- Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 28, 2026 · IPR2024-01174 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–8 and 10–23 are unpatentable: the Board found claims 1–15 anticipated or obvious over the asserted grounds and claims 16–23 obvious over the Native combination.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“argument that the prior art fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Reply 6–7 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that Lesniak teaches how to make stable compositions by including a secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Id. Ex. 1086 ¶ 7; see also Reply 6 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32).” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 17 (citing Ex. 1002 ¶¶ 27–29). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications at this stage of the proceeding. PO Resp. 10. For this Decision, we adopt and apply Petitioner’s proposal above, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1, 16, and 20 reciting “a deodorant stick” is limiting” as it provides antecedent basis for the recitation of “said deodorant stick being free of an aluminum salt” for each independent claim. PO Resp. 7–10. Patent Owner also points to dependent claims 6–9 as relying on the preamble reciting “a deodorant stick” as antecedent basis for claim elements. Id. at 9. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 19 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick). We determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). To the extent further discussion of the meaning any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find that the evidence of record fails to support Patent Owner’s argument that the prior art fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Reply 6–7 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that Lesniak teaches how to make stable compositions by including a secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Id. Ex. 1086 ¶ 7; see also Reply 6 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32). Having considered the parties’ positions and evidence of record, summarized above, we determine that Lesniak provides sufficient disclosure to enable a person of ordinary skill in the art to formulate deodorant stick within the parameters of claim 1. Therefore, for the reasons discussed above, we conclude that Petitioner has proved by a preponderance of evidence that Lesniak anticipates claim 1.” slip op. at 22
Patent outcomesUS 11,497,706 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,497,706 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 28, 2026 · IPR2024-01173 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–7, 9–13, and 16–19 are unpatentable: claims 16–17 are anticipated by Lesniak, and the remaining challenged claims are obvious over the stated combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“argument that the Lesniak fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Pet. Reply 8 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Ex. 1086 ¶ 7; see also Reply 8 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32).” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 24 (citing Ex. 1002 ¶¶ 27–28). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. See generally PO Resp. We adopt and apply Petitioner’s proposed definition of a POSA, which is consistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said deodorant stick being free of an aluminum salt” and “said deodorant stick” having a particular hardness range. PO Resp. 8–9. Patent Owner also points to dependent claims 5–8 as relying on the preamble reciting “a deodorant stick” as antecedent basis for claim elements. Id. at 10. We agree.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find that the evidence of record fails to support Patent Owner’s argument that the Lesniak fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Pet. Reply 8 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Ex. 1086 ¶ 7; see also Reply 8 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32). Having considered the parties’ positions and evidence of record, summarized above, we determine that Lesniak provides sufficient disclosure to enable a person of ordinary skill in the art to formulate a deodorant stick within the parameters of claims 16 and 17. e) Conclusion as to Claims 16 and 17 We agree with Petitioner that “the challenged claims recite nothing more than well-known deodorant ingredients performing their conventional functions.” Pet. Reply 2. Therefore, for the reasons discussed above, we conclude that Petitioner has proved by a preponderance of evidence that Lesniak anticipates claims 16 and 17.” slip op. at 22
Patent outcomesUS 10,905,647 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,905,647 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01105 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1, 3–8, and 11–14 as anticipated by Lesniak; claims 2, 9, 10, and 15 as obvious over the respective asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 27 (citing Ex. 1002 ¶¶ 26–28). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. PO Resp. 7– 8. We adopt and apply Petitioner’s proposed definition of a POSA, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said stick range. PO Resp. 8–10. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 27 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick).” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“disclosure to enable a person of ordinary skill in the art to formulate deodorant stick within the parameters of claim 1. d) Conclusion as to claim 1 Having considered the parties’ positions and evidence of record, summarized above, we are persuaded by Petitioner’s analysis that Lesniak discloses all elements of claim 1. We are not persuaded to Patent Owner’s arguments to the contrary. Accordingly, we determine that Lesniak anticipates claim 1.” slip op. at 20
Patent outcomesUS 10,966,915 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,966,915 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 21, 2026 · IPR2024-01104 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–18 are unpatentable under § 103: claims 1–7, 9–13, and 15–18 over Lesniak, Phinney, and Bianchi ’518; claim 8 adds Lamb; claim 14 adds Bianchi ’254; and claims 1–18 are also unpatentable over the …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said stick being free of an aluminum salt” and “said stick” having a particular hardness range. PO Resp. 8–9. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 30 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick). We determine that no express construction of any other claim term is necessary to resolve the dispute between the parties. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). To the extent further discussion of the meaning any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art (“POSA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 24 (citing Ex. 1002, ¶¶ 26–28). Patent Owner does not dispute Resp. We adopt and apply Petitioner’s proposed definition of a POSA, which is consistent with the level of skill reflected in the asserted prior art.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We have considered Patent Owner’s arguments but find, on this record, Petitioner to have the better position. In particular, we are persuaded that a POSA would have been motivated to add magnesium hydroxide to Lesniak’s compositions because Phinney teaches that: (i) zinc oxide has “low activity” as a “deodorant agent”; (ii) magnesium hydroxide is “an effective synergistic effects, hence motivating a POSA to add magnesium hydroxide to Lesniak’s zinc oxide deodorants. Ex. 1004, 1:13- 3:16, 5:61-67. Reply 10; see also PO Resp. 25–26 (arguing that a POSA would have found it obvious to add magnesium hydroxide to the composition of Lesniak because zinc oxide is not a particularly efficacious antimicrobial in deodorants when used alone, whereas magnesium hydroxide is an effective deodorant). We acknowledge that Phinney suggests mixing zinc oxide with water in order to convert zinc oxide to zinc hydroxide. See, e.g., Ex. 1004, 1:17– 19 (“It was also found that a mixture of the hydroxides of zinc and magnesium could provide long lasting protection against odour due to perspiration.”). The evidence of record, however, shows that both magnesium hydroxide and zinc oxide were known options for deodorant antimicrobials, and claim 1 does not require a minimal level of effectiveness such that the combination of magnesium hydroxide and zinc oxide would need to outperform any other combination including the mixture of zinc and magnesium hydroxides. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“Our case law does not require that a particular combination must be the preferred, or the most desirable, combination[.]”). Here, we also credit the testimony of Dr. Michniak-Kohn that “POSA would understand that the water-based vs. anhydrous distinction is not relevant, as a POSA would understand that magnesium hydroxide would still function as an antimicrobial in anhydrous compositions such as those disclosed by Lesniak.” Ex. 1086 ¶ 9 (citing Ex. 1072, 1-2, 5 (disclosing deodorants without added water and with zinc oxide and/or magnesium hydroxide)). Accordingly, we are persuaded by Petitioner that “a POSA would have been” slip op. at 22
- Obviousness (§103) › KSR rationalesMotivation foundUnpatentable
“teaches baking soda as an effective ingredient in a deodorant. Ex. 1005, 131–33. Baking soda is also known to cause irritation that may motivate some to remove it from deodorants. See Ex. 2011 ¶ 109–110. Thus, the specific set of advantages and disadvantages for using baking soda in a deodorant was known to a person of skill in the art. On this record, the inclusion or exclusion of baking soda presents no unexpected result and the evidence of record establishes that it would have been an obvious matter of design choice within the skill of the art to balance the advantages and disadvantages associated therewith. See Medichem, S. A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”) In view of the above, we determine that the preponderance of the evidence supports Petitioner’s argument that claim 8 would have been obvious over the combination of Lesniak, Phinney, Bianchi ’518, and Lamb. Accordingly, we determine that claim 8 is obvious by the combination of Lesniak, Phinney, Bianchi ’518, and Lamb.” slip op. at 32
Patent outcomesUS 11,540,999 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,540,999 - PTAB · Jan 14, 2026 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Remand
On remand, the Board reinstituted review of all challenged claims on all grounds after finding Petitioner sufficiently explained its differing claim-construction positions.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. The Director neither addressed the merits of Petitioner’s challenges nor found that our prior consideration of those merits was faulty. Accordingly, we understand that we need not reconsider our conclusion that Petitioner had demonstrated a reasonable likelihood of proving that claims 1, 2, 7–9, 11, 12, and 20–24 were unpatentable or that the merits of patentability set forth in the Petition warranted institution of inter partes review.” slip op. at 5
- BurdenDecided for petitioner
“The question before us, therefore, is whether the Petitioner’s proffered explanation that it has proposed a different claim interpretation before the Board because the District Court may decline to adopt the narrower claim interpretations it advocates there is sufficient. We find that Petitioner’s explanation is sufficient because it follows the Director’s exemplary logic. Whether a district court has already or might in the future decline to adopt constructions that a petitioner proposes in related district court litigation merely reflects the timing of when a dispute over claim interpretation will be resolved. The Director and Patent Owner both recognize that, to resolve the dispute over claim interpretation that exists here, a decision-maker must determine “a single claim construction that best captures the true meaning of the patent claim.” Remand 4; PO Remand Br. 3. Based on the record presented by the parties to date in this proceeding, no dispute exists that the disputed claim terms mean what Patent Owner says they mean in the Litigation. Accordingly, we find that, at this stage of the proceeding, it is undisputed that Patent Owner’s interpretations of the claim terms represent the “single claim construction that best captures the true meaning of the patent claim.”8 Under that claim interpretation, we” slip op. at 8
NonePatents in suitUS 11,835,421 - Canadian Solar Inc. v. Maxeon Solar Pte. Ltd.Some claims unpatentablePTAB · Jan 12, 2026 · IPR2024-01039 · APJ Kristina M Kalan · IPR · Final written decision
Claims 9–11 are unpatentable as obvious; claim 12 was not shown unpatentable because Froitzheim does not disclose silver contacts formed over silicon dioxide.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we adopted the assessment offered by Petitioner. Inst. Dec. 7–8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’516 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on our review of the complete trial record and the arguments raised by the parties, we determine that it is not necessary to expressly construe any claim terms to resolve the parties’ dispute. Realtime Data, 912 F.3d at 1375.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are convinced Petitioner has shown that a person of ordinary skill in the art would have had a reason to combine the subject matter of Froitzheim and Gan for the reasons expressed by Petitioner (Pet. 42–48) and discussed above (see supra). Patent Owner’s arguments in response are not persuasive. Though Gan’s teachings are directed to silicon concentrator solar cells, the ordinarily skilled artisan would have understood Gan also refers to silicon solar cells in general. Compare Ex. 1007, 249 (stating “[t]he data in Fig. 6 are quite useful for silicon solar cells” and “cell efficiency is obtained for a backside contact solar cell”), with id. (explaining that “polysilicon emitters with these qualities can be quite useful for silicon concentrator solar cells”). Dr. Banerjee testifies that “the Skilled Artisan would interpret Gan as recommending the feature for solar cells in general” and “that its polysilicon emitter with interfacial oxide feature is beneficial for solar cell efficiency in general.” Ex. 1003 ¶ 146; Ex. 2023, 93:10–15. Furthermore, Dr. Ruby testified that when designing solar cells, he reviews published works in the field and would not necessarily limit his review to the type of solar cell being developed. Ex. 1066, 48:4–51:16. Q So you would agree that if you're developing a 1-Sun solar cell, it might be worthwhile to look at publications regarding concentrator solar cells? * * * THE WITNESS: Well, it would be advisable or suggest -- you know, it would certainly be worth -- worth looking at, although not all of the methods for creating solar cells -- concentrator cells are required for producing 1-Sun cells. So some things would be of use and many things would not. Ex. 1066, 51:7–16. That Dr. Banerjee and Dr. Ruby each testify that a person of ordinary skill in the art would have had reason to consult the teachings of both concentrator and non-concentrator solar cells—in fact describing such consideration as “advisable,” “suggest[ed],” and “worth looking at”—when designing a solar cell is dispositive of this issue. We acknowledge Dr. Ruby’s testimony that consideration of broader teachings may hinge on a specific application for the solar cells. Ex. 1066, 51:7–16. But the combination proposed here by Petitioner, which substitutes one known emitter for another, that is, a polysilicon emitter for a diffused emitter, to improve efficiency of solar cell performance, has been shown to have general applicability regardless of solar cell type. Ex. 1003 ¶¶ 142–148 (citing Ex. 1006, Abstr., ¶¶ 1, 9; Ex. 1007, 245, 248, 249; Ex. 1014; Ex. 1039); Ex. 1067 ¶¶ 21–28; Ex. 2023, 32:2–11. Accordingly, we are persuaded that Petitioner has shown that the” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“The standard for demonstrating teaching away is, as Petitioner notes, high. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the [inventor].” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Under that standard, Patent Owner’s “teaching away” argument is unavailing. The permitted temperatures in Froitzheim include a range of 900°C-1200°C, which expresses a permitted range, rather than a discouragement or divergence from that range, and the Froitzheim range clearly encompasses the temperatures used by Gan. A reference will also “teach away” if it suggests that the developments flowing from its disclosures are “unlikely to produce the objective of the applicant’s invention,” which is not the case here. See, e.g., Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005). The record demonstrates that Gan’s teachings are consistent with Froitzheim’s and, in the proposed combination, likely to produce the desired objective. Pet. Reply 13. In sum, the evidence of record here does not support a conclusion that Froitzheim criticizes or discredits the use of the lower temperatures in its expressly stated range, or that an ordinarily skilled artisan would have been discouraged from considering the full range of Froitzheim’s identified temperatures. Nor does it support a conclusion that Gan’s temperature, which is within Froitzheim’s range of temperatures, amounts to a criticizing, discrediting, or discouraging that would constitute a teaching away.” slip op. at 28
Patent outcomesUS 8,222,516 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,222,516 - Canadian Solar Inc. v. Maxeon Solar Pte. Ltd.All claims unpatentablePTAB · Jan 12, 2026 · IPR2024-01040 · APJ Avelyn M Ross · IPR · Final written decision
Claims 9–20 are unpatentable as obvious over the Froitzheim/Gan and Froitzheim/Kwark combinations, with Hartiti or Sivoththaman for the specified dependent claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the discipline of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that “the term ‘in situ’ in dependent claim 15 is appropriate for construction because it is defined in the 053 Patent.” Pet. 20. In particular, Petitioner argues that “in situ” refers to processing that occurs after a single manual loading of the substrate into a furnace or other single chamber or multi-chamber processing tool. EX1003, ¶157. Therefore, in the context of claim 15’s diffusion steps, the single, simultaneous drive-in/diffusion of the front and back dopants would constitute “in situ” steps that satisfy the claim. Pet. 56–57 (citing Ex. 1003 ¶ 157); see Ex. 1001, 5:9–18. Patent Owner argues that “in the parallel district court litigation, [Petitioner] advocates for an additional limitation on what constitutes the claimed ‘in situ.’” PO Resp. 35–36. In particular, Patent Owner asserts that Petitioner urges that “in situ” processing “covers only ‘in situ’ diffusion and not ‘in situ’ doping.” PO Resp. 36. But, Patent Owner states that it applies the construction adopted by Petitioner here. PO Resp. 36 Because the outcome of this Decision does not rest on any particular” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Petitioner explains that “Froitzheim and Gan are analogous art because each is in the same field of endeavor—solar cell design” and “[e]ach is reasonably pertinent to the problems of efficiencies and cost-effectiveness of solar cell designs.” Pet. 29 (citing Ex. 1003 ¶94; Ex. 1006, Abstr., ¶¶ 1, 9; Ex. 1007, 245, 249). Petitioner asserts that a person of ordinary skill in the art “would have been motivated to replace Froitzheim’s diffused emitter with a deposited polysilicon emitter along with an oxide layer because Gan taught and suggested that this modification would be an improvement.” Pet. 29 (Ex. 1003 ¶ 95). Gan teaches that “the cell performance can be improved if the diffused-emitter [e.g., of Froitzheim] is replaced with the polysilicon emitter” and that “the J0 [i.e., measure of surface recombination] of the p-type polysilicon emitter (Fig 5) [beneficially] appears to be much lower than what has been previously reported,” which Gan attributes to the thermal oxide interfacial layer. Pet. 29–30 (quoting Ex. 1007, 245, 248); see also Ex. 1007, 249 (“polysilicon emitters with these qualities can be quite useful for silicon concentrator solar cells”). Petitioner also argues that the skilled artisan would have had a reasonable expectation of success because the combination is simply” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“reflected in the Gan Thesis, does not defeat obviousness because “obviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007); see also In re Longi, 759 F.2d 887, 896 (Fed. Cir. 1985) (“Only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness.”). In addition, “[w]hen prior art contains apparently conflicting references, the Board must weigh each reference for its power to suggest solutions to an artisan of ordinary skill” and, in so doing, “consider the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). The Gan Thesis describes known techniques that the skilled artisan could have employed to improve thin oxide growth. The Gan Thesis states that “it appears that the variation of the oxide thickness results mainly from the oxide-growth step. If this is the case, it is possible that the thin-oxide growth can be improved by performing the oxidation at a lower temperature such that the oxidation rate can be controlled more precisely.” Ex. 2003, 112. Though Patent Owner characterizes this disclosure as “an unproven assumption” or “speculation at best” (Tr. 32:23–26), Drs. Banerjee and Ruby disagree. For example, Dr. Banerjee explains that [l]owering the temperature slows down the chemical reaction between silicon and oxygen in the formation of silicon oxide and thus allows for greater control on the thickness of the oxide layer. As Gan Thesis shows, the oxide thickness increases with time, and slowing that process down by lowering the temperature allows a Skilled Artisan to optimize the oxygen flow time in order to achieve the desired thickness. Ex. 1082 ¶ 19 (citing Ex. 2003, 111). Dr. Banerjee further testifies that “since at least the 1990s,” the ordinarily skilled artisan was equipped with methods to reliably grown oxide layers with controlled thicknesses. Ex. 1082 ¶ 12. “These methods were able to finely tune conditions such as reaction time, temperature, pressure, and oxygen concentration of the oxidation reaction as it occurs to obtain reliable formation of thin oxide layers.” Ex. 1082 ¶ 12; see id. ¶ 19; Ex. 1048; Ex. 1078. Dr. Ruby, Patent Owner’s declarant, offers similar testimony explaining that prior to 2008, the purported date of invention, it was known that lowering the temperature at which the oxide is formed will slow the growth rate of that oxide. Ex. 1081, 103:3–18. Accordingly, the evidence of record suggests that the skilled artisan, at the time of invention, would have had a reasonable expectation of success in the combination of Froitzheim and Gan.” slip op. at 23
Patent outcomesUS 8,878,053 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,878,053 - Canadian Solar Inc. v. Maxeon Solar Pte. Ltd.No claims unpatentablePTAB · Jan 12, 2026 · IPR2024-01038 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 10–16 and 19 were not shown unpatentable because Petitioner did not establish a motivation to combine the cited references to meet the claimed dopant concentration.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Artisan”) would have had “an advanced degree involving the discipline of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field,” or “a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field.” Pet. 5–6 (citing Ex. 1003 ¶ 47); 1194IPR Pet. 11 (citing Ex. 1100 ¶ 47). Patent Owner states that it “accepts the level of ordinary skill in the art that is proposed in the Petition.” PO Resp. 11. In the Institution Decisions, we adopted the assessment offered by Petitioner. 1038IPR Dec. 5–6; 1194IPR Dec. 8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’315 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Construction We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on our review of the complete trial record, we determine that it is not necessary to expressly construe any claim terms to resolve the parties’ dispute. Realtime Data, 912 F.3d at 1375.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner fails to sufficiently demonstrate that the combination of Li and King, Swanson-352, or Marvin teaches “a portion of the silicon substrate has a dopant concentration of approximately less than or equal to 2x1018 cm-3” as recited in claim 10 because Petitioner fails to establish by a preponderance of the evidence that a Skilled Artisan would have been motivated to look to the dopant concentrations in King, Swanson-352, or Marvin to determine the concentration of dopants for use in Li’s silicon substrate.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“Our rules provide that a petitioner must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a). Our rules also state that “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” Id. § 42.23(b). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” PTAB Consolidated Trial Practice Guide, 74 (Dec. 2025) (“CTPG”). Our Trial argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Id. at 73; see also id. at 74 (“Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, such as newly raised rationale to combine the prior art references that was not expressed in the petition.”). In the Petition, Petitioner argues that a Skilled Artisan would have been motivated to combine Li’s back contact cell with the front portion doping concentration disclosed in King, Swanson-352, or Marvin, because Li, King, Swanson-352, and Marvin are analogous art. Pet. 30–32. Petitioner also points to Li’s acknowledgement that techniques for increasing efficiency are generally desired because efficiency is an important characteristic of a solar cell. Id. at 32. As Patent Owner notes, however, the Petition does not include the phrase “finite number” or “obvious to try.” PO Sur-reply 20. Petitioner’s “obvious to try” argument is a newly raised rationale to combine the prior art references necessary to make out a prima facie case of unpatentability. See CTPG 74. Accordingly, we do not consider Petitioner’s untimely new argument.” slip op. at 21
Patent outcomesUS 11,251,315 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,251,315 - Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.No claims unpatentablePTAB · Jan 5, 2026 · IPR2024-00911 · APJ Kimberly Mcgraw · IPR · Final written decision
Claim 10 was not shown unpatentable under § 103 over Toyama because the challenge did not remedy the deficiencies in its nonobvious base claim 8.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedOther
“Petitioner’s proposed definition appears to be consistent with the cited prior art and the disclosure of the ’806 patent, and we adopt it for purposes definition of a POSITA.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In our Decision on Institution, we noted that the parties disputed construction of “each local contact” found in dependent claim 10, and “dielectric structure” recited in independent claim 8. Inst. Dec. 8–9. We determine that no express construction of “each local contact” recited in claim 10, or any other claim term, is required to resolve the issues in dispute in this proceeding.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“independent claim 8 would have been obvious for the reasons set forth in its petition in the 791-IPR. See id. at 1 (stating the present Petition maintains the same grounds set forth in IPR2024-00791). As explained in our Final Written Decision (Ex. 3001) in the 791-IPR issued concurrently, Petitioner did not show by a preponderance of the evidence that independent claim 8 would have been obvious over Toyama under any of Petitioner’s three alternative arguments. None of Petitioner’s arguments set forth in the present Petition, including the arguments directed to claim 10, remedy the deficiencies regarding its base claim 8. See Pet. 53–31, 98–101, 124–125; see also Reply. Accordingly, for the same reasons set forth in the Final Written Decision in the 791-IPR issued concurrently, Petitioner has not shown by a preponderance of the evidence that independent claim 8, and therefore dependent claim 10, would have been obvious over Toyama. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.”); Ex. 3001.” slip op. at 14
- Expert testimonyNot reached
“Petitioner relies on the Declaration of Jack C. Lee, Ph. D. (Ex. 1003) and the Reply Declaration of Jack C. Lee, Ph.D. (Ex. 1043) in support of its 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), revised 35 U.S.C. §§ 102 and 103 effective March 16, 2013. Because the ’806 patent has an effective filing date after March 16, 2013 (Ex. 1001, codes (22), (63)), we refer to the AIA version of Sections 102 and 103. 3 Toyama, US Pub. No. 2017/0179026 A1, published June 22, 2017 (Ex. 1005). 4 Petitioner characterizes its alternative arguments of unpatentability of claim 10 as based on three “grounds.” See Pet. 15. Because each of Petitioner’s arguments are based on the same reference, albeit different embodiments, we characterize Petitioner’s challenges as three alternative arguments based on a single ground because each argument relies on the same reference. Ph.D. (Ex. 2005). Transcripts of the depositions of Dr. Lee (Exs. 2006, 2010) and of Dr. Yang (Ex. 1044) have also been submitted into the record.” slip op. at 7
Patent outcomesUS 10,937,806 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,937,806 - Micron Technology, Inc. v. Yangtze Memory Technologies Company, Ltd.No claims unpatentablePTAB · Jan 5, 2026 · IPR2024-00791 · APJ Kimberly Mcgraw · IPR · Final written decision
Claims 8, 9, 11, and 12 were not shown unpatentable under §103 over Toyama because the asserted structures did not meet the construed TAC limitation and the proposed modifications lacked adequate motivation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have had “a bachelor of science degree in electrical engineering or a similar discipline” with “2–3 years of professional experience working with (e.g., researching, designing, or teaching) NAND flash memory devices, or an equivalent level of skill, knowledge, and experience (e.g., an advanced degree may replace some of the professional experience).” Pet. 27 (citing Ex. 1003 ¶¶ 34–38). Petitioner further contends that a “POSITA would also have been aware of and generally knowledgeable about semiconductor manufacturing and 3D NAND’s structure, its component parts, how it operates, and how it is controlled.” Id. Patent Owner does not object to Petitioner’s proposed definition (PO Resp. 12), but Patent Owner’s declarant Dr. Yang provides a slightly different definition, stating a POSITA: would have had at least a bachelor’s degree in electrical engineering, materials science, or a similar discipline, along with at least 2 years of professional experience in semiconductor fabrication process integration for memory devices or an equivalent level of knowledge and experience. For example, an experience, or extensive experience may replace some of the educational requirements. Ex. 2004 ¶ 43. Petitioner’s proposed definition appears to be consistent with the cited prior art and the disclosure of the ’806 patent, and we adopt it for purposes of this Decision. We note that our Decision would be the same under either definition of a POSITA.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“(TACs) extending vertically through the dielectric structure” recited in claim element [8.G] encompasses multiple TACs, each extending through a separate, different dielectric structure, while Patent Owner argues that the phrase requires that the plurality of TACs (i.e., at least two TACs) must extend through the same dielectric structure. See, e.g., Pet. 49–50; PO Resp. 18–21; Reply 2–4. In our Decision on Institution, we preliminarily construed this phrase to require that more than one (i.e., a plurality) TAC in the TAC region extends vertically through a single dielectric structure. See Inst. Dec. 17. Based upon a full record, we construe this term of claim element [8.G.iii] (i.e., “ . . . a through array contact (TAC) region formed between the first and second channel regions, wherein the TAC region comprises a plurality of through array contacts (TACs) extending vertically through the dielectric structure”) according to its plain language to require that a plurality (i.e., more than one) of TACs must extend vertically through a (i.e., at least one) dielectric structure. Under this construction, the plurality of TACs may extend through more than one dielectric structure, but the plurality of TACs must extend through at least one dielectric structure. The plain language of the claim is not satisfied if each TAC extends through a separate dielectric structure because, in this scenario, there is not a plurality of TACs that extend through a dielectric structure.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Resp. 31–33. Patent Owner persuasively explains, with supporting testimony by Dr. Yang, that these regions containing the interconnects and peripheral circuitry would prevent repeating the layout in the hd1 direction because the interconnects and peripheral circuitry would be located in the same region that Petitioner proposes adding the additional memory plane. Id. (citing Ex. 2004 ¶ 72). Patent Owner further persuasively explains that Toyama teaches repeating the layout in the hd2 direction, not the hd1 direction, because of the location of its interconnects and peripheral circuitry, which prevents repeating the structure in the hd1 direction. See id. at 34 (citing Ex. 1005, Figures 17E, 17F). Patent Owner persuasively explains that Toyama Figure 17F (which is an alternate view of the structure shown in Figure 17E) shows that the memory array has interconnects and driver circuits on at least the left side, which means that in a modification adding additional planes, each plane would necessarily include these interconnects and driver circuitry on the left side. Id. at 35 (citing Ex. 2004 ¶ 75). We agree with Patent Owner that Petitioner has not sufficiently shown that it would have been obvious for a POSITA to repeat the structure shown in Figure 17E in the hd1 direction due to the presence of its interconnects and peripheral circuitry.” slip op. at 34
Patent outcomesUS 10,937,806 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,937,806
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.