- PTAB · Sep 9, 2025 · IPR2025-00389 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–22 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim would be shown unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen 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) (2025); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art for the ’498 patent “would have had a Bachelor’s Degree in Physics or an Engineering field relevant to battery technology (e.g., Electrical or Mechanical Engineering) and at least two years of industry experience in lithium-ion battery manufacturing and/or design.” Pet. 3 (citing Ex. 1003 ¶¶ 27–30).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe any claim terms require specific construction.” Pet. 10–11. Patent Owner states “no claim construction is necessary to deny institution because Patent Owner’s arguments for denial do not rely on the outcome of an actual controversy about claim interpretation.” Prelim. Resp. 10. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner may be correct that the invention Takemura discloses seeks to improve on the “conventional” design disclosed in Figures 8 and 9, and, as part of its description of its inventions, Takemura discloses a variety of benefits to its approach over the approach disclosed in Figures 8 and 9. However, that does not negate the teachings provided in Figures 8 and 9. “A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (emphases in original). As Petitioner explains, Sato discloses the use of tape, but does not provide details regarding its precise size and placement. See Pet. 34–39. Petitioner relies on Takemura for teaching how such tape would be sized and placed. Id. Indeed, Takemura teaches that such a placement was used in “conventional” lithium-ion batteries at the time. “It’s not necessary to show that a combination is “the best option, only that it be a suitable option.” Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Here, Petitioner only relies on Takemura for teaching how the tape disclosed in Sato would be sized and placed. Although Takemura might teach a different ultimate approach, that does not diminish Takemura’s teachings of a known size and placement that was conventionally used in the art. “[I]f 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, 550 U.S. at 417. Thus, we are not persuaded, on the current record, that Takemura teaches away from the particular combination that has been proposed.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,923,498 - PTAB · Aug 26, 2025 · IPR2025-00432 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen 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) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’148 patent. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Gido, Petitioner contends that an ordinarily skilled artisan for the ’148 patent “would have had at least a bachelor’s degree or equivalent degree from an accredited institution in chemistry, chemical engineering, materials science, or a similar discipline covering relevant principles of organic and inorganic chemistry, polymer processing, ceramic materials, and ceramic processing” and “three or more years of experience in electrochemical energy storage devices, lithium-ion battery technology, separators, characterizations and analyses of particle size, film thickness, and/or materials compositions, battery performance characterization, or other applications of polymer chemistry, ceramic chemistry, and ceramic processing.” Pet. 14. Petitioner additionally contends “[m]ore education could substitute for less experience, and vice versa.” Id. (citing Ex. 1003 ¶ 17). Patent Owner “adopts the definition proposed by the Petitioner.” Prelim. Resp. 14. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’148 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that our decision would be the same applying either party’s definition of a person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim terms require express construction.” Pet. 14–15. Patent Owner does not at this time address claim construction. See Prelim. Resp. 14–15. Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, there may be some claim terms below whose constructions that the parties may wish to address during trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has shown sufficiently that there would be a motivation to combine Murakami and Beard with a reasonable expectation of success. As Petitioner explains, Beard teaches particular benefits of its porous structure that a person of ordinary skill in the art would be motivated to combine with the teachings of Murakami. See Pet. 54–56. At this stage, Patent Owner’s counterarguments do not undermine this showing. To begin with, we note that Patent Owner appears to mischaracterize the combination as incorporating Beard’s cell structure into Murakami, when it is merely to incorporate Beard’s technique of closely packing inorganic particles in the cell walls into Murkami. Thus, at this stage and on the current record, Patent Owner’s arguments about alleged incompatibilities between Beard’s and Murakami’s particle size distributions, amounts of binder, and binding and dispersion processes are not persuasive. As for the contentions regarding Figure 2, we note that Petitioner does not rely on Figure 2, which appears to include the incorporation of fibers. Thus, it is unclear why the pore structure of Figure 2 would be relevant to the combination that Petitioner proposes. Finally, we find that Petitioner has shown sufficiently, on this record, that Petitioner has shown a reasonable expectation of success. As Petitioner and its expert explain, Beard and Murakami teach similar manufacturing techniques (which are also similar to the ’148 patent), and Beard and Murakami provide ample detail on how to implement their techniques. See Ex. 1003 ¶¶ 167–172; Ex. 1010 ¶¶ 57–60; Ex. 1005 ¶¶ 71–72. We find this level of detail adequate, at this stage, to show that a person of ordinary skill would have a reasonable expectation of success in making the combination. See Pfizer Inc. v. Apotex, Inc., 480 F.3d 1348, 1365 (Fed. Cir. 2007) (noting that “the expectation of success need only be reasonable, not absolute”).” slip op. at 37
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,575,148 - PTAB · Aug 25, 2025 · IPR2025-00631 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–9, 11–13, and 15–22 on all five asserted § 103 grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen 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) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’027 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., 1–3, 5, 7–9, 11–13, and 15–22) of the ’027 patent, based on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have “possessed an undergraduate degree in chemistry, polymers, materials science, chemical engineering (or related field) and one to two years of experience with constructing and manufacturing tires, tire patches, tire decals/stickers and/or the like.” Pet. 8 (citing Ex. 1003 ¶¶ 6–11). According to Petitioner, “Additional education could compensate for less practical experience. Conversely, additional practical experience could compensate for less education.” Id. Patent Owner does not provide an alternate definition, but, “Patent Owner does not acquiesce to, and reserves the right to address, [Petitioner’s] definition of a POSA.” Prelim. Resp. 6 n.6. Petitioner’s proposed definition appears to be consistent with the disclosure of the ’027 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“We disagree with Patent Owner’s contentions that these disclosures indicate that Wilson’s patch would not meet the construction of “barrier material composition.” None of these disclosures even suggests that the base of Wilson’s patch is rigid as Patent Owner suggests. To begin with, the fact that the housing is “more rigid” provides no information about the absolute rigidness of the patch. See Ex. 1009, 9:16–21. As for the disclosure that the patch is contoured (id. at 3:35–67), Patent Owner provides only attorney argument to support its contention that the contour demonstrates that Wilson’s patch must be so rigid that it cannot be meet the claim limitation. In contrast, Petitioner demonstrates that Wilson discloses using the exact same materials described in the challenged patent (see Ex. 1001, 6:33–58 (noting “[e]lastomeric materials useful for forming the intermediate layer 24 include but are not limited to gum rubber, vulcanized natural rubber SBR . . . or comparable materials”); Ex. 1009, 3:49–55 (noting the patch may be constructed from natural rubber (NR), a preferred mixture of chlorobutyl rubber and natural rubber (CR/NR), or a preferred mixture of SBR and natural rubber (SBR/NR)), and provides detailed testimony from its expert to support its contentions (see Ex. 1003 ¶¶ 114–119). On the current record, we find Petitioner’s reasoning and evidence to be persuasive, and find that Petitioner has shown sufficiently that Willson discloses or teaches this limitation.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,124,027 - Fox Factory, Inc. v. Sram, LLCAll claims unpatentablePTAB · Aug 4, 2025 · IPR2024-00492 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–3, 7, 8, and 10–12 are unpatentable over Yi, JP’279, and Nagai; the Board did not reach the Fox-based grounds.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Based on the full record, we find that Patent Owner’s proposed level of ordinary skill in the art is consistent with the ’207 patent and the asserted prior art. PO Resp. 17 (citing Ex. 2016 ¶ 48). Our analysis below, however, would not change if we applied Petitioner’s proposed level of ordinary skill in the art, because it specifies experience in design work related to bicycle suspension technology, instead of the more general design of vehicle components or like technology.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner’s declarant has a Ph.D. in Mechanical Engineering with “over 30 years of experience in teaching and directing research related to mechanical engineering and precision machine design.” Ex. 1003 ¶ 4. Based on the full record, we find that his experience “related to mechanical engineering and precision machine design” sufficiently meets or exceeds “experience in design of vehicle components or like technology,” as proposed by Patent Owner (PO Resp. 17). Petitioner’s declarant would, thus, be a person of ordinary skill in the art under either party’s proposed level of ordinary skill in the art. Therefore, we see no reason to give less weight to the opinions of Petitioner’s declarant. See also Tr. 39:21–40:22 (confirming that the argument is about how much weight to give to the testimony).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[n]o terms need construction to resolve the controversy in this forum.” Pet. 8 (citing Ex. 1003 ¶ 32). “Patent Owner agrees that the ’207 Patent’s claim terms require no special claim construction.” PO Resp. 16. Based on the full record, we determine that express claim interpretation is not necessary to resolve the parties’ dispute. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“d) Petitioner’s Asserted Reason for Combining Petitioner argues that Yi, JP’279, and Nagai are in the same technical field. Pet. 70 (citing Ex. 1006, code (57), 1:7–8; Ex. 1007, 1; Ex. 1008, 1:10–13). We agree, and find, that Yi, JP’279, and Nagai are in the same field of endeavor. Ex. 1006, code (57), 1:7–8; Ex. 1007, 1; Ex. 1008, 1:10– 13. Patent Owner does not dispute that the references are analogous art. See PO Resp.” slip op. at 22
Patent outcomesUS 7,147,207 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,147,207 - Fox Factory, Inc. v. Sram, LLCAll claims unpatentablePTAB · Aug 4, 2025 · IPR2024-00491 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–4, 6, 8, 10, 12, 14–18, 20, 22, 24, 26–29, 31, 33–38, 40, 42, 44, 46–49, 51, 53, and 56–64 are unpatentable as obvious over Denk and Moechnig, with Schroeder for claims 31, 51, …
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Both parties’ proposals require a Bachelor’s degree or a Master’s degree in Mechanical Engineering but differ on the number of years of experience (“1–2 years of experience” versus “three years’ experience”) and from where the experience comes (“design work related to optimal mechanical and structural design” or “design of mechanical elements and structures” versus “vehicle component design and like technology” or “design of vehicle components or like technology”). Pet. 8; PO Resp. 14. Based on the full record, we find that Patent Owner’s proposed level of ordinary skill in the art is consistent with the ’993 patent and the asserted prior art. PO Resp. 17 (citing Ex. 2016 ¶ 48). Our analysis below, however, would not change if we applied Petitioner’s proposed level of ordinary skill in the art, because it specifies experience in “optimal mechanical and structural design,” which would be a part of the “design of vehicle components and like technology.”” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Petitioner’s declarant has a Ph.D. in Mechanical Engineering with “over 30 years of experience in teaching and directing research related to mechanical engineering and precision machine design.” Ex. 1003 ¶ 4. Based on the full record, we find that his experience “related to mechanical engineering and precision machine design” sufficiently meets or exceeds “experience in design of vehicle components or like technology,” as proposed by Patent Owner (PO Resp. 14). Petitioner’s declarant would, thus, be a person of ordinary skill in the art under either party’s proposed level of ordinary skill in the art. Therefore, we see no reason to give less weight to the opinions of Petitioner’s declarant. See also Tr. 39:21–40:22 (confirming that the argument is about how much weight to give to the testimony).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner states that “[n]o terms need construction to resolve the controversy in this forum.” Pet. 9 (citing Ex. 1003 ¶ 30). We did not need to interpret expressly any claim term for institution. Inst. Dec. 14. “Patent Owner agrees that the ’993 Patent’s claim terms require no special claim construction for purposes of denying this Petition.” PO Resp. 13. Petitioner states that “a vertical plane of travel of the bicycle” and “a thickness of the wall at any point in the lower section of the body varying as a function of the cross-sectional angle of the point relative to the plane of travel” have been construed in related litigation. Pet. Reply 2–5 (citing Ex. 1001, 1:8–14, Fig. 1; Ex. 1024 ¶¶ 18, 20, 22, 24, 52–53; Ex. 1025, 8, 10; Ex. 2021 ¶ 43). Petitioner, however, contends that “the Board need not expressly construe these terms.” Id. at 2. Based on the full record, we determine that express claim interpretation is not necessary to determine whether Petitioner shows a reasonable likelihood of prevailing. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(c) Petitioner Shows a Motivation to Combine Because Petitioner cites a portion of Denk that states, “for the same overall strength and rigidity, the weight may be reduced, or for the same weight, the strength and rigidity may be significantly increased in the load direction specified by the design,” we find that Denk provides a motivation to use its tubular component in the bicycle of Moechnig. Pet. 13–14; Ex. 1006, col. 2. We also credit Petitioner’s testimonial evidence regarding the motivation to combine because the record supports it. Ex. 1003 ¶ 57; Ex. 1006, cols. 1–2; Ex. 1007, 1:10–14; Ex. 1008 ¶¶ 1, 9, 49; Ex. 1010, 6:22–26. The record shows that lightweight components were desirable. See, e.g., Ex. 1006, col. 1; Ex. 1008 ¶ 1. We also agree with Petitioner that one of ordinary skill in the art would have reduced weight or improved strength relative to Moechnig, because Denk describes reducing weight or increasing strength as “specified by the design,” indicating that it is a matter of ordinary skill in the art to achieve less weight or more strength when applying Denk to Moechnig. Ex. 1006, col. 2. how Denk combined with Moechnig would have reduced weight or increased strength, because Denk itself indicates it would have done so. PO Resp. 24–25; Ex. 1006, col. 2 (“for the same overall strength and rigidity, the weight may be reduced”). We also do not agree with Patent Owner that “Denk provides no indication that it would be more lightweight than a standard steerer tube with equal wall thickness and circular profile,” because Denk provides an indication. PO Resp. 25; Ex. 1006, col. 2. Based on the full record, Petitioner persuades us, and we determine, that one of ordinary skill in the art would have been motivated to combine Denk and Moechnig.” slip op. at 26
Patent outcomesUS 10,328,993 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,328,993 - Abbott Laboratories / Abbott Diabetes Care Inc. v. Altivera LLCAll claims unpatentablePTAB · Jul 15, 2025 · IPR2024-00425 · APJ Bach V Hoang · IPR · Final written decision
Claims 1–3, 5, 9, and 10 are unpatentable as obvious over Beck, Heller, and Lovejoy; the Board did not reach the alternative Bandy grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment. See generally PO Resp. Having considered the record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposal comports with the level of skill necessary to understand and implement the teachings of the ’307 Patent. Accord Inst. Dec. 8–9.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“both the unique sensor ID as well as the associated unique wireless device ID is contradicted, or at least unsupported, by the claim language and the Specification. We determine that this limitation does not require authentication of both the unique sensor ID and the unique wireless device ID, or otherwise require authentication using the unique wireless ID. Rather, the limitation only requires authentication of the unique sensor ID. The language and structure of the claim itself, “the remote server authenticates said unique sensor ID associated with said unique wireless device ID,” requires authentication of the unique sensor ID but not the unique wireless device ID. See Ex. 1001, 19:51–52 (emphasis added). The portion of the limitation reciting “associated with said unique wireless device ID” is linguistically an appositive modifying the “unique sensor ID.” Indeed, Patent Owner acknowledges the “plain meaning of the claim term is that the remote server authenticates the unique sensor ID and that such unique sensor ID is associated with a unique wireless device ID.” PO Resp. 18.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Patent Owner does not contest Petitioner’s proposed constructions of any of these other claim terms or phrases. PO Resp. 24. We agree with the parties that the identified limitations—which each recite a “means” or “means for” performing a particular function—are means-plus-function limitations that should be interpreted under pre-AIA 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (holding that “use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). And we agree with Petitioner’s uncontested identification of the recited functions and corresponding structure for these limitations for the reasons explained by Petitioner. See Pet. 11–15 (citing Ex. 1001, 2:20–21, 2:24–28, 3:33–36, 17:18–30); id. at 13–15 (citing Ex. 1009, 9:4–6, 9:19–20, 9:57–65, 10:10– 11) (explaining that Lovejoy is incorporated by reference into the ’307 Patent). We adopt the uncontested constructions identified by Petitioner, as” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We agree with Petitioner that the improvements offered by the incorporation of Heller’s teachings would have motivated one of ordinary skill in the art to combine the teachings of Beck and Heller in the manner proposed by Petitioner. Confirming Petitioner’s assertion that the combination yields improvements, Heller states that it improves the type of glucose monitor used in one of Beck’s embodiments. Beck states that its “medical device 130 includes a glucose meter” which “measure[s] blood glucose levels of blood applied to test strips.” Ex. 1007 ¶ 34. Specifically addressing such “conventional” test strip glucose monitoring, Heller states that its in vivo glucose sensor system addresses a need for continuous or automatic monitoring in a small, comfortable device. Ex. 1016, 2:1–7, 2:15–58, 3:19–25. As such, we agree that a person of ordinary skill in the art would have been motivated to combine the teachings of Beck and Heller to improve Beck’s medical device. See KSR, 550 U.S. at 401. We further agree with Petitioner that a POSITA would have been motivated to incorporate sensor implementation details described in Heller, e.g., an A/D converter and patient attachment systems, with Beck’s medical device. Pet. 44–45, 53, 55; Ex. 1003 ¶¶ 228, 234, 236–238, 259, 267, 278, which do no more than yield predictable results, e.g., converting signals or attaching a sensor to a patient. See KSR, 550 U.S. at 401 (“[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).” slip op. at 20
Patent outcomesUS 7,969,307 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 7,969,307 - Interactive Communications International, Inc. v. Blackhawk Network Inc.All claims unpatentablePTAB · Jul 14, 2025 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–10 and 12–24 as obvious over Szrek and Llach, and claim 11 as obvious over Szrek, Llach, and Gilmore.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶¶ 13–14).9 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19 (citing Pet. 2–3). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’451 patent and the prior art of record. See Inst. Dec. 14; see Okajima v. 9 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084 (Pet. 2–3 (citing Ex. 1008, 11)), and IPR2023- 01235 (see IPR2023-01235, Paper 34 at 12–13). Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We need not construe “transaction processor” expressly because its meaning is not in dispute and its construction is not necessary to resolve the controversy before us.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“On balance, we find that even with the alleged disadvantages identified by Patent Owner, one of ordinary skill in the art would have been motivated to modify Szrek with Llach’s third-party transaction processor because the advantage of having a “centralized intermediary” allows Szrek’s system to support different game providers, such as different lottery companies, which would reduce some implementation costs and allow the system to be more easily and cheaply extended. Pet. 47 (citing Ex. 1003 ¶ 181); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”) (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)); see also Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 795 (Fed. Cir. 2021) (stating the same). We acknowledge that the combination comes with some disadvantages, including “add[ed] delay, reduce[d] efficiency, and . . . implementation complexities by converting a simple, direct communication exchange into an exchange that traverses multiple systems.” PO Resp. 52 (citing Ex. 2052 ¶ 163). But, “[t]he fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.” Winner, 202 F.3d at 1349 n.8. Here, Szrek expressly teaches indirect communication as a possible implementation of its system and Petitioner’s combination—employing Llach’s third-party transaction processor as part of the indirect communication channel—offers the attractive benefit of allowing Szrek’s system to support different game providers, which would reduce some implementation costs even if it might increase other costs, e.g., by having to program certain components (e.g., the cash registers) differently. Specifically, we find that the ability to expand Szrek’s system to support different game providers provides advantages that outweigh the disadvantages discussed above in the circumstance where one desires a more robust and comprehensive system. See Pet. Reply 23 (noting three advantages of the combination— (1) “allow[ing] Szrek’s system to use ‘a centralized system for activating lottery tickets from different retailers and different locations,’” (2) “allow[ing] support for different game providers, such as different lottery companies,” “reduc[ing] implementation costs,” and (3) “allow[ing] Szrek’s system to ‘communicate with individual card” slip op. at 37
Patent outcomesUS 11,488,451 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - PTAB · Jun 23, 2025 · IPR2025-00260 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1 and 11–14 on all asserted grounds and consolidated the proceeding with IPR2024-01357.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In our Institution Decision in IPR2024-01357, we analyzed claim 1 of the ’678 patent in light of Basin-2007 and Basin-2005. ’1357 IPR, Paper 17, 23–28. We concluded, after reviewing the arguments presented there, that “Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Basin-2005 and Basin-2007 render claim 1 unpatentable as obvious.” Id. at 28. In this proceeding, Petitioner has presented a challenge to claim 1 based on those same references that it represents is a “verbatim” copy of its previous challenge to claim 1 in the ’1357 IPR. Pet. 1–2, 28–35. Petitioner supports its challenge with expert testimony. Ex. 1002 ¶¶ 107–125.7 Patent Owner has not submitted a response on the merits of this challenge. For the purposes of this Decision, and for the reasons given in the Petition, we adopt the analysis in our Institution Decision in the ’1357 IPR (at pp. 23–28), where we determined that Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1 based on Basin-2005 and Basin-2007. Turning now to Petitioner’s challenge to claim 11, Petitioner relies on Basin-2007 and Stokes for the particle size limitations added to claim 1 by that dependent claim. Pet. 35–39. Thus, Petitioner asserts that “Basin-2007 discloses a light scattering material with an average TiO2 particle size that is ‘sub-micron’ (less than 1000 nm).” Id. at 37 (citing Ex. 1005 ¶ 5). 7 Exhibit 1002 appears to be a duplicate copy of Dr. Doolittle’s declaration from the ’1357 IPR. Petitioner concludes, “Basin-2007 renders obvious claim 11 by literally disclosing the selection of average particle sizes that preferentially scatter blue light.” Id. Further, “to the extent that the claim language ‘an average particle size that is selected such that [it preferentially scatters blue light]’ requires an average particle size selected for that reason (rather than an average particle size that leads to that outcome), this claim element is rendered obvious by Stokes.” Id. at 38 (citing Doolittle Decl. ¶ 45) (alterations in original). Petitioner explains that “Stokes explicitly discloses the selection of an average particle size ‘such that the particles preferentially scatter blue . . . LED light as compared to yellow . . . light from the luminescent material.’” Id. at 38 (citing Ex. 1008, 7:1–4) (alterations in original). Petitioner provides a motivation for combining Stokes with Basin- 2007 with a reasonable expectation of success. Pet. 38–39. Petitioner explains that “[t]o the extent that claim 11 is understood to also claim the basis for selecting a particular average particle size, a [person of ordinary skill] would have had reason to use such a basis for selecting average particle size as taught by Stokes.” Id. at 38 (citing Doolittle Decl. ¶¶ 46–48). Further, “a [person of ordinary skill] would have been motivated to apply this principle to Basin-2007, because it would increase the conversion of blue light to yellow light and improve the uniformity of the light source.” Id. at 39 (citing Doolittle Decl. ¶ 48). At this stage, Patent Owner does not provide an opposition to Petitioner’s evidence or arguments on the merits. For the reasons given by Petitioner, including those summarized above, we determine that Petitioner” slip op. at 6
- Director reviewOther
“On June 12, 2025, the Acting Director issued a decision denying the request and referring the Petition to the Board “to handle the case in the normal course, including by issuing a decision on institution addressing the merits and other nondiscretionary considerations, as appropriate.” Paper 16, 3. The Acting Director further instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Id.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As noted supra, the Acting Director of the USPTO has instructed the Board, “[a]bsent extraordinary circumstances, the Board shall consolidate this proceeding with IPR2024-01357.” Paper 16, 3. Due to the similarity of the parties, counsel, subject matter, and asserted prior art between IPR2024- 01357 and this proceeding, and in view of the Acting Director’s guidance, we exercise our discretion to consolidate this proceeding with IPR2024- 01357. See 37 C.F.R. § 42.122(a).” slip op. at 8
NonePatents in suitUS 8,604,678 - Nuvei Technologies, Inc. v. Autoscribe CorporationInstitution deniedPTAB · Jun 12, 2025 · IPR2025-00089 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Nuvei did not show a reasonable likelihood that claims 1–27 would have been obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“providing” negative limitation of independent claim 1, and the similar negative limitations of independent claims 8, 15, 23, and 25. Accordingly, Nuvei has not shown a reasonable likelihood that it would prevail on its assertions that the subject matter of independent claims 1, 8, 15, 23, and 25 would have been obvious over the combined teachings of Stringfellow and Kloster.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art “would have had at least (1) an undergraduate degree in electrical engineering, computer engineering, computer science, or comparable field of study, and (2) at least two years’ experience working with and programming networked computer systems.” Pet. 9 (citing Ex. 1005 ¶ 36). Nuvei also argues that “[a]dditional education might substitute for some experience, and vice versa.” Id. In the Preliminary Response, Autoscribe does not address the level of skill in the art. See Prelim. Resp. Accordingly, for purposes of this Decision, we adopt Nuvei’s proposed assessment of the level of ordinary skill in the art because it is consistent with both the ’621 patent and the asserted prior art, and it is supported by the testimony of Dr. Almeroth.” slip op. at 13
- Expert testimonyPetitioner expert discountedDecided for patent owner
“The supporting testimony from Nuvei’s declarant, Dr. Almeroth, on these issues fare no better. Dr. Almeroth provides no additional explanation beyond the arguments and evidence presented in the Petition to support Nuvei’s assertion that Kloster does not provide the payment data token to the payer during its token retrieval functions. See Ex. 1005 ¶ 100.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“argument that Kloster does not teach the “without providing” negative limitation required by each independent claim. Nuvei appears to contend that Kloster teaches this limitation in two different ways—namely, through either a “call back URL” or “API calls by the merchant.” Pet. 50–51 (emphasis omitted) (quoting Ex. 1008 ¶¶ 15, 23) (citing Ex. 1008 ¶ 24). We address Nuvei’s contentions in turn.” slip op. at 21
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,620,621 - PTAB · Jun 11, 2025 · IPR2025-00148 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–20 on both §103 grounds, finding a reasonable likelihood that the claims would have been shown obvious over Doughty and Van Boucq, with or without Maginnis.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedOther
“Petitioner’s proposed definition appears to be consistent with the disclosure of the ’947 patent, and we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may “reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We find that Petitioner has shown a sufficient motivation to combine. Although Patent Owner is correct in its description of the respective inventions of Doughty and Van Boucq, we do not see how the particular differences of the overall systems matter or would dissuade a POSITA from combining the particular teachings that Petitioner identifies. As Petitioner explains, these references are in same field of endeavor—tracking users for internet advertising, and Petitioner does not propose wholesale incorporation of the system of Van Boucq into Doughty—and therefore qualify as prior art to the ’947 patent and can be combined to show obviousness. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Petitioner proposes using certain teachings from Van Boucq’s system to improve certain aspects of Doughty. Thus, on this record, we find Petitioner has shown an adequate motivation combine and do not find Patent Owner’s arguments diminish that showing.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“G. Balancing the Fintiv Factors A holistic balancing of the Fintiv factors weighs against discretionary denial. As discussed above, Factors 2 and 3 weigh heavily against denial. Factors 4 and 6 weigh marginally against denial, Factors 1 is neutral, and Factor 5 weighs against denial. Thus, on balance, the evidence of record weighs against exercising our discretion to deny institution of inter partes review.” slip op. at 47
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,556,947
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.