- PTAB · Oct 27, 2025 · IPR2025-00816 · APJ Kristina M Kalan · IPR · Institution
Instituted IPR on all challenged claims 1–19; Ground 1 met the reasonable-likelihood threshold, while Ground 2 was instituted under the all-grounds rule.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner has demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine the teachings of the Chishti patents and Sachdeva to meet the limitations of the claims challenged under this ground.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“that Petitioner has demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine the teachings of the Chishti patents and Sachdeva to meet the limitations of the claims challenged under this ground.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away found
“with Chishti-876’s purported teaching away and disparagement, we note again that “round-tripping” is defined in the Specification as “the technique of moving a first tooth out of the path of a second tooth, and once the second tooth has moved sufficiently, moving the first tooth back to its previous position before proceeding to a desired final position of that first tooth.” Ex. 1001, 13:8–12. Chishti-876 teaches that its “path scheduling algorithm determines the treatment path while avoiding ‘round-tripping,’ i.e., while avoiding moving a tooth along a distance greater than absolutely necessary to straighten the teeth. Such motion is highly undesirable, and has potential negative effects on the patient.” Ex. 1005, 14:46–51. The Petition does not expressly address this teaching in Chishti-876, nor does it address the prior Board finding in the ’444 IPR, in which the Board recognized that this teaching constitutes a teaching away from round-tripping. See Ex. 1008, 11– 12. On this record, it appears that Chishti-876 teaches away from “moving a tooth along a distance greater than absolutely necessary to straighten the teeth.” In short, Chishti-876 disparages “moving a tooth along a distance greater than absolutely necessary to straighten the teeth” (Ex. 1005, 14:46– 51) which is a broad statement that appears to encompass the more specific round-tripping movement taught in Becker. Petitioner itself concedes that “indirect movement was understood to be avoided if possible.” Pet. 17. Although Petitioner attempts to characterize indirect movement or round-tripping as a preferable or necessary option (see, e.g., Pet. 15–17), these arguments are insufficiently supported on this record.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of August 30, 2006 (the earliest claimed priority date) would have been part of an interdisciplinary team. This team would have included a member with an advanced degree related to dentistry (e.g., BDS, MDS, DDS, DMD) with experience in orthodontics, including 1–3 years of orthodontic training or equivalent experience, and experience using clear aligners. The team may have also included members with a degree in a technical area related to software, graphics, computers, or a related discipline. This technical team member would have had 1–3 years of software development experience. For all team members, more education could substitute for experience and vice versa.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 11,369,456 - Clearcorrect Operating, LLC v. Align Technology Inc.Institution deniedPTAB · Oct 23, 2025 · IPR2025-00814 · APJ Kevin F Turner · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim over the asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. 35 U.S.C. § 103(a); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) any objective indicia of nonobviousness.7 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness determination requires finding a reason to combine accompanied by a reasonable expectation of achieving what is claimed in the challenged patent. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 419–20.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundMotivation not foundNot shown unpatentable
“tripping” as “any motion of a tooth in any direction other than directly toward the desired final position.” Ex. 1004, 4:12–13. Chishti-511 teaches minimizing round-tripping (“teeth are moved in the quickest fashion with the least amount of round-tripping”), but acknowledges that “[r]ound-tripping is sometimes necessary to allow teeth to move past each other.” Id. at 4:9–15. In an attempt to counter Patent Owner’s teaching away arguments, Petitioner relies heavily on Chishti-511’s statement that “[r]ound[-]tripping is sometimes necessary.” See Pet. 29–30; see also Ex. 1003 ¶ 83 (Dr. Yadav relying on Chishti-511). This reliance is unavailing, because as noted above, Chishti-511 defines “round-tripping” more broadly than is claimed here. Indeed, in the ’444 IPR, the Board stated that “the ‘round tripping’ described in Chishti ’511 is something different than the ‘round tripping’ required by the ’444 patent.”10 Ex. 1008, 16. Despite being aware of this prior finding 10 In the ’444 IPR, the Board employed the same construction of “round-tripping” that we use here. Compare Ex. 1008, 6, with Section II.C supra. (see Pet. 6), Petitioner here fails to address the difference between Chishti- 511’s round-tripping and the claimed round-tripping. That is, Petitioner places great weight on Chishti-511’s statement that “round-tripping is sometimes necessary,” but has not established that Chishti-511 contemplates round-tripping as claimed, as opposed to some other, different movement pattern encompassed by Chishti-511’s broader statement about round-tripping.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“discussion of “need[ing] collision-free treatment paths,” skilled artisans would have turned to Becker. Pet. 23–24 (citing Ex. 1004, 4:15–22). But on this record, and especially in view of the teachings away from round-tripping, Petitioner does not demonstrate a reasonable likelihood that a skilled artisan would have combined Becker’s movement pattern with the Chishti systems and Sachdeva. In particular, the Petition and supporting materials lack sufficient argument and evidence for us to conclude that a person of ordinary skill in the art would have had reason to apply Becker’s movement pattern in the context of an aligner treatment. Becker is a textbook relating to the orthodontic treatment of impacted teeth. Ex. 1006, 1 (Title). Patent Owner correctly states that “Becker is a different orthodontic treatment modality compared to the Chishti references,” using “braces and numerous brackets, wires, and rubber bands, with the wire-and-bracket systems being attached directly and permanently to the teeth.” Prelim. Resp. 21–22; see also supra Section II.D.4. “Becker involves traditional orthodontic practice: manual, by-eye adjustment of its archwires, elastic thread, and palatal wires by a treating orthodontist in repeated office visits.” Prelim. Resp. 22. Chishti-511, in contrast, uses “treatment planning software” to “pre-stag[e] a series of tooth positions from which a sequence of appliances can be manufactured.” Id. On this record, we agree with Patent Owner that “Becker at best shows that round-tripping was an option in limited circumstances involving wire-and-bracket treatment.” See Prelim. Resp. 3. Petitioner does not direct us to any persuasive evidence that using aligners to effect Becker’s tooth transposition “would be appropriate or even possible.” Id. at 22. As Patent Owner correctly notes, Petitioner does not point to any teaching in Becker regarding aligner treatment or corresponding treatment planning software. Id. at 23. Nor are we directed to any portions of Chishti-511, Chishti-876, or Sachdeva that mention using aligners to transpose teeth. These omissions are important because “[i]n contrast to treatment with braces, in which wires are manually adjusted by the orthodontist to move teeth reactively, aligner treatment involves treatment planning in which a detailed path of teeth is calculated in advance.” Id. at 4. Given these differences, Petitioner has not persuasively explained why Becker’s tooth movement pattern and mechanism would have been of interest to a skilled artisan who was” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as of the August 30, 2006 claimed priority date would have been part of an interdisciplinary team. This team would have included a member with an advanced degree related to dentistry (e.g., BDS, MDS, DDS, DMD) with experience in orthodontics, including 1–3 years of orthodontic training or equivalent experience, and experience using clear aligners. The team may have also included members with a degree in a technical area related to software, graphics, computers, or a related discipline. This technical team member would have had 1–3 years of software development experience. For all team members, more education could substitute for experience and vice versa. Pet. 7–8 (citing Ex. 1003 ¶¶ 23–24; Ex. 1017 ¶¶ 23–25; Ex. 1029; Ex. 1030). At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,456,217 - Clearcorrect Operating, LLC v. Align Technology Inc.Institution deniedPTAB · Oct 23, 2025 · IPR2025-00815 · APJ Cynthia M Hardman · IPR · Institution
The Board denied institution because ClearCorrect did not show a reasonable likelihood that claims 1–24 would have been obvious over Chishti-511, Chishti-876, Sachdeva, and Becker.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“3. Analysis In view of the arguments and cited evidence, we find on this record that Petitioner has not demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine Becker’s round-tripping with the teachings of the Chishti patents and Sachdeva.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party indicates that any other claim term requires express construction. Only claim terms in controversy need be construed. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). For purposes of this Decision, we determine that no other claim term requires construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITA
“Court for the Western District of Texas (see supra Section I.B), they jointly adopted the definition of “round-tripping” set forth in the ’879 patent Specification. Pet. 9; Prelim. Resp. 8; Ex. 1013, 8. The ’879 patent Specification defines “round-tripping” as moving a first tooth out of the path of a second tooth, and once the second tooth has moved sufficiently, moving the first tooth back to its previous position before proceeding to a desired final position of that first tooth. See Ex. 1001, 13:9–13. We adopt this agreed-upon construction for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,524,879 - CQV Co., Ltd. v. Merck Patent GmbHNo claims unpatentablePTAB · Oct 14, 2025 · PGR2021-00054 · APJ Kristina M Kalan · PGR · Remand
Claims 1–22 were not shown unpatentable because Sample C was not proven publicly available as prior art, and the original decision found the remaining grounds insufficient.
RulingsRemand decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“We agree with Patent Owner that Petitioner’s evidence in Kuntz (Ex. 1026), the Annual Report (Ex. 1028), Masuko (Ex. 1029), and Pfaff (Ex. 1034) is insufficient to show that Xirallic® Sample C was available to the public before the effective filing date of the ’861 patent. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26. Kuntz, the Annual Report, Masuko, and Pfaff may support a finding that the Xirallic® line of products was available to the public, but these documents do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public. We also agree with Patent Owner that the Technical Data Sheets (Exs. 1005–1010), Certificates of Analysis (Exs. 1011–1017), and Material Safety Data Sheet (Ex. 1025) are insufficient to show that Xirallic® Sample C was available to the public. Petitioner has not asserted, nor do we find, that any of these documents refer to or describe the lot of Xirallic® from which Sample C was taken. See Final Dec. 26–27. Regardless of how the Technical Data Sheets were used in the Opposition against the European counterpart of the ’861 patent (Exs. 1040, 1041) and during the prosecution of the application from which the ’861 patent issued (Ex. 1003, 102–104), the Technical Data Sheets do not refer to or describe the lot of Xirallic® from which Sample C was taken. Moreover, as noted by Patent Owner, the Technical Data Sheets (Exs. 1005–1010) indicate that they are “preliminary” and Petitioner has not provided any evidence that the Technical Data Sheets were ever issued to the public, as opposed to just issued internally. See PO Resp. 18–19. We also find persuasive Patent Owner’s argument that the Technical Data Sheets are preliminary because other, later-dated technical data sheets (Exs. 2012, 2013) lack the “preliminary” label and list characteristics that are different from those in Exhibits 1005–1010. See PO Resp. 19 (comparing, e.g., Ex. 1009 and Ex. 2013; Ex. 1005 and Ex. 2012). The Technical Data Sheets may support a finding that the Xirallic® products they describe existed as of the dates on the documents, but they do not support a finding that the lot of Xirallic® from which Sample C was taken was available to the public.” slip op. at 20
- Expert testimonyPetitioner expert discountedPatent owner expert creditedOther
“witnesses. See Elbit Systems of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1358 (Fed. Cir. 2018) (citing Trs. of Columbia Univ. v. Illumina, Inc., 620 F. App’x 916, 922 (Fed. Cir. 2015); Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 856 (1982)). We have reviewed the witness testimony in the record and, more particularly, Mr. Choi’s deposition answers regarding Petitioner’s purchase of the lot of Xirallic® from which Sample C came. We find that Mr. Choi’s responses cast doubt on the credibility of his declaration testimony, namely with regard to the public availability of Sample C. Mr. Choi represented that he was involved in the purchase of the lot of Xirallic® from which Sample C was taken. Ex. 2011, 48:1–23. Mr. Choi stated that he instructed Petitioner’s marketing team manager to buy the sample from a distributor of Patent Owner’s products located in Europe. Id. at 48:24–49:4. Mr. Choi stated that he has evidence of the transaction, but refused to reveal the name of the company from which Petitioner purportedly purchased the lot of Xirallic® (id. at 49:5–50:3) and refused to produce an email in his possession that would corroborate his testimony regarding Petitioner’s acquisition of the product (id. at 50:8–16, 51:10–23). Mr. Choi represented that he does not remember how much Petitioner paid for Sample B. Id. at 56:4–5. Mr. Choi admitted that the entity from which Petitioner acquired the lot of Xirallic® from which Sample C was taken is “not currently a Merck distributor” (Ex. 2011, 50:4–7) and was not “a Merck distributor at the time” that “samples B and C were purchased” (id. at 51:25–52:2). According to Mr. Choi, the company is a “former distributor” of Patent Owner’s products. Id. at 52:3–6. Mr. Choi did not know, according to his testimony, when that unnamed entity first obtained the lot of Xirallic® (id. at 52:7–10) and he stated that he did not have personal knowledge of how the entity obtained the lot of Xirallic® (id. at 52:12–19). Instead, Mr. Choi assumed the entity was “able to obtain the sample through the routine course or process” the entity uses “to take samples or get samples.” Id. at 52:12–19. Mr. Choi believed the sample of Xirallic® from which Sample C was taken was sealed when Petitioner received it because samples from dealers are sealed, and he remembered observing that the package was from a dealer. Id. at 52:24– 54:25. However, Mr. Choi admitted that he did not obtain a technical data sheet or certificate of analysis for the lot of Xirallic® from which Samples B and C were taken. Id. at 59:6–11. Mr. Choi also answered questions regarding Petitioner’s purchase of Samples D and H. Ex. 2011, 62:20–66:8, 67:7–9, 73:12–13, 73:17–22. Similar to his testimony regarding Samples B and C, Mr. Choi admitted withholding an email regarding the purchase of the lot of Xirallic® from which Sample D was taken. Id. at 62:20–63:9. Mr. Choi also admitted that he did not know how Akzo USA or Axalta obtained the Xirallic® the companies sold to him, and admitted that Akzo USA was not a distributor of Patent Owner’s products at the time Petitioner purchased the product. Id. at 63:10–66:8, 73:17–22. Mr. Choi also admitted that Petitioner did not pay Akzo USA for the lot of Xirallic® from which Sample D was taken, and did not pay Axalta for the lot of Xirallic® from which Sample H was taken. Id. at 67:7–9, 73:12–13. Although Petitioner presents declaration testimony from Mr. Choi representing that he purchased the lot of Xirallic® from which Samples B and C were taken in October 2011 (Ex. 1004 ¶ 16), Mr. Choi’s declaration testimony lacks corroborating evidence, and his deposition testimony does not support that the product was available to the public, as we found in our Final Written Decision. See Final Dec. 27–28. Notably, Petitioner produced corroborating evidence for Mr. Choi’s acquisition of Samples A, H, and I. See Ex. 1004 ¶¶ 13 (citing Ex. 1047), 18 (citing Exs. 1024, 1025). However, Mr. Choi withheld similar evidence for the Xirallic® lots from which Samples B, C, and D were taken. See Ex. 2011, 50:8–16, 51:10–23, 62:20– 63:9; Final Dec. 28. As Patent Owner argues, there is “no information to determine when a contract was established, that there was consideration for the exchange, that the product was available to be delivered when the alleged transaction took place, or even when the product was delivered. Choi has no memory of what was paid for the product.” Sur-Reply 24–25; see also PO Resp. 13–14; PO Br. Rem. 2–4.” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Based on the evidence discussed above, we are not persuaded that Petitioner has shown by a preponderance of the evidence that Sample C was available to the public. Regardless of whether a company avoids wasting shelf life of its products (Ex. 1004 ¶¶ 15–16), there is no persuasive evidence in the record showing that the lot of Xirallic® from which Sample C was taken was released from quality control and then made available to the public by Patent Owner. Mr. Choi’s testimony shows that Petitioner obtained the lot of Xirallic® from which Sample C was taken in an atypical manner (i.e., not from Patent Owner or one of Patent Owner’s current distributors) (Ex. 2011, 49:5–50:7, 50:8–16, 51:10–23, 51:25–52:6, 52:12– 19), and there is no evidence in the record to show that the lot of Xirallic® was intended for sale, rather than for experimental use only or for some other restricted use. Accordingly, we determine Petitioner has not demonstrated by a preponderance of the evidence that Sample C qualifies as prior art against the ’861 patent, and we determine that Petitioner has not shown by a preponderance of the evidence that the ’861 patent is unpatentable over the grounds relying on Sample C.” slip op. at 38
Patent outcomesUS 10,647,861 not shown unpatentable§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,647,861 - PTAB · Oct 14, 2025 · IPR2025-00688 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1–18 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“The mere existence of some relationship between a petitioner and another entity, however, is not sufficient to place that petitioner in privity with that entity. Google LLC v. DDC Technology, LLC, IPR2023-00707, Paper 27 at 37 (PTAB Oct. 25, 2023). Instead, that relationship must be related to an earlier lawsuit and be “sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit” or the evidence must show “the petitioner is simply serving as a proxy to allow another party to litigate the patent validity question that the other party raised in an earlier-filed litigation.” WesternGeco, 889 F.3d at 1319.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the art because it is consistent with the skill level reflected in the disclosures of the ’370 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “do[es] not, at this time, contend that any term requires construction,” and instead, states that “[a]ll terms have been accorded their plain and ordinary meaning.” Pet. 10 (citing Ex. 1002 ¶¶ 212–215). Patent Owner does not propose any constructions at this time. See generally Prelim. Resp. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“We are not persuaded by this argument. The Federal Circuit has instructed that [e]ntitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed. While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. Lockwood, 107 F.3d at 1571–72. Here, what “a POSITA would understand,” without disclosure in the specification, is insufficient to show written-description support. Prelim. Resp. 24. Thus, on this record, and for purposes of institution, Patent Owner has not shown that the Provisional Application provides sufficient support for adding the claimed genus to the coal. 3. Summary In sum, on this record, Patent Owner has not shown that either the Provisional Application or the Pre-2018 Applications provide sufficient written-description support for the challenged claims. As a result, we determine that the ’370 patent cannot claim priority to the Provisional Application. Thus, all asserted prior art qualifies as prior art.” slip op. at 25
Claim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 10,933,370 - PTAB · Oct 14, 2025 · IPR2025-00687 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1–8 and 10–18 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Based on the current record, we determine that the Petition is not time-barred. The ’370 patent was not part of the 2019 Delaware lawsuit that forms the basis of Patent Owner’s time-bar allegations. And, as Petitioner explains, when the ’370 patent was asserted in July 2024, Petitioner filed this request for inter partes review about seven months later, i.e., within the one-year period. Furthermore, Patent Owner does not allege which unnamed entity is in privity with Petitioner or provide any details of the relationship that establishes privity. Nor does Patent Owner direct our attention to record evidence that would support its allegations. Therefore, without more, we determine that the Petition is not time-barred.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“The current record supports that Petitioner’s combination of Vosteen589 with Starns and with Mass-EPA would have been “the mere application of a known technique to a piece of prior art ready for the improvement.” KSR, 550 U.S. at 401. Indeed, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id. Patent Owner does not allege that the combination was beyond the skill level of a person of ordinary skill in the art at the time of the alleged invention. See generally Prelim. Resp. Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a skilled artisan would have modified the teachings of the applied references. See KSR, 550 U.S. at 418.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,933,370 - PTAB · Oct 9, 2025 · IPR2025-00425 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“After reviewing the evidence of record, we are persuaded the instant Petition is not time-barred as to the Chem-Mod Purchasers. Generic indemnity agreements are insufficient, without more, to establish privity. 9 Petitioner asserts that the supply agreements between the Chem-Mod Purchasers and Chem-Mod expired in 2021. For the reasons discussed herein, we determine that the language of these agreements does not establish privity. In the event Patent Owner maintains its argument that the Chem-Mod Purchasers are in privity with Chem-Mod, the parties should address the legal impact, if any, of the expiration of these agreements on Patent Owner’s arguments. WesternGeco LLC, 889 F.3d at 1321 (a “contractual and fairly standard customer-manufacturer relationship regarding the accused product” does not suggest, “without more, that the parties were litigating . . . [an] IPR[] as proxies for the other.”). The only relationship alleged to exist between Chem-Mod, its affiliates, and the Chem-Mod Purchasers is that of a supplier-customer relationship. As part of that relationship, the parties entered into supply agreements that included an indemnification provision for the purchased products. Exs. 2037–2042 (discussed at Sur-reply 7–8). We acknowledge, but disagree with, Patent Owner’s argument that the terms of the indemnity “specifically targeted” the activities at the “heart of the alleged infringement.” Sur-reply 7–8. Rather, the indemnification language in these agreements appears to be standard and typical of supply agreements. See Ex. 2037, 26;10 Ex. 2038, 10–12; Ex, 2039, 10–12; Ex. 2040, 10–12; Ex. 2041, 10–12; Ex. 2042, 24–27. Such language, without more, “does not amount to a sufficiently-close relationship to warrant finding . . . privity.” WesternGeco LLC, 889 F.3d at 1321–22.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner does not point to any record evidence that suggests the parties to the Delaware Action adequately represented the Chem-Mod Purchasers’ interests or that the Chem-Mod Purchasers controlled, directed, or funded the Delaware Action. See generally Prelim. Resp.; Sur-reply. Nor does Patent Owner suggest that the indemnified Petitioners are acting as a proxy for Chem-Mod and its affiliates in this case. Thus, the relationship with Chem-Mod, its affiliates, and the indemnified Petitioners was not “sufficiently close that it can be fairly said petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit.” Google, IPR2023-00707, Paper 27 at 37. In sum, Petitioner bears the burden of demonstrating compliance with 35 U.S.C. § 312(a)(2) and § 315(b), but the current record does not provide sufficient reason to doubt Petitioner’s assertion that Chem-Mod was not “funding this petition, advising on strategy for this petition, or exercising any control over Petitioner’s decision to file the petition (or the arguments included therein).” Pet. 2; see also Reply 1–2. Indeed, the current record supports that the relationship between Chem-Mod and the Chem-Mod Purchasers was a standard supplier/customer relationship. Exs. 2037–2042. The evidence does not support that Chem- Mod negotiated a license on behalf of the Chem-Mod Purchasers or that the Chem-Mod Purchasers owned power plants that were at issue in the Delaware Litigation. Ex. 2009, 91; Ex. 2010, 107. Therefore, on this record, we determine that the relationship between Chem-Mod and the Chem-Mod Purchasers does not support that the Petition is time-barred.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 12 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’225 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner discusses the term “pyrolysis char” and states that, for the purposes of the Petition, it adopts and applies the Delaware court’s construction that “allow[s] for the pyrolysis char to be created within the combustor, so long as it is then present (and combusted) with the coal and the bromine compound.” Pet. 11–12 (citing Ex. 1071). Patent Owner does not appear to propose any express claim constructions. See generally Prelim. Resp. 7. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,589,225 - PTAB · Oct 9, 2025 · IPR2025-00424 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims, finding a reasonable likelihood of success on the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Petition is not time-barred as to the Chem-Mod Purchasers. Generic indemnity agreements are insufficient, without more, to establish privity. WesternGeco LLC, 889 F.3d at 1321 (a “contractual and fairly standard customer-manufacturer relationship regarding the accused product” does not suggest, “without more, that the parties were litigating . . . [an] IPR[] as proxies for the other.”). The only relationship alleged to exist between Chem-Mod, its affiliates, and the Chem-Mod Purchasers is that of a supplier-customer relationship. As part of that relationship, the parties entered into supply agreements that included an indemnification provision for the purchased products. Exs. 2037–2042 (discussed at Sur-reply 8–9). We acknowledge, but disagree with, Patent Owner’s argument that the terms of the indemnity “specifically targeted” the activities at the “heart of the alleged infringement.” Sur-reply 8. Rather, the indemnification language in these agreements appears to be standard and typical of supply agreements. See Ex. 2037, 26;10 Ex. 2038, 10–12; Ex, 2039, 10–12; Chem-Mod Purchasers are in privity with Chem-Mod, the parties should address the legal impact, if any, of the expiration of these agreements on Patent Owner’s arguments. 10 Exhibit 2037 is an agreement with WPL, who has recently been terminated from this inter partes review. See Paper 26. For purposes of this Decision, we have considered whether WPL is in privity with Chem-Mod Ex. 2040, 10–12; Ex. 2041, 10–12; Ex. 2042, 24–27. Such language, without more, “does not amount to a sufficiently-close relationship to warrant finding . . . privity.” WesternGeco LLC, 889 F.3d at 1321–22.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 12 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’225 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner discusses the term “pyrolysis char” and states that, for the purposes of the Petition, it adopts and applies the Delaware court’s construction that “allow[s] for the pyrolysis char to be created within the combustor, so long as it is then present (and combusted) with the coal and the bromine compound.” Pet. 10–11 (citing Ex. 1071). Patent Owner asserts that it “does not presently propose any constructions,” but notes the Board’s claim construction in IPR2020-00834, Paper 18 at 7–8, regarding the term “injecting a sorbent material comprising activated carbon into the mercury-containing gas downstream of the combustion chamber.” Prelim. Resp. 7. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION Based on the current record, and for the reasons explained above, we find Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. We, therefore, institute an inter partes review of all challenged claims on all asserted grounds. This Decision is not a final determination on the patentability of any challenged claim. Our view with regard to any conclusion reached in the foregoing could change upon further development of the record during trial. We remind the parties that any argument not raised in a Patent Owner Response to the Petition, or as permitted in another manner during trial, shall be deemed forfeited and/or waived even if asserted in the Preliminary Response. In re Google Tech. Holdings LLC, 980 F.3d 858, 862–64 (Fed. Cir. 2020) (holding an argument forfeited when not timely raised before the Board); In re NuVasive, Inc., 842 F.3d 1376, 1380–81 (Fed. Cir. 2016) (holding Patent Owner waived an argument addressed in the Preliminary Response by not raising the same argument in the Patent Owner Response). V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review is hereby instituted on all challenged claims of the ’225 patent based on the asserted grounds set forth in the Petition; and” slip op. at 41
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,589,225 - PTAB · Oct 6, 2025 · IPR2025-00423 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–29 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the asserted obviousness and anticipation challenges.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“After reviewing the evidence of record, we are persuaded the instant Petition is not time-barred as to the Chem-Mod Purchasers. Generic indemnity agreements are insufficient, without more, to establish privity. WesternGeco LLC, 889 F.3d at 1321 (“a contractual and fairly standard customer-manufacturer relationship regarding the accused product” does not suggest, “without more, that the parties were litigating . . . [an] IPR[] as proxies for the other.”). The only relationship alleged to exist between Chem-Mod, its affiliates, and the Chem-Mod Purchasers is that of a supplier-customer relationship. As part of that relationship, the parties entered into supply agreements that included an indemnification provision for the purchased products. Exs. 2037–2042 (discussed at Sur-reply 7–8).” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“In sum, Petitioners bear the burden of demonstrating compliance with 35 U.S.C. § 312(a)(2) and § 315(b), but the current record does not provide sufficient reason to doubt Petitioners’ assertion that Chem-Mod was not “funding this petition, advising on strategy for this petition, or exercising any control over Petitioners’ decision to file the petition (or the arguments included therein).” Pet. 2; see also Reply 2. Indeed, the current record supports that the relationship between Chem-Mod and the Chem-Mod Purchasers was a standard supplier/customer relationship. Exs. 2037–2042. The evidence does not support that Chem-Mod negotiated a license on behalf of the Chem-Mod Purchasers or that the Chem-Mod purchasers owned power plants that were at issue in the Delaware Litigation. Ex. 2009, 91; Ex. 2010, 107. Therefore, on this record, we determine that the relationship between Chem-Mod and the Chem-Mod Purchasers does not support that the Petition is time-barred.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11–12 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioners’ proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’430 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,668,430 - PTAB · Oct 6, 2025 · IPR2025-00422 · APJ Zhenyu Yang · IPR · Institution
Instituted IPR on claims 1–4 and 6–29 on all asserted grounds, finding a reasonable likelihood of prevailing on the asserted anticipation and obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityNot time barredDecided for petitioner
“Petition is not time-barred as to the Chem-Mod Purchasers. Generic indemnity agreements are insufficient, without more, to establish privity. WesternGeco LLC, 889 F.3d at 1321 (“a contractual and fairly standard customer-manufacturer relationship regarding the accused product” does not suggest, “without more, that the parties were litigating . . . [an] IPR[] as proxies for the other.”). The only relationship alleged to exist between Chem-Mod, its affiliates, and the Chem-Mod Purchasers is that of a supplier-customer relationship. As part of that relationship, the parties entered into supply agreements that included an indemnification provision for the purchased products. Exs. 2037–2042 (discussed at Sur-reply 8–9).” slip op. at 12
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“are unpatentable, which includes the burden of establishing that any reference upon which it relies constitutes prior art under 35 U.S.C. § 102. See 35 U.S.C. § 316(e); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576 (Fed. Cir. 1996) (holding that a patent challenger “bore the burden of persuasion . . . on all issues relating to the status of [the asserted reference] as prior art”). Here, because Petitioners initially show Downs-Boiler qualifies as prior art on its face, Patent Owner bears the subsequent procedural burden to produce evidence antedating the reference. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378–80 (Fed. Cir. 2015); Magnum Oil, 829 F.3d at 1375. Although the burden of production can be a shifting burden, the burden of persuasion is on Petitioners to ultimately prove “unpatentability by a preponderance of the evidence,” and that this burden never shifts to Patent Owner. Dynamic Drinkware, 800 F.3d at 1378.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 12 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioners’ proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’430 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,668,430
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.