- 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 - Integrated Dna Technologies, Inc. v. Tecan Genomics, Inc.Adverse judgmentPTAB · Aug 11, 2025 · IPR2024-01502 · APJ James A Worth · IPR · Adverse judgment
The Board granted the joint motion for adverse judgment after Patent Owner disclaimed claims 1–3, 5–11, and 14–17, and terminated the inter partes review.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Section 42.73 provides that “[a] party may request judgment against itself at any time during a proceeding. Actions construed to be a request for adverse judgment include: (2) Cancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). We agree that adverse judgment and termination are appropriate in view of the disclaimer because no challenged claim remains.” slip op. at 2
NonePatents in suitUS 9,546,399 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · Aug 1, 2025 · IPR2025-00442 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Patent Owner statutorily disclaimed all challenged claims, 1–20.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“May 22, 2025, after Petitioner filed its Petition, Patent Owner filed a statutory disclaimer, disclaiming claims 1–20 of the ’154 patent. Ex. 2001. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (explaining how Rule 42.107(e) operates in the case of a pre-institution disclaimer of all claims) (precedential). Because we cannot institute trial on disclaimed claims and Patent Owner has disclaimed all of the challenged claims, we do not institute an inter partes review of claims 1–20.” slip op. at 2
NonePatents in suitUS 11,627,154 - Wiz, Inc. v. Orca Security Ltd.Institution deniedPTAB · Jul 25, 2025 · IPR2025-00441 · APJ Garth D Baer · IPR · Institution
The Board denied institution because Patent Owner disclaimed all challenged claims 1–34.
RulingsInstitution decision- Adverse judgmentAdverse judgmentOther
“22, 2025, after Petitioner filed its Petition, Patent Owner filed a statutory disclaimer, disclaiming claims 1–34 of the ’798 patent. Ex. 2001. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (explaining how Rule 42.107(e) operates in the case of a pre-institution disclaimer of all claims) (precedential). Because we cannot institute trial on disclaimed claims and Patent Owner has disclaimed all of the challenged claims, we do not institute an inter partes review of claims 1–34.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“22, 2025, after Petitioner filed its Petition, Patent Owner filed a statutory disclaimer, disclaiming claims 1–34 of the ’798 patent. Ex. 2001. Under our rules, “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e); see Gen. Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (explaining how Rule 42.107(e) operates in the case of a pre-institution disclaimer of all claims) (precedential). Because we cannot institute trial on disclaimed claims and Patent Owner has disclaimed all of the challenged claims, we do not institute an inter partes review of claims 1–34. III. ORDER Accordingly, it is: ORDERED that the Petition is denied as to the challenged claims of the ʼ798 patent; and FURTHER ORDERED that no inter partes review is instituted.” slip op. at 2
NonePatents in suitUS 11,868,798 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00371 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 based on all petitioned grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) “would have had an undergraduate degree in materials science, manufacturing engineering, mechanical engineering, or equivalent knowledge, training, or experience, with two years of experience working in metallurgy.” Pet. 6 (citing Ex. 1003 ¶ 15). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’227 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“35 U.S.C. § 103(a) as obvious over Takagi and Cornette, citing the Declaration of Dr. Miles for support. Pet. 1, 6–49 (citing Ex. 1003) (Petitioner’s Ground 1A). a. Claim 1 Petitioner argues that Takagi and Cornette teach or suggest each recitation of claim 1. Pet. 6–31. Petitioner argues, for example, that the preamble of claim 1 is not limiting or, alternatively, imparts no structural distinction from Takagi. Id. at 20–23 (citing, e.g., Ex. 1003 ¶ 48). Petitioner further argues that Takagi and Cornette teach forming or hot stamping to arrive at their products. Id. at 23 (citing, e.g., Ex. 1016 ¶ 36 (Takagi referring to “form[ing]” its products shape); Ex. 1014, 9–11 (Cornette referring to “hot stamping”); Ex. 1003 ¶ 48. Petitioner argues that Takagi teaches a strip of base steel having a first and second side. Id. at 23–24 (citing, e.g., Ex. 1003 ¶ 49; Ex. 1016 ¶¶ 13, 36. Petitioner argues that Takagi teaches a coating that is a “diffusion layer” having five phases as depicted by Takagi Figure 2A and explained by Takagi Table 1 (Takagi Fig. 4). Id. at 24–30 (citing, e.g., Ex. 1003 ¶¶ 50–59; Ex. 1016 ¶ 20, Fig. 2A). Petitioner argues that Takagi alone or as modified by Cornette teaches a coating thickness greater than than 30 µm. Id. at 30–31; Ex. 1014, 9; Ex. 1016 ¶ 35; Ex. 1003 ¶¶ 60–61. Petitioner explains why a person having ordinary skill in the art would have had reason to combine teachings of Takagi and Cornette with a reasonable expectation of success. Pet. 11–20 (citing, e.g., Ex. 1003 ¶¶ 31–47; Ex. 1016 ¶¶ 19–37, 47; Ex. 1014, 9; Ex. 1025, 5:17–20; Ex. 1026, 7; Ex. 1034 ¶ 13; Ex. 1055 ¶¶ 2, 7, 14–15, 18, Fig. 3). Based on our review and consideration of the current record, we determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–31. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 would have been obvious over Takagi and Cornette.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Jul 23, 2025 · IPR2025-00370 · APJ Brian D Range · IPR · Institution
The Board instituted IPR of claims 1–30 on all twelve asserted obviousness grounds, finding a reasonable likelihood that POSCO would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–30 of the ’602 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’602 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions. Pet. 3. We do not discern a need to construe any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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” slip op. at 9
- BurdenInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that Takagi and Cornette teach or suggest each limitation of claim 1. See Pet. 6–33. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is obvious over Takagi and Cornette.” slip op. at 12
Claim constructioncites KSR · GrahamPatents in suitUS 10,961,602 - PTAB · Jul 22, 2025 · IPR2025-00255 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–27 and all petition grounds, finding a reasonable likelihood that claims 1, 23, and 27 are obvious over Wilcox, Londergan, Raskin, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Summary For the reasons discussed above, Petitioner has made sufficient showings at this stage of the proceeding that the Wilcox-Londergan-Raskin- Wu combination teaches or suggests every limitation in claims 1, 23, and 27 of the ’139 patent, that one of ordinary skill in the art would have had reason to combine those teachings and suggestions to arrive at the inventions recited in claims 1, 23, and 27, and that one of ordinary skill in the art would have had a reasonable expectation of success. Accordingly, Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges to claims 1, 23, and 27 based on the combination of Wilcox, Londergan, Raskin, and Wu. Accordingly, institution of an inter partes review is appropriate under 35 U.S.C. § 314(a).” slip op. at 33
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Dr. Terveen has provided its own definition . . . . 31. I believe Dr. Terveen’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’139 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“missing in the prior art. Prelim. Resp. 29–34. Limitations [1.4], [23.5], and [27.4] each recite: “wherein the first and second partial search strings are separated by a string separator character in the first search field.” Ex. 1001, 29:47–49, 31:33–35, 32:29–31. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a Boolean AND operator and/or a comma).” Pet. 25–26 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.17 Consequently, based on the 17 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’139 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 31; compare Ex. 1001, 30:19–22 (claim 6, “string separator character”), with id. at 31:22–26 (claim 22, Boolean “modifiers”). Moreover, Patent Owner persuasively argues that “a POSITA would not understand Boolean operators such as ‘AND’ to function as string separator characters” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 31 (citing Ex. 1059, 162; Ex. 2001 ¶ 110). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues:” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“one of ordinary skill in the art would have considered “reverting some of the changes that had been made to Lotus Notes R5’s ‘Search Builder’ to make it more similar to Lotus Notes earlier 3.0’s ‘Query Builder.’” Prelim. Resp. 16. The issue, however, is not whether “over the years Lotus Notes moved away from a unified search field[,]” as Patent Owner suggests. Id. at 14. The issue is what “inferences and creative steps” a person of ordinary skill in the art would have employed, based on Wilcox and Londergan, when designing a new method and system for search indexing. KSR, 550 U.S. at 418. Petitioner’s argument is that one of ordinary skill in the art would have been motivated to consider Wilcox and Londergan together in order to “obtain a more complete and comprehensive understanding of the Lotus Notes system,” which in turn would have inspired certain inferences and creative steps that would have resulted in the portions of the claimed invention allegedly disclosed in Wilcox and/or Londergan. Pet. 22. We do not agree with Patent Owner that this argument can only be the result of improper hindsight bias. See Prelim. Resp. 16–17. At this stage of the proceedings and based on the current record, we determine that Petitioner has sufficiently shown that a POSITA would have been motivated to combine Wilcox and Londergan.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,633,139 - PTAB · Jul 22, 2025 · IPR2025-00254 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that claims 1–20 are unpatentable under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“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.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of all challenged claims. We, therefore, institute an inter partes review of claims 1–20 on the grounds asserted in the Petition. B.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’490 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“art. Prelim. Resp. 30–34. Limitation [1.10] reads, “wherein the first and second partial search strings are separated by a string separator character in the first search field.” Ex. 1001, 30:8–10. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 23–24 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.16 Consequently, based on the current record, for the purposes of this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing. If Boolean modifiers are excluded from the definition of a “string separator character,” then the Londergan Search Bar and Search Builder features, which accept only Boolean operators, do not teach or suggest 16 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’490 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 32; compare Ex. 1001, 31:14–17 (claim 12, “string separator character”), with id. at 32:19–23 (claim 20, Boolean “modifiers”). Moreover, Patent Owner persuasively argues that “a POSITA would not understand Boolean operators such as ‘AND’ to function as string separator characters” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 32 (citing Ex. 1059, 162; Ex. 2001 ¶ 110). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the search incrementally to use a single-character string separator character, such as a plus sign, as was known in the art (e.g., EX1057, 60, 109, 129, 151), or a comma, as described by the Lotus Notes references (EX1059, 159-165), at least because a POSITA knew that a goal of the incremental search is to minimize the number of characters the user has to enter before obtaining the desired search results. Pet. 24 n.7. limitation [1.10].17 See Ex. 1061, 140–42. The Wilcox Search Bar similarly is limited to strings separated by a Boolean operator. See Ex. 1059, 160–62. The Wilcox Query Builder, however, does teach multiple search strings separated by a string separator character, specifically a comma. Id. at 163 (“If you want to search for documents that contain all of several words, type them in this box, separated by commas.”). Thus, while we do not accept all of Petitioner’s reasoning, there is evidence to support Petitioner’s overall argument that the proposed combination discloses multiple search strings separated by a string separator character, as we have preliminarily construed the term.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“extreme technical difficulties with even using incremental searches.” Prelim. Resp. 21, 25 (citing Ex. 1021, 126). Patent Owner argues that “[a] POSITA is not motivated to undertake a modification of the prior art with something that the art teaches would be difficult or impossible to do.” Id. at 21 (citing Natera, Inc. v. NeoGenomics Labs., Inc., 106 F.4th 1369, 1377–78 (Fed. Cir. 2024)). We do not interpret Raskin in this manner. Patent Owner points to a passage in Raskin stating, “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.” Ex. 1021, 126. There is a difference, however, between “difficult to implement” and “difficult to use.” For the end-user, Raskin concludes that “[f]rom the point of view of interface engineering, the advantages of incremental searching are so numerous and the advantages of delimited searches so few that I can see almost no occasions when a delimited search would be preferred.” Id. at 126 & n.7 (“A search is either incremental or excremental.”). It is reasonable to conclude that one of ordinary skill would have been motivated to choose a search method that offered numerous advantages to end-users. Finally, Patent Owner argues that “Raskin’s entire philosophy to user interfaces was incompatible with Lotus Notes.” Prelim. Resp. 22–25. According to Patent Owner, “Lotus Notes is all about centralized collaboration around documents, files, and file structures[,]” while Raskin “goes in a completely different direction, espousing the elimination of filenames and ‘hierarchical file structures’ including directories and folders.” Id. at 23 (citing Ex. 1021, 119). Patent Owner claims that modifying the Lotus Notes references with Raskin would “effectively render[] Lotus Notes’ functionality of hierarchical viewing of and responding to documents unusable.” Id. Petitioner, however, does not propose to incorporate Raskin’s views on hierarchical file structures into the combination of Wilcox and Londergan. It is not necessary for the entirety of Raskin’s teachings to be physically compatible with the Lotus Notes systems described in Wilcox and Londergan. Orthopedic Equip., 702 F.2d at 1013 (“Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference.”); In re Sneed, 710 F.2d at 1550. Raskin is cited for one purpose: its teachings regarding incremental search. On the current record, we find Petitioner has demonstrated that one of ordinary skill would have been motivated to modify the combination of Lotus Notes references according to those teachings in Raskin. slip op. at 23
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,552,490 - PTAB · Jul 22, 2025 · IPR2025-00253 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR on claims 1–10 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 10 are obvious over Wilcox, Londergan, Raskin, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“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.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’035 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“in the prior art. Prelim. Resp. 30–34. Limitations [1.4] and [10.4] both recite: “wherein the first and second strings are separated by a string separator character in the first search field.” Ex. 1001, 29:44–46, 30:41–43. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 26–27 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.17 Consequently, based on the current record, for the purposes of 17 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’035 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 31 (citing Ex. 1001, 8:45–59, 22:34–46). Moreover, Patent Owner persuasively argues that “a POSITA would not have understood Boolean operators like AND to be a string separator as used in the claims” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 31 (citing Ex. 1059, 162; Ex. 2001 ¶ 109). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“based on the fact that all three references “generally relate to searching.” See Prelim. Resp. 20. The fact that Raskin does not explicitly discuss searching across multiple files does not mean that there would be no motivation to combine Raskin with the Lotus Notes references. Although a conclusion of obviousness must be supported by findings and analysis establishing a reason to combine or modify the known elements in the manner proposed, the analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, [but] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. We conclude on the current record that Petitioner’s rationale for combining Raskin with the Lotus Notes references is not over-broad.” slip op. at 22
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,370,035 - PTAB · Jul 16, 2025 · PGR2025-00012 · APJ Debra L Dennett · PGR · Institution
Instituted PGR on claims 1–3 based on five grounds; the Board found each ground met the institution threshold on the preliminary record.
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). A post-grant review may also be instituted when “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” See id. § 324(b). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)) and in consideration of the Petition, Preliminary Response, and the 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 of the ’201 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“At this stage of the proceedings, neither Petitioner’s nor Patent Owner’s proffered definitions of the level of skill appear appropriate. Petitioner’s proposal requires as little as a bachelor’s degree in organic chemistry and two years of experience as a laboratory technician working on development of molecules with targeted biological activity, and an ambiguous “understanding” of certain processes. Patent Owner’s proposal, other the other hand, requires multiple years of both formal training and actual, practical experience in highly specialized fields that involve detection of optical or radiolabeled compounds and use of molecular imaging techniques such as PET and SPECT. For the purposes of this decision, on the record at this time, we find that a POSA would have had a Ph.D. in chemistry, biochemistry, or a comparable field or an M.D., and at least four years of experience in chemical synthesis of compounds that may be used to target biologically-significant tissues. This definition 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). The parties will have the opportunity to cross-examine Dr. Martin and Dr. VanBrocklin in this proceeding to develop a full record for us to determine the weight that each expert’s testimony should be given. We invite the parties to further brief the definition of a POSA here, and whether we should discount either experts’ testimony due to lack of qualifications.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“c) Analysis On the present record, we find that “low molecular weight” is not limited to Patent Owner’s proposed “from about 50 Daltons to about 1,500 Daltons.” The cited evidence relied on in the Pomper Declaration all concerns metabolomics and metabolites, and we find no reason that even a vague definition of metabolites applies to the claimed compounds. See Ex. 1002, ¶ 102. Moreover, the uncontested fact that several of the B moieties alone—without the A moiety or L linker—specifically identified in the ’201 patent fall outside of Patent Owner’s proposed definition is persuasive (see id., ¶ 103), as we normally do not interpret claim terms in a way that excludes examples disclosed in the specification. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would exclude disclosed examples in the specification). In addition, the opinion stated in the Pomper Declaration that “the term of ‘low molecular weight’ is well accepted in the chemical arts’” and the declarant “recognize[s] that low molecular weight compounds would have a molecular weight of typically form about 50 Daltons to about 1,500 Daltons” is offered by a co-inventor. We, as factfinder, have discretion to weigh the credibility of expert witnesses and to give each item of evidence such weight as appropriate. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). In this case, we find that the published references on metabolites do not support the opinion. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”) The Pomper reference (Ex. 1006) also uses the term “low molecular weight”—without further characterization of the term—and is uninformative as to the meaning of the term. See Ex. 2002, ¶ 60; Ex. 1006, ¶ 12. The table giving the molecular weight of a “selection of compounds disclosed by Pomper” (see Ex. 2002, ¶ 62) is not persuasive in defining “low molecular weight,” as it does not explain how those included were “selected” and does not include molecular weights for all of the examples.7 In addition, Patent Owner’s definition does not appear to apply to all claimed compounds.8 7 At least one of the examples (SRV73) not included in the table appears to have a molecular weight well over “about 1,500 Daltons.” 8 See, e.g., claim 113 of Ex. 1006. Patent Owner’s arguments distinguishing “low molecular weight” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“The ’201 patent defines “alkyl” as “a straight (i.e., unbranched) or branched chain, acyclic or cyclic hydrocarbon group, or combination thereof” “ that has “the number of carbon atoms designated (i.e., C1–C10 means one to ten carbons, including 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 carbons)” and “[i]n particular embodiments, the term ‘alkyl’ refers to C1-20 inclusive, including 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20 carbons” “unless otherwise stated.” Ex. 1001, 39:44–58. Although substituents at the R1x position in the claims are limited to “C1-6alkyl,” those at position R3x are not. Ex. 1001, Certif. Corr. Patent Owner’s representation that “Jansen I provides ‘the following definitions’ stating that ‘alkyls groups of this invention comprise from 1 to 6 carbon atoms’” is inaccurate. See Prelim. Resp. 19. In fact, Jansen I states: The term “alkyl” by itself or as part of another substituent refers to a fully saturated hydrocarbon of Formula CxH2x+1 wherein x is a number greater than or equal to 1. Generally, alkyl groups of this invention comprise from 1 to 6 carbon atoms. Alkyl groups may be linear or branched and may be substituted as indicated herein. When a subscript is used herein following a carbon atom, the subscript refers to the number of carbon atoms that the named group may contain. Ex. 1007, 22:16–23 (emphasis added). Neither the ’201 patent nor its incorporation by reference of Jansen I would have conveyed to a POSA that the “(CO)alkyl” of the substituent in the R3x position in the claims is intended to comprise from one to six carbon atoms or is limited to any particular length and size. “(C(O)alkyl,” having no number of carbon atoms designated, means” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,938,201
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.