz’s device by providing an expanded and controlled energy coverage area. Id. (citing Ex. 1011 ¶¶ 9–10, Abstr.; Ex. 1010 ¶¶ 12, 84, 123–131; Ex. 1032 ¶ 179). Petitioner argues further that, in implementing Lee’s perimeter filaments (22/1622) on Racz’s distal tip (14/38), a person of ordinary skill in the art would have found it obvious to modify Racz’s tip (14/38) to include internal deflection surfaces (12/1612) (e.g., channels and ramps as disclosed in Lee) to guide the perimeter filaments (22/1622) outwardly around Racz’s tip (14/38). Pet. 39 (citing Ex. 1010 ¶¶ 16, 18, 92, 102, claims 8, 10; Ex. 1032 ¶ 180). Petitioner asserts that it would have been obvious to provide openings in Racz’s distal tip (14/38) (e.g., in communication the internal deflection surfaces as disclosed in Lee) such that Lee’s perimeter filaments (22/1622) can, when deployed, exit Racz’s distal tip (14/38). Id. (citing Ex. 1010 ¶ 92, 102; Ex. 1032 ¶ 180).” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,736,688 - PTAB · Feb 6, 2025 · IPR2024-01209 · APJ Robert A Pollock · IPR · Institution
The Board instituted IPR on claims 1–27 and all petition grounds, finding a reasonable likelihood that at least one claim is obvious over Racz, Fitz, and Lee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“314. An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . 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). Further, a decision to institute may not do so on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Absent evidence or argument to the contrary, we apply Petitioner’s proposed definition, as it appears consistent with the prior art and is supported by the presently unopposed testimony of Dr. Tucker. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself). We note, however, that Petitioner’s open-ended language “at least” expands the ranges of education and experience indefinitely with no upper bound, thereby encompassing those of extraordinary skill. Therefore, we do not adopt this aspect of Petitioner’s formulation. B.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“With respect to the challenged claims, Petitioner contends that no claim term requires express construction. Pet. 11 (citing Ex. 1031 ¶ 106 (Dr. Tucker’s testimony that “the terms in the Challenged Claims would be understood by a POSA to have their plain and ordinary meaning and do not require a special construction or definition”)). On the presents record, we agree with Petitioner that no term requires express construction.” slip op. at 12
Claim constructioncites Phillips · KSRPatents in suitUS 10,966,782 - PTAB · Jan 24, 2025 · IPR2024-00276 · APJ Michael J Fitzpatrick · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on all challenged claims, 1–3, 6, 12, 14, 16, 18, and 19, after their disclaimer, and terminated the IPR.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Request For Adverse Judgment. Paper 21 (“Mot.”). In the Joint Motion, the parties “jointly move to terminate the present inter partes review proceeding in light of the disclaimer filed by Patent Owner disclaiming all challenged claims.” Mot. 1 (citing 37 C.F.R. § 42.73; Ex. 2001). The cited exhibit is a disclaimer, filed October 24, 2024, under 37 C.F.R. § 1.321(a), of claims 1–3, 6, 12, 14, 16, 18, and 19 of the ’194 patent, which constitute all of the claims challenged in the inter partes review. Ex. 2001. In view of the disclaimer, “Patent Owner requests entry of adverse judgment as to [the challenged and now disclaimed] claims.” Mot. 1. We grant the Motion. Accordingly, it is: ORDERED that adverse judgment is entered against Patent Owner as” slip op. at 2
NonePatents in suitUS 9,415,194 - PTAB · Jan 24, 2025 · IPR2024-00275 · APJ Michael J Fitzpatrick · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner on all challenged, disclaimed claims and terminated the inter partes review.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“C.F.R. § 1.321(a), of claims 9, 14, 16, 18, 20, 22–24, 44, and 46 of the ’597 patent, which constitute all of the claims challenged in the inter partes review. Ex. 2001. In view of the disclaimer, “Patent Owner requests entry of adverse judgment as to [the challenged and now disclaimed] claims.” Mot. 1. We grant the Motion. Accordingly, it is: ORDERED that adverse judgment is entered against Patent Owner as to claims 9, 14, 16, 18, 20, 22–24, 44, and 46 of U.S. Patent No. 9,072,597 B2; and FURTHER ORDERED that the inter partes review is terminated.” slip op. at 2
NonePatents in suitUS 9,072,597 - PTAB · Jan 8, 2025 · IPR2024-00959 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–10 on all petitioned grounds after finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), institution of review requires the information in the record to demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that claims 1–10 are unpatentable, considering all grounds in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner’s position in this regard invites us to err “by looking at [Fisher] individually” and separately from Kuwata, because “[t]he question in an obviousness inquiry is whether it would have been obvious to a person of ordinary skill in the art to combine the relevant disclosures of the two references, not whether each individual reference discloses all of the necessary elements.” Palo Alto Networks, Inc. v. Centripetal Networks LLC, 122 F.4th 1378, 1385–86 (Fed. Cir. 2024) (quoting Game & Tech. Co. v. Wargaming Grp. Ltd., 942 F.3d 1343, 1352 (Fed. Cir. 2019)); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (nonobviousness is not established by attacking references individually when unpatentability is predicated upon a combination of prior art disclosures); see also KSR, 550 U.S. at 420–421 (stating “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle”). Finally, as to motivation for combining Kuwata and Fisher to practice the invention of claim 1, Petitioner’s contentions and Dr. Stevenson’s testimony justify institution of review. In particular, Dr. Stevenson testifies that a person of ordinary skill in the art would have been motivated, in light of Fisher’s disclosures regarding updating of data files on a camera, to configure Kuwata’s camera to download updated image processing control data from a server via the Internet, in order to pair the camera with various printers including printers that were not yet on the market when the camera was manufactured. See Pet. 15–18, 22–26; Ex. 1003 ¶¶ 86–89, 102–108. Based on the present record, we conclude Kuwata does not teach away from this combination, as Patent Owner would have it. Kuwata merely discloses that the camera manufacturer (as opposed to individual users of the camera) is in the best position to optimize the output control information CI utilized by the camera to reduce differences between images displayed to the user by the camera and images that are outputted by particular printers. See Ex. 1005 ¶¶ 75, 77. This does not detract from the benefits of updating the output control information CI after the camera is manufactured, for example so that the camera can be paired with printers that were not yet on the market when the camera was manufactured. Indeed, Fisher recognizes that “a manufacturer may create various ancillary data files 418, and make the ancillary data files 418 available on a distributed computer network like the Internet for subsequent downloading and utilization by camera device 110.” Ex. 1006 ¶ 55. That teaching in Fisher dovetails with Kuwata’s disclosure concerning camera manufacturers optimizing their cameras with various different printers. For the foregoing reasons, we conclude the preliminary record supports, sufficiently to justify institution, Petitioner’s contention that a person of ordinary skill in the art would have been motivated to combine Kuwata and Fisher to practice the invention of claim 1.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner’s position in this regard invites us to err “by looking at [Fisher] individually” and separately from Kuwata, because “[t]he question in an obviousness inquiry is whether it would have been obvious to a person of ordinary skill in the art to combine the relevant disclosures of the two references, not whether each individual reference discloses all of the necessary elements.” Palo Alto Networks, Inc. v. Centripetal Networks LLC, 122 F.4th 1378, 1385–86 (Fed. Cir. 2024) (quoting Game & Tech. Co. v. Wargaming Grp. Ltd., 942 F.3d 1343, 1352 (Fed. Cir. 2019)); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (nonobviousness is not established by attacking references individually when unpatentability is predicated upon a combination of prior art disclosures); see also KSR, 550 U.S. at 420–421 (stating “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle”).” slip op. at 24
- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’082 patent “would have had at least a bachelor’s degree in electrical engineering, computer science, or related engineering disciplines, and two years of experience in digital image processing,” wherein “[r]elevant work experience can substitute for formal education and additional education could substitute for work experience.” Pet. 5; Ex. 1003 ¶ 60. “Patent Owner does not dispute the level of skill for a person of ordinary skill in the art . . . set forth in the Petition.” Prelim. Resp. 11–12. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’082 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,428,082 - Google LLC v. 138 East LCD Advancements LimitedInstituted in partPTAB · Jan 8, 2025 · IPR2024-00957 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–8, 10–16, and 18 on all petitioned grounds, but did not institute review of disclaimed claims 9 and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), institution of review requires the information in the record to demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that claims 1–8, 10–16, and 18 are unpatentable, considering all grounds in the Petition directed to those claims. We do not institute review as to claims 9 and 17 on any ground because they have been disclaimed. See 37 C.F.R. § 42.107(e).” slip op. at 2
- Adverse judgmentAdverse judgment
“disclaimer,” and “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). As a result of the statutory disclaimer, claims 9 and 17 are no longer regarded as claims challenged in the Petition. See Vectra, 162 F.3d at 1383 (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)); see also Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1372–75 (Fed. Cir. 2019) (disclaimer of claims during District Court patent infringement litigation “mooted any controversy” over the disclaimed claims, ending the Article III case or controversy requirement for District Court jurisdiction). In considering Federal Circuit precedent and our rules, we conclude we cannot institute a trial on claims that have been disclaimed, and, thus, no longer exist. Our conclusion is consistent with the statutory scope of inter partes review as laid out in 35 U.S.C. §§ 311(b) and 318(a) and is not at odds with SAS, supra. See, e.g., SAS, 584 U.S. at 367 (recognizing that “the claims challenged ‘in the petition’ will not always survive to the end of the case; some may drop out thanks to the patent owner’s actions”). Accordingly, we treat claims 9 and 17 as having never been part of the ’056 patent, such that Petitioner cannot seek inter partes review of those claims. Thus, we deny institution of review as to whether disclaimed claims 9 and 17 are unpatentable per Petitioner’s Grounds Three and Four.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the level of skill for a person of ordinary skill in the art . . . set forth in the Petition.” Prelim. Resp. 8; Ex. 2001 ¶¶ 27–28. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’056 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner argues “[n]o terms need to be construed . . . to resolve unpatentability.” Pet. 16–17. “Patent Owner contends that the claim terms should receive their ordinary and customary meaning in light of the specification and prosecution history, as understood by a person of ordinary skill in the art.” Prelim. Resp. 8. Patent Owner does not proffer any constructions for particular terms. See id. Based on the arguments and evidence presented at this time, we determine no explicit construction is needed to resolve the parties’ 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)).” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,454,056
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.