- Meta Platforms, Inc. v. Mullen Industries LLCAdverse judgmentPTAB · Dec 19, 2025 · IPR2025-00745 · APJ Ken B Barrett · IPR · Adverse judgment
The Board denied Mullen Industries LLC’s motions to dismiss and entered adverse judgment on challenged claims 1, 2, 11, and 13 after their post-institution disclaimer.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“provide that “[a] party may request judgment against itself at any time during a proceeding,” and “[a]ctions construed to be a request for adverse judgment include . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018).” slip op. at 6
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Constitution that there exist a case or controversy to be adjudicated by a district court. See Sanofi-Aventis, 933 F.3d at 1372–73. The Board is not a district court or any other Article III court, and Patent Owner has not shown persuasively that Sanofi-Aventis supports its argument that dismissal, as opposed to adverse judgement, is appropriate.” slip op. at 3
NonePatents in suitUS 9,662,582 - Meta Platforms, Inc. v. Mullen Industries LLCAdverse judgmentPTAB · Dec 19, 2025 · IPR2025-00746 · APJ Ken B Barrett · IPR · Adverse judgment
The Board denied Mullen Industries LLC’s motion to dismiss and entered adverse judgment after institution for disclaimed claims 1–3 of U.S. Patent 10,974,151.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“We determine that Petitioner has the better position. Our rules provide that “[a] party may request judgment against itself at any time during a proceeding,” and “[a]ctions construed to be a request for adverse judgment include . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). “The application of the [adverse judgment] rule on its face does not turn on the patentee’s characterization of its own request.” Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018). In this case, Patent Owner, after the institution decisions, disclaimed the challenged claims such that there are no remaining claims in the trials. Patent Owner presents no persuasive reasons why we should not apply Rule 42.73 or why termination or dismissal is more appropriate. Under the IPR2025-00745 (Patent 9,662,582 B2) IPR2025-00746 (Patent 10,974,151 B2) circumstances of these cases, we construe the filing of disclaimers as requests for adverse judgment.” slip op. at 6
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“Constitution that there exist a case or controversy to be adjudicated by a district court. See Sanofi-Aventis, 933 F.3d at 1372–73. The Board is not a district court or any other Article III court, and Patent Owner has not shown persuasively that Sanofi-Aventis supports its argument that dismissal, as opposed to adverse judgement, is appropriate.” slip op. at 3
NonePatents in suitUS 10,974,151 - Silencerco Weapons Research, LLC v. Huxwrx Safety Co. LLCNo claims unpatentablePTAB · Dec 17, 2025 · IPR2024-01214 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 2, 3, 6, 9, 12–14, 18, and 20 were not shown unpatentable; the motion to amend was granted for substitute claims 23, 26, 27, 29, 30, 32, 33, 37–40, and 42, and denied for …
RulingsFinal written decision- Skill levelSkill level board ownOther
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The ’750 patent states that “the fluid pathway can be a radially serpentine fluid pathway which causes the fluids received in the off axis chamber to flow back and forth around a radius of the off axis chamber,” also using “radially serpentine fluid pathway” to refer to this rotation around the chamber radius “while also traversing a length of the off axis chamber.” Ex. 1001, 4:34–41 (emphasis added). This is the only description of “radially” serpentine flow in the ’750 patent. Notably, the ’750 patent does not use “radially” or “serpentine” to describe a fluid pathway “which causes the fluids to spiral around the central chamber within the off axis chamber along a length of the off axis chamber,” instead referring to such a fluid pathway as a “helical fluid pathway.” Id. at 4:41–44. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”); Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008) (“Different claim terms are presumed to have different meanings.”). Inst. Dec. 11–12. We explained that the flow path depicted above, which is equivalent to that of Figure 14 of the ’750 patent, “flows circumferentially about the central chamber.” Id. at 14. We maintain this interpretation. Stated differently, the depicted flow is around a longitudinal axis of the chamber. See MTA PG 6 (describing the flow path depicted above as “a back and forth flow path around a longitudinal axis of the off axis chamber; that is, a circumferentially serpentine pathway”); see also Ex. 2003 ¶ 40 (Dr. Neitzel describing the flow path depicted above as “a back and forth flow path around a longitudinal axis of the off axis chamber”). The flow is not around a radius of the chamber, which Patent Owner recognizes is required for a flow path to be radially serpentine. See PO Resp. 10 (“Patent Owner agrees with the Board’s conclusion in the [Institution Decision] that ‘radially serpentine’ as recited in the claims of the ’750 patent means a back and forth flow around a radius of the off axis chamber.” (citation modified)); PO Sur-reply 2 (agreeing that “radially serpentine” requires “a back and forth flow around a radius of the off axis chamber”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that neither Petitioner nor its witness, Mr. Nixon, has explained adequately how Thurler’s disclosure of its tube e being perforated for two thirds of its length “contemplates other lengths of perforations.” See Pet. 48; Ex. 1013 ¶ 212. Such conclusory assertions fail to apprise us of why an ordinarily skilled artisan would have been motivated to modify Thurler’s device in contradiction to Thurler’s explicit disclosure. We are also not persuaded by Petitioner’s proffered reasoning for modifying Thurler’s device. First, the modification is not a matter of design choice because the perforations allow the gases generated by firing the projectile to pass into the space between tubes e and g where they partially expand. See Ex. 1015, 1:84–91. Thus, modifying the number of perforations necessarily affects the flow of gases through the device. Next, neither Petitioner nor Mr. Nixon explains adequately how reducing the amount of perforation in tube e results in an increased fluid length. See Pet. 49; Ex. 1013 ¶ 213. Rather, although less fluid may enter into tube e with Petitioner’s modification, it appears that that fluid would travel the same distance along tubes e and h as in Thurler’s unmodified device. Finally, neither Petitioner nor Mr. Nixon explains adequately how limiting the amount of gases generated by firing the projectile from entering the expansion zones of tubes g and h provides any benefit. To the contrary, limiting the amount of gases in the manner suggested by Petitioner would reduce the suppression of such gases, resulting in a less effective device. Moreover, Thurler discloses that “there is still a space of a few millimeters between [tubes] e and g which is necessary” to prevent the application of “pressure on the projectile causing the same to deviate.” Ex. 1015, 1:106–2:3. Thus, Petitioner’s modification would not result in the passage of gases occurring only at the first three of Thurler’s tubular sleeves as asserted by Petitioner. Additionally, in the Institution Decision, we explained that Petitioner did not provide adequate reasoning to support the proposed modification of Thurler’s device regarding parent claim 1 to have concentric tubes around the central tube e. See Inst. Dec. 29–31. This shortcoming, which we maintain, carries through to dependent claim 6. Accordingly, for the foregoing reasons, Petitioner has not shown, by a” slip op. at 26
- ScopeMotion to amend granted in partGranted in part
“We agree with Petitioner that the amendment is broadening. Petitioner’s witness testified that he “wouldn’t call a BB gun a high energy device or a high energy weapon.” Paper 33, 18:4–6. Thus, per Petitioner’s witness, use of a BB gun would not be covered by claim 22, no matter what is discharged from the BB gun. However, if high energy material is discharged from that same BB gun, that use would be covered by proposed substitute claim 43 (assuming the other claim recitations were met). See id. at 21:10–12 (Dr. Neitzel agreeing that “if something produces a high energy material, it automatically is a high energy weapon”). Thus, by deleting “high energy device” and replacing that language with “weapon,” proposed substitute claim 43 impermissibly broadens the scope of claim 22. See Sisvel Int'l S.A. v. Sierra Wireless, Inc., 81 F.4th 1231, 1241 (Fed. Cir. 2023) (“But if a substitute claim ‘is broader in any respect it is considered to be broader than the original claim even though it may be narrower in other respects.’” (citation modified) (quoting Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999))); see also Lectrosonics, Paper 15 at 6 (“A patent owner may not seek to broaden a challenged claim in any respect that enlarges the scope of the claims of the patent . . . . Likewise, a proposed substitute claim may not remove a feature of the claim in a manner that broadens the scope of the claims of the challenged patent.”).” slip op. at 45
Patent outcomesUS 8,286,750 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,286,750 - MPL Brands NV, Inc. v. Buzzballz, LLCAll claims unpatentablePTAB · Dec 16, 2025 · IPR2024-01098 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–6 are unpatentable as anticipated by or obvious over Kick and as obvious over Ackermann and Kaminski, with or without Hutchinson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“(sometimes abbreviated herein as “POSITA”) would have had “(i) an associate’s or bachelor’s degree in mechanical, industrial or manufacturing engineering and (ii) at least two to three years of practical experience with designing or manufacturing mechanical products, such as food or beverage packaging. A POSITA could substitute additional education for industry experience and vice versa.” Pet. 15 (citing Ex. 1002 (Delson Decl.) ¶ 14).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner asserts that no claim term requires an express construction. See Pet. 15. We agree and find it unnecessary to construe any claim term to resolve the issues in this case. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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))).” slip op. at 13
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner
“is no earlier than the February 25, 2020, filing date of the ’195 application. Petitioner demonstrates by a preponderance of the evidence that the volume limitations recited in independent claim 1 and dependent claims 2 and 6 lack adequate written description support in the ’934 application as filed. See Pet. 10–11. The specification, figures, and claims of the ’934 application as originally filed do not disclose any volume limitations. See Ex. 1004 (’934 prosecution history), 1–17. Instead, the volume limitations recited in the challenged claims find their first support in Figure 7, which was filed over one month after the ’934 application was filed. Compare id. at 1–17, with id. at 34–56. The addition of new matter during prosecution of a patent application is prohibited. See 35 U.S.C. § 132(a) (“No amendment shall introduce new matter into the disclosure of the invention.”); see also 37 C.F.R. § 1.121(f); Manual of Patent Examining Procedure § 608.04. Therefore, we agree with Petitioner that “the new matter improperly added during the prosecution of the ’934 application cannot be considered part of the disclosure of the original, April 19, 2010 application and/or relied upon for claiming priority in subsequent applications.” Pet. 9.” slip op. at 20
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“obvious over Kick. Pet. 16–41. Kick published with the additional figures and disclosure the applicant submitted during prosecution of the ’934 application, and its detailed description and figures are the same as or similar to that of the ’904 patent. See id. at 16; compare Ex. 1007 (Kick), with Ex. 1001. Petitioner compares Kick to each limitation of the challenged claims. See Pet. 16–41. Based on the record before us, we find that Kick teaches or suggests each of the limitations of the challenged claims, for the reasons discussed in the Petition. See id. Accordingly, we determine that Petitioner has established by a preponderance of the evidence that Kick renders claims 1–6 of the ’904 patent unpatentable as anticipated and as obvious.” slip op. at 22
Patent outcomesUS 11,738,904 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,738,904 - Anker Innovations Ltd. v. Powermat Technologies Ltd.All claims unpatentablePTAB · Dec 5, 2025 · IPR2024-00994 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–7 and 9–14 are unpatentable as obvious over the asserted combinations of Onishi, Flowerdew, Baarman392, Partovi, and Tocci.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposed experience of two years in the field of wireless/inductive charging is a bit more specific than Petitioner’s proposal of three years of experience with circuits and “familiarity with power electronics and inductive power transfer circuits.” We, however, discern little material difference between the parties’ proposed definitions. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Even if the Specification identified “linear regulation/control as being a central aim” of the ’696 patent, Patent Owner has offered no persuasive reason why a linear-control-related limitation should be read into independent claim 1, and we decline to do so. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read claims in view of the specification, of which they are a part, we do not read limitations from the embodiments in the specification into the claims.” (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004))); cf. Ex. 1105, 40 (the District Court, in the parallel litigation, excluding a witness’s testimony that the “substantially different” term requires “allow[ance] for some incremental change (increase or decrease) in frequency while remaining in the near-linear/linear regions” because, inter alia, Powermat “fails to offer any particularized arguments explaining why the ‘allow[ance]’ construction is proper.” (alterations in original)). Patent Owner also relies on dependent claim 2, which depends from independent claim 1. PO Resp. 28–29. Dependent claim 2 adds to claim 1 the requirement that the driver be configured to increase and decrease the transmission frequency when a particular signal is received. See Ex. 1001, 28:47–54. Patent Owner asserts that this means that the driver is configured to increase/decrease the “substantially different” frequency, namely a frequency that lies within the near-linear region of a frequency-amplitude graph, and argues that, “[i]n reading claim 2 as a whole, a POSITA would understand that the ’696 Patent is directed to a linear control technique for predictably regulating power transfer.” PO Resp. 28–29 (citing Ex. 2006 ¶ 101). Even if dependent claim 2 called for linear control as Patent Owner appears to assert, we would not read such a limitation into the underlying independent claim. See Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999) (“The doctrine of claim differentiation . . . normally means that limitations stated in dependent claims are not to be read into the independent claim from which they depend.”); but see PO Sur-reply 4 (arguing for a narrower interpretation of independent claim 1 because it must be read in the context of the entire patent, which includes dependent claim 2). In light of the parties’ agreement and the Specification’s description” slip op. at 15
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Dr. Woods testifies that Onishi’s “Paragraph [0180] is unambiguous that FIG. 4 does not illustrate the frequency-response of a single coil in isolation, but instead illustrates the ‘resonance characteristics of the primary coil L1 and the secondary coil L2’ when the coils are brought in electromagnetic proximity of each other for charging—i.e., in an inductively coupled state.” Ex. 1101 ¶ 18. Dr. Woods, in support of his opinion, notes that Onishi’s legend for Figure 4 describes f0 as the “RESONANCE FREQUENCY IN LOAD-CONNECTED STATE.” Id. We find Dr. Woods’s testimony more credible than Dr. Mercier’s. We disagree with Patent Owner’s argument (PO Resp. 35) that Petitioner’s reliance on Onishi’s Figure 4 is misplaced, and we find that Figure 4 discloses a resonant frequency of the inductive couple between the primary and secondary coils, as recited in limitations 1.4 and 1.7.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not find Patent Owner’s arguments persuasive. We agree with Petitioner that Patent Owner’s arguments are incorrectly premised on a hypothetical combination involving the bodily incorporation of the two references’ specific structures. See Pet. Reply 17. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Rather, “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 his or her skill.” KSR Int’l Co., 550 U.S. at 417. Petitioner’s proposed combination is the application, to Onishi’s charging system, of Flowerdew’s general teaching of the technique of using an alignment mechanism in order to optimize the alignment of the inductive coils and to maximize the inductive coupling. See, e.g., Pet. 15 (“[A] POSITA would have been motivated to implement Onishi in a manner that includes an alignment mechanism as suggested by Flowerdew (e.g., a dished recess or other shaped surface feature, a directional logo/marker, or both) so that the primary and secondary coils would be more readily ‘optimized’ for alignment and the inductive ‘coupling is maximized.’”). Flowerdew teaches, for example, that, with the use of a dished charging surface, the secondary unit “tends to align in one axis” and “[t]his alignment is such that the coupling between a solenoid receive coil in secondary unit 304 and the charging coils of charger 302 is maximized.” Ex. 1005, 11:25–52. Petitioner, with the supporting testimony of Dr. Woods, contends, and we agree, that a person of ordinary skill in the art “would have been sufficiently skilled to implement [the proposed] combination given the predictable techniques disclosed in each reference and the relatively advanced state of the art at the time.” Id. at 17 (citing Ex. 1003 ¶ 55). We determine that Petitioner has shown that the proposed combination teaches or suggests the subject matter of limitation 1.3 and that Petitioner has set forth adequate and persuasive reasons with rational underpinning as to why a person of ordinary skill in the art would have modified Onishi’s system to utilize an alignment mechanism. We also determine, for the reasons stated by Petitioner, that a person of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination. See Pet. 16–17; Ex. 1003 ¶ 55.” slip op. at 23
Patent outcomesUS 9,048,696 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,048,696 - Salvacion USA, Inc. v. Trutek CorpAll claims unpatentablePTAB · Dec 2, 2025 · IPR2024-00711 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–3 and 8 are unpatentable as anticipated by Chen, Baker, Wahi ’005, and, for claims 1, 2, and 8, Rolf; the Board also finds them obvious over the asserted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s definition of a person of ordinary skill in the art (“POSITA”) as it was undisputed at the time and consistent with the evidence of record. Inst. Dec. 7–8. Based on our consideration of the full record, we maintain our determination that a POSITA at the time the application for the ’802 patent was filed “would have had at least an undergraduate degree in pharmacy, chemistry, biochemistry, biomedical engineering or a closely related field, such that the POSITA generally understand[s] pharmaceutical formulation.” Pet. 12. Additionally, we agree with Petitioner that “[a] POSITA would be familiar with the chemical ingredients in the [’802] Patent, biocidic agents, and cationic agents, have knowledge of airborne particles including viruses and bacteria, and understand electrostatic fields, electrostatic attraction and repulsion, adhesion and cohesion.” Id. (citing Ex. 1002 ¶¶ 38–39).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“of independent claims 1, 2, and 8 as limiting. Inst. Dec. 7–8. The parties do not dispute our construction of the preambles of claims 1, 2, and 8 as limiting. See generally PO Resp.; Pet. Reply 2–4. After consideration of the full trial record, we maintain our construction of the preamble of claims 1, 2, and 8 as limiting for the reasons set forth in our Institution Decision. Id. Briefly, the preamble of independent claims 1, 2, and 8 limits the challenged claims as both the preamble and the body are used to define the subject matter claimed. See Allen Engineering Corp., v. Bartell Industries, Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). In particular, the preamble is “necessary to give life, meaning and vitality” to the claim, see id., because it provides the only description in the claim for the application site of the formulation, i.e., “to skin or tissue of nasal passages,” and how the formulation is applied, i.e., “in a thin film.”” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“After consideration of the full trial record, we maintain our construction. From our perspective, the claims themselves support this construction as the claims expand upon the term “electrostatically inhibiting” with specific means for achieving such inhibition. Specifically, claims 1 and 2 recite electrostatically attracting the particulate matter, holding the matter in place, and inactivating the matter. Additionally, the Specification supports our construction as it describes the use of “an electrostatic field such that oppositely charged airborne particulates (including microorganisms) in the vicinity of the surface are electrostatically trapped, held thereto and one or more of the microorganisms so captured is neutralized, killed, inactivated, and rendered harmless.” Ex. 1001, 3:36–40; PO Resp. 10 n.6.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for petitioner
“We adopt the parties’ construction of “adequate impermeability” that has been accepted in the related district court litigation: “Adequate impermeability” refers to the “thin film holding harmful particles in place and inhibiting them from penetrating the thin film and contacting the skin or tissue of an individual’s nasal passages. This is done by varying the concentration of ingredients . . .[,] thereby adjusting the adhesion and cohesion of the thin film.” Pet. Reply 3 (quoting Ex. 1010, 17). Furthermore, as stated in our Institution Decision, along with that term, the claim language explains that the thin film is meant to stick to the skin or tissue and to hold the particulate matter in place. Inst. Dec. 9–10. The claim language also explains that the cohesion of the formulation is adjusted to provide adequate impermeability to the thin film. Thus, it is reasonable to consider the recited impermeability is a function of the cohesive properties of the thin film, and that such impermeability refers to a property of the thin film, i.e., inhibiting the penetration or passage of matter through it onto the skin or tissue at the application site.” slip op. at 10
Patent outcomesUS 8,163,802 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,163,802 - PTAB · Nov 21, 2025 · IPR2025-01055 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–18 were unpatentable as obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that any one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we deny institution of an inter partes review of the ’326 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors 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) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’326 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, which is supported with testimony of Dr. Easttom (Ex. 1004 ¶ 22–23), we apply the level of skill set forth above.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Claim 1 explicitly recites “partially,” not “fully” or “completely.” On its face, “partially” appears to have its plain and ordinary meaning, i.e., not completely. The use of “partially” in the subject limitation shows or at least strongly suggests that the claimed invention contemplates at least some frequency gap to remain between the first channel and the second channel. In addition, as argued persuasively by Patent Owner, this interpretation is further supported by claim 1’s requirement of “transmitting data subcarriers occupying the first channel, the second channel, and the frequency gap in parallel to a receiver”: [T]he “transmitting” step in claim 1 requires that the frequency gap be included in the transmitted signal. Inclusion of the frequency gap in the transmitted signal necessarily requires that the frequency gap be only partially filled -- but not fully filled -- with added data subcarriers at the time of transmission, because if the frequency gap were fully filled it would no longer exist at the time of signal transmission. Prelim. Resp. 23. Petitioner offers no explanation for how the language of claim 1 itself would allow for “partially” to encompass “completely.”” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“For all but one sentence of Petitioner’s arguments for how each of the subject combinations allegedly would have taught the Partially Filling Limitation as variously recited in claims 1, 16, and 18, Petitioner relies (implicitly) on a construction of “partially” that allows for completely filling the frequency gap between the first channel and the second channel, and alleges that the asserted combinations teach completely filling such gap. See Pet. 26–28 (Gardner and Mori), 64–67 (Mori, Lu, and Williams); Prelim. Resp. 25–29, 38–40 (Patent Owner agreeing that the asserted combinations teach only completely or fully filling the frequency gap.). We reject such a construction of “partially” as discussed above in Section III.C.2, and thus find Petitioner’s arguments unpersuasive.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,027,326 - PTAB · Nov 21, 2025 · IPR2025-00931 · APJ Georgianna W Braden · IPR · Institution
The Board denied institution on claims 1–27 because the Petition did not show a reasonable likelihood that any challenged claim would be unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim. 37 C.F.R. § 42.108(a). Applying those standards, and based on the record before us, we determine Petitioner has not demonstrated a reasonable likelihood of success in proving that any one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we deny institution of an inter partes review of the ’844 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“critical time. See generally Prelim. Resp. Patent Owner’s Declarant, Dr. Newman, states that for his analysis he uses the definition provided by Dr. Zadok. Ex. 2014 ¶ 13. We discern no meaningful difference between the definitions proffered by Petitioner or its Declarant. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’844 patent, the background technical field, the prior art, and Dr. Zadok’s unopposed definition of the ordinarily skilled artisan (Ex. 1003 ¶ 35), which is adopted by Dr. Newman (Ex. 2014 ¶ 13) and is consistent with the asserted prior art references, we apply the level of skill set forth by Dr. Zadok.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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))). Petitioner contends “that the challenged claims are obvious under any reasonable interpretation under the Phillips standard, and thus Petitioners submit that the Board need not resolve any express constructions.” Pet. 11 Patent Owner asserts “the Board should resolve this IPR under the plain-and ordinary-meaning standard without adopting any special constructions beyond what is necessary to address a concrete dispute.” Prelim. Resp. 11. Based on our review of the current record, we agree with parties that no express construction of any term is necessary to resolve this case.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner fails to offer sufficient explanation as to why a person of ordinary skill in the art would have combined the teachings of Sapuntzakis and Holzmann. Rather, Petitioner appears to argue that, based on the advantages described by Holzmann (Ex. 1007 ¶ 33), and using well-known techniques with unspecified predictable results, a person of ordinary skill in the art would have had sufficient reason to combine these disparate elements taught in the prior art references to render the challenged claims obvious. Pet. 23–24, 33. Yet, other than Petitioner’s cursory assertion of advantageously incorporating the memory module from Holzmann to provide a caching mechanism (Pet. 33), which cites equally cursory and unsupported testimony by Dr. Zadok (Ex. 1003 ¶¶ 329, 333, 336–355), Petitioner fails to identify what particular advantages or efficiencies would have prompted a person of ordinary skill in the art to combine Holzmann’s memory module with Sapuntzakis’s system.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,332,844 - PTAB · Nov 19, 2025 · PGR2025-00053 · APJ Susan L C Mitchell · PGR · Institution
The Board instituted PGR on claims 1–3 and 5–15, finding written-description and enablement challenges more likely than not to succeed, but not the obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324. Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)) and in consideration of the Petition and the cited evidence of record, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of claims 1–3 and 5– 15 of the ’773 patent, and therefore, we grant post-grant review for the reasons articulated below.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is sufficiently comprehensive to encompass the level of skill reflected in prior art relevant to the ’773 patent. It is reasonably clear that, in indicating that a POSA would have an advanced degree (like a Pet. 7. We have adjusted the claims challenged to only those that remain in effect following Patent Owner’s disclaimer. See Ex. 2003. 3 US 7,767,429 B2, issued Aug. 3, 2010 (the “’429 patent”; Ex. 1005). 4 Chao et al., Structure of Human Hyaluronidase-1, a Hyaluronan Hydrolyzing Enzyme Involved in Tumor Growth and Angiogenesis, 46 Biochemistry 6911–6920 (2007) (Ex. 1006). Ph.D.) and years of experience in analysis of protein structure, Petitioner is asserting that knowledge of proteins generally is sufficient to understand the types of problems encountered in the art and the prior art solutions to those problems, and the ordinary artisan need not have expertise specifically in hyaluronidases. See Pet. 16–17. Petitioner requires that the POSA would be able to apply key scientific concepts (e.g., biochemistry, recombinant biology, sequence analysis and protein modeling) to enzymes such as hyaluronidases. See id. At this stage of the proceeding and on the record before us now, we apply Petitioner’s proposed POSA level, which appears consistent with the level of skill shown in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“refers to a PH20 polypeptide that contains at least one amino acid modification, such as at least one amino acid replacement as described herein, in its sequence of amino acids compared to a reference unmodified PH20 polypeptide. A modified PH20 polypeptide can have up to 150 amino acid replacements, so long as the resulting modified PH20 polypeptide exhibits hyaluronidase activity. Typically, a modified PH20 polypeptide contains 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45, 46, 47, 48, 49, or 50 amino acid replacements. It is understood that a modified PH20 polypeptide also can include any one or more other modifications, in addition to at least one amino acid replacement as described herein. Id. at 47:8–22 (emphasis added). On this record, however, we find that the definition of “modified PH20 polypeptide” permits amino acid replacements in the PH20 polypeptide but only “so long as the resulting modified PH20 polypeptide exhibits hyaluronidase activity.” Ex. 1001, 47:13–15. Indeed, while some of the language in the above paragraph is permissive in nature, i.e.., describing the number of amino acid replacements a modified PH20 polypeptide “can have” or “[t]ypically . . . contains” or the other modifications the polypeptide “can include,” the phrase “so long as” is not. See Ex. 1001, 47:8–22. This distinction demonstrates that hyaluronidase activity is not an optional feature of a non-limiting example, but a requirement of the “modified PH20 polypeptide” defined and claimed in the ’773 patent. See Alynylam Pharms., Inc. v. Moderna, Inc., 138 F.4th 1326, 1333 (Fed. Cir. 2025) (explaining that the “contrast” between “non-limiting terms” and more definitive statements may indicate that the latter is definitional).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We determine that we need not expressly construe any other claim terms for the purpose of deciding whether to institute post-grant review. See 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)).” slip op. at 14
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 12,195,773 - PTAB · Nov 19, 2025 · PGR2025-00050 · APJ Susan L C Mitchell · PGR · Institution
The Board instituted PGR on claims 1–3 and 6–10 because Petitioner showed they were more likely than not to lack written-description support and enablement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324. Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)) and in consideration of the Petition and the cited evidence of record, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of claims 1–3 and 6– 10 of the ’791 patent, and therefore, we grant post-grant review for the reasons articulated below.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is sufficiently comprehensive to encompass the level of skill reflected in prior art relevant to the ’791 patent. It is reasonably clear that, in indicating that a POSA would have an advanced degree (like a Ph.D.) and years of experience in analysis of protein structure, Petitioner is asserting that knowledge of proteins generally is sufficient to understand the types of problems encountered in the art and the prior art solutions to those problems, and the ordinary artisan need not have expertise specifically in hyaluronidases. See Pet. 20. Petitioner requires that the POSA would be able to apply key scientific concepts (e.g., biochemistry, recombinant biology, sequence analysis and protein modeling) to enzymes such as hyaluronidases. See id. At this stage of the proceeding and on the record before us now, we apply Petitioner’s proposed POSA level, which appears consistent with the level of skill shown in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“refers to a PH20 polypeptide that contains at least one amino acid modification, such as at least one amino acid replacement as described herein, in its sequence of amino acids compared to a reference unmodified PH20 polypeptide. A modified PH20 polypeptide can have up to 150 amino acid replacements, so long as the resulting modified PH20 polypeptide exhibits hyaluronidase activity. Typically, a modified PH20 polypeptide contains 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44, 45, 46, 47, 48, 49, or 50 amino acid replacements. It is understood that a modified PH20 polypeptide also can include any one or more other modifications, in addition to at least one amino acid replacement as described herein. Id. at 47:4–18 (emphasis added). On this record, we find that the definition of “modified PH20 polypeptide” permits amino acid replacements in the PH20 polypeptide but only “so long as the resulting modified PH20 polypeptide exhibits hyaluronidase activity.” Ex. 1001, 47:9–11. Indeed, while some of the language in the above paragraph is permissive in nature, i.e.., describing the number of amino acid replacements a modified PH20 polypeptide “can have” or “[t]ypically . . . contains” or the other modifications the polypeptide “can include,” the phrase “so long as” is not. See Ex. 1001, 47:4–18. This distinction demonstrates that hyaluronidase activity is not an optional feature, but a requirement of the “modified PH20 polypeptide” defined and claimed in the ’791 patent. See Alynylam Pharms., Inc. v. Moderna, Inc., 138 F.4th 1326, 1333 (Fed. Cir. 2025) (explaining that the “contrast” between “non-limiting terms” and more definitive statements may indicate that the latter is definitional). Thus, the evidence of record shows the ’791 patent recognizes a broad understanding of a “modified PH20 polypeptide” as encompassing PH20 sequences from a variety of different mammalian species, with or without precursor or signal sequences, with or without post-translational modifications, and with up to 150 amino acid replacements. The express definition of “modified PH20 polypeptide” in the ’791 patent permits up to 150 amino acid replacements but only “so long as the resulting modified PH20 polypeptide exhibits hyaluronidase activity.” Ex. 1001, 47:9–11. That is, the provided definition of “modified PH20 polypeptide” in the ’791 patent expressly requires some hyaluronidase activity. On the current record, we therefore adopt the definition for “modified PH20 polypeptide” as recited in the ’791 patent to encompass polypeptides with some hyaluronidase activity. We determine that we need not expressly construe any other claim terms for the purpose of deciding whether to institute post-grant review. See 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)).” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateInstituted
“As we noted, on the current record claim 1 is reasonably interpreted to encompass PH20 polypeptides with some hyaluronidase activity. But even if we were to find that immunization using PH20 polypeptide as a contraceptive antigen serves to satisfy the utility requirement for the instant claims, there is a similar concern as to whether modified PH20 polypeptides with significant differences from the native protein as encompassed by claim 1 would maintain the antigenic determinants necessary to function as contraceptives. See Ex. 1003 ¶ 122. That the modified PH20 polypeptides would be homogenous in function is contradicted both by evidence in the ’791 patent itself and by Dr. Hecht and Dr. Parker. The ’791 patent discloses synthesis of 6,753 single amino acid mutations in residues 1‒447 of SEQ ID NO: 3. See Ex. 1001, 199:15–200:34. The ’791 patent teaches that just under 10% of these mutations, i.e. over 600, “exhibit activity that is increased compared to wildtype.” Id. at 233:1–2. Appendix A of Dr. Hecht’s Declaration shows 3,380 of these mutations were inactive, or 57.13%. See Ex. 1003, Appendix A-1, 171. Thus, the ’791 patent evidences that even when only a single mutation is made in the PH20 polypeptide, that single mutation is more likely than not to alter the structure in such a way as to inactivate the hyaluronidase activity found in the native PH20 polypeptide. On this record, Dr. Hecht persuasively demonstrates that when the full scope of claim 1 is addressed, which includes not just single mutations in the PH20 polypeptide, but also multiple mutations, there is no expectation of structural homogeneity, stating that “[i]ntroducing multiple amino acid changes simultaneously . . . could prevent the folding of sequences into secondary structures and structural motifs and can destabilize those structures if they do form.” Ex. 1003 ¶ 59. Dr. Hecht notes that claim 1 allows “up to 21 changes, with each additional change (except at position 309) being to any of 19 alternative amino acids. But the up to 21 changes also can be at any of 433 different positions.” Id. ¶ 129. Dr. Park calculates that the number of distinct polypeptides that meet the claimed criteria “is extremely large by all accounts, ranging from 1049 to 1060 distinct polypeptides.” See Ex. 1004 ¶ 161. Dr. Hecht characterizes the number of possible mutations as “astronomical in size.” Ex. 1003 ¶ 134.” slip op. at 20
Claim construction§ 112 disclosurePatents in suitUS 12,077,791
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.