- Merck Sharp & Dohme LLC v. The Johns Hopkins UniversityAll claims unpatentablePTAB · Sep 18, 2025 · IPR2024-00625 · APJ Deborah Katz · IPR · Final written decision
Claims 1–8 are unpatentable: claims 1–4 and 6–8 are anticipated by MSR, and claim 5 is obvious over MSR with the additional marker-testing teachings of Chapelle.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference.” Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020). Extrinsic evidence, such as declarations and depositions may be considered when it is used to explain, but not expand, the meaning of a reference. See In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (holding that the depositions and declarations of skilled workers were properly used to show what those skilled in the art would have known about the prior art). Although Patent Owner argues that a missing element cannot be filled by what an ordinarily skilled artisan would have envisioned, Petitioner’s argument is based on what one of ordinary skill in the art would have understood from what the MSR expressly teaches. (See Pet. 20 (“Indeed, prior art concerning the MSI-H Study indicates that the physicians understood postings on clinicaltrials.gov indicated that patients had ‘metastatic tumors.’ (EX1049, 444; see also EX1050, S4; EX1003, ¶62.)”).) Unlike the facts of Nidec, where a missing signal could have been envisioned but was not present, we are persuaded by the evidence Petitioner presents that those of ordinary skill in the art understood the MSR express disclosure to include patients with unresectable or metastatic tumors because references referring to the study underlying the MSR discuss the inclusion of patients with metastatic tumors in the study. Even if Dr. Neugut’s reasoning that the reference to “measurable” disease in the MSR would have indicated patients having metastatic cancer is flawed, we are persuaded by Petitioner’s evidence of publications referring to the MSR as a study of metastatic colorectal cancer, and we are further persuaded that one of ordinary skill in the art would have understood the MSR to disclose treating patients having metastatic colorectal cancer with pembrolizumab. (See Ex. 1049, 444, Ex. 1050, S4.) Patent Owner does not address this evidence. Instead, Patent Owner acknowledges that “the MSR discloses treating cancer patients that could be within the claimed subset,” but argues that the MSR does not inherently anticipate results later obtained by treating only patients within the claimed subset. (See Pet. Sur- Reply 5–6.) We are persuaded, though, that Petitioner’s challenge is based on what one of ordinary skill in the art would have understood from the MSR (that patients who had an unresectable or metastatic tumor were selected), not on what is inherent to the disclosure of the MSR. We are persuaded that one of ordinary skill in the art at the time would have understood the MSR to teach selecting a patient “who has an unresectable or metastatic,” as required in claim 1. c) Element 1.2: “microsatellite instability-high (MSI-H) or mismatch slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Patent Owner argues further that the MSR discloses an experimental use that does not qualify as prior art. (See PO Resp. 16–23.) Patent Owner argues that an inventor can be granted latitude to experiment in the public eye until her invention is ready for patenting. (See id. at 16 (citing Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 64 (1998).) According to Patent Owner, the experimental use negation applies to the MSR under a 13-factor analysis provided in Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353 (Fed. Cir. 2002). (See PO Resp. 17–23.) For example, Patent Owner argues that to establish that treatment of MSI-H cancers was effective, the inventors had to test treatment in humans, there being no animal models, and had to publish the MSR on the government website under federal law. (See PO Resp. 18–20.) Patent Owner argues further that the inventors had control over the MSI-H clinical study and that the field of cancer treatment was highly unpredictable, among other facts. (See id. at 19–20.) Patent Owner argues that “[a]t the time of the MSR’s posting, the claimed invention was not, nor could it have been, ready for patenting. The clinical study that ultimately collected the data reported in the patent specification and supporting the patent claims had not and could not have commenced before the MSR was posted.” (Id. at 21.) In City of Elizabeth, the Supreme Court was concerned that “[i]t is sometimes said that an inventor acquires an undue advantage over the public by delaying to take out a patent, inasmuch as he thereby preserves the monopoly to himself for a longer period than is allowed by the policy of the law,” but held that “when the delay is occasioned by a bona fide effort to bring his invention to perfection, or to ascertain whether it will answer the purpose intended,” the experiment use exception can preserve the inventor’s rights. City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 137 (1877). Because we are not persuaded that Patent Owner could not have filed an earlier application, we are not persuaded that the experimental use doctrine is properly applied in this case. Given that clinical trial protocols published on the ClinicalTrials.gov website have been successfully asserted as prior art in other cases, we are not persuaded by Patent Owner’s arguments that the MSR is not available as prior art against the challenged claims. See, e.g., Salix Pharms., Ltd. v. Norwich Pharms. Inc., 98 F.4th 1056, 1061 (Fed. Cir.), cert. denied, 145 S. Ct. 567 (2024), and cert. denied, 145 S. Ct. 983 (2024). After considering the parties’ arguments and evidence, we are” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“In order to show that objective evidence renders the method of claim 5 non-obvious, Patent Owner must show a nexus between the subject matter recited in claim 5 and the evidence of non-obviousness. See Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019) (“to be accorded substantial weight in the obviousness analysis, the evidence of secondary considerations must have a ‘nexus’ to the claims, i.e., there must be ‘a legally and factually sufficient connection’ between the evidence and the patented invention. . . . Ultimately, ‘[t]he patentee bears the burden of showing that a nexus exists.’” (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988), WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999)). Patent Owner argues that there is a nexus between the development and commercialization of pembrolizumab and the patented method of treatment recited in the challenged claims, citing, inter alia, the package insert for Keytruda® (pembrolizumab), but Patent Owner does not direct us to evidence of a nexus to MSI-H or MMR deficient tumors that exhibit instability in the microsatellite markers recited in claim 5 and the unexpected results, commercial success, or other objective measures of non-obviousness flowing from these additional limitations. (See PO Resp. 50–63 (citing Ex. 2129, Ex. 2072 ¶ 190, Ex. 2090 ¶¶ 82–92).) Patent Owner directs us only to evidence regarding determining MSI-H status and then using Keytruda® to treat MSI-H cancer patients, which we determine to be anticipated by the MSR. (See PO Resp. 60.) When evidence of a “secondary consideration [] is exclusively related” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“(Ex. 1001, 26:19–28.) In Grounds 3 and 5, Petitioner argues, relying on Dr. Neugut’s testimony, that Chapelle teaches standard methods of testing whether a tumor is MSI-H, including determining whether the patient’s tumor exhibits instability in a microsatellite marker, such as BAT-25 or BAT-26. (See Pet. 42 (citing Ex. 1007, 3380, 3383; Ex. 1003 ¶ 107).) For example, Chapelle states that “‘a standard test’ using a ‘[p]anel consisting of … BAT26, BAT25’ has ‘stood the test of time.’” (Ex. 1007 at 3382.) Dr. Neugut testifies that one of ordinary skill in the art would have been motivated to treat a patient with an unresectable or metastatic MSI-H dMMR tumor, wherein the tumor exhibits instability in the BAT-25 and BAT-26 microsatellite marker, and would have expected success in doing so, in light of the teachings of Chapelle. (See Ex. 1003 ¶¶ 105–108.) We find that the record as recounted above supports Petitioner’s challenges of claim 5 in Grounds 3 and 5.” slip op. at 31
Patent outcomesUS 11,339,219 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,339,219 - Synaffix B.V. v. Hangzhou Dac Biotech Co., Ltd.Some claims unpatentablePTAB · Aug 26, 2025 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–17, 20, 21, 24, 26, and 29–31 are unpatentable; claims 25 and 32–34 were not shown unpatentable, and the motion to exclude was dismissed as moot.
RulingsFinal written decision- RemandOther
“review of claims 1–17, 20, 21, 24–26, and 29–34 of the ’682 patent. Paper 2 (“Pet.”), 1, 3. Patent Owner, Hangzhou DAC Biotech Co., Ltd., filed a Preliminary Response (Paper 9, “Prelim. Resp.”). We initially determined that the information presented in the Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17. Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel (“DRP”). Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Delegated Review Panel vacated our decision and remanded the case to this panel with a revised claim construction for claim 1. Paper 23 (“DRP Dec.”). On August 30, 2024, we instituted an inter partes review after remand from the Director. Paper 25 (“Inst. Dec.”). Patent Owner subsequently filed a Patent Owner Response (Paper 31, “Resp.”), Petitioner filed a Reply (Paper 36, “Reply”), Patent Owner filed a Sur-reply (Paper 44, “Sur-reply”), and Petitioner filed a Sur-sur-reply (Paper 48, “Sur-sur-reply”).” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsOther
“I. Patent Owner’s Motion to Exclude Evidence Patent Owner moves to exclude Exhibits 1089 and 1090. Paper 50. As we did not rely on either of Exhibits 1089 or 1090 in deciding this matter, Patent Owner’s motion is dismissed as moot.” slip op. at 96
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“For these reasons, Patent Owner’s arguments and cited evidence also” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“function as R2, and the ethyl group may function as R4, which can be a linear alkyl having 1–6 carbon atoms. We note that claim 3 permits R5 and R6 to be absent. For these reasons, the arguments presented in the Petition demonstrate that claim 3 would have been obvious over Singh’s Compound 3 when modified in view of Harris.” slip op. at 73
Patent outcomesUS 10,131,682 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,131,682 - Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentablePTAB · Aug 26, 2025 · IPR2024-00671 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1, 2, 15, 17, 18, 51, 54, and 57 are unpatentable as obvious over the asserted combinations of Richardson, Zhao, Yu, Paparrizos, and Dao.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 41–44; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” PO Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’243 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’243 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner that the skilled artisan would have had reason to combine the teachings of Richardson and Zhao to achieve the subject matter of claim 1. For example, Petitioner contends that a person of ordinary skill in the art would have modified Richardson’s system to include the USB input circuit of Zhao “to avoid the need to supply a proprietary charger or other type of AC ‘power brick’ that would be less ubiquitous or less standardized,” increase flexibility and convenience, and cater to consumer demand for USB technology. Pet. 36 (citing Ex. 1003 ¶¶ 88–89). Petitioner further alleges that the addition of a USB input circuit would provide for an alternative where traditional charging methods are lost, damaged, or otherwise unavailable. Id. at 35 (citing Ex. 1003 ¶ 88). Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a person of ordinary skill in the art would have modified the teachings of the applied references. See KSR, 550 U.S. at 418.” slip op. at 21
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 1005 ¶ 28 (emphasis added). Dr. MacCarley testifies that a person of ordinary skill in the art would have known what external battery charger could have been used and where to place it in Richardson’s system. Ex. 1044 ¶ 13. In particular, Dr. MacCarley explains that there are numerous points in the circuitry disclosed by Richardson where a charging pathway from an external battery charger (e.g. the “battery charger” that Richardson explains is “not shown”, EX1005, ¶ [0028]) could be connected to charge Richardson’s batteries. EX2010, 52:3–54:5. Any of these connection points would be a trivial modification of Richardson’s embodiment. A PHOSITA would have understood how to implement this type of well-known configuration of an external battery charger and associated charging circuitry, which would have been as simple as wiring connections to the terminal anode and cathode of the batteries. The simplicity of this connection is why it is not surprising that Richardson describes such a pathway and leaves it “not shown” in the figures. Id. We credit the testimony of Dr. MacCarley in this regard. Moreover, Dr. Fayed confirms that it was known to recharge a jump starter with a barrel charger. Ex. 2014 ¶ 23.” slip op. at 28
Patent outcomesUS 11,584,243 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,584,243 - Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentablePTAB · Aug 26, 2025 · IPR2024-00577 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1, 32, 38, 39, 47, 52, and 54 are unpatentable as obvious over Richardson and Zhao and over Yu and Paparrizos.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa. Pet. 22 (citing Ex. 1003 ¶¶ 39–42; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” PO Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’023 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’023 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits there are no formal claim constructions necessary in this proceeding.” Pet. 23. Patent Owner “does not propose any terms need to be construed.” PO Resp. 18. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We agree with Petitioner that the skilled artisan would have had reason to combine the teachings of Richardson and Zhao to achieve the subject matter of claim 1. For example, Petitioner contends that a person of ordinary skill in the art would have modified Richardson’s system to include the USB input circuit of Zhao to avoid the need to supply a proprietary charger or other type of AC ‘power brick’ that would be less ubiquitous or less standardized,” increase flexibility and convenience, and cater to consumer demand for USB technology. Pet 45–46 (citing Ex. 1003 ¶¶ 88– 89). Petitioner further alleges that the addition of a USB input circuit would provide for an alternative where traditional charging methods are lost, damaged. or otherwise unavailable. Id. at 45 (citing Ex. 1003 ¶ 88). Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a person of ordinary skill in the art would have modified the teachings of the applied references. See KSR, 550 U.S. at 418. We acknowledge, but are not convinced by, Patent Owner’s arguments that the nature of Richardson requires the ability to charge a high capacity battery and rapid recharging and therefore would not have led a person of ordinary skill in the art to include Zhao’s USB charging circuit in Richardson. See PO Resp. 25–31. In particular, we are not persuaded that Richardson is limited to high capacity, rapid recharging of batteries as Patent Owner suggests. Instead, Richardson broadly describes “an apparatus and method for temporarily delivering supplemental power to the electrical system of a vehicle” (Ex. 1005 ¶ 6) where “[t]he jump starter 10 may be configured for 12, 18, 24, 30, 36, 42 or 48 volts” (id. ¶ 34). According to Richardson, this may be achieved by using “two or more batteries of the same or different voltage levels . . . to achieve the voltage requirements of the vehicle to be started.” Id. By way of example, Richardson states that “if the batteries 23 are both 12-volt batteries, the system may be configured for 12- or 24-volt operation” and “[i]f the batteries 23 are 12-volt batteries and a battery 25 is a 6-volt battery, 18- or 30-volt configurations may be provided.” Id. Neither Richardson’s claims nor its specification require any particular charging capacity or charging time. See generally Ex. 1005. While a single, near-final paragraph of Richardson introduces the concept of rapid charging of the jump starter batteries to charge a fleet of vehicles, Richardson characterization is permissive or optional. For example, Richardson states The charging system of the vehicle may be used to charge the capacitors 21 and jump starter batteries 22. . . . This allows the capacitors 21 and jump starter batteries 22 to be fully recharged in about 1 to 5 minutes and can therefore start many vehicles in a row without becoming discharged. Id. ¶ 55 (emphasis added). We do not view this singular occurrence as supplanting the breadth of Richardson’s complete disclosure. Furthermore, the crux of Patent Owner’s argument is that because of Richardson’s goal of charging high capacity batteries a USB charger would require significant charging time. PO Resp. 29; Sur-reply 2–14 But, nowhere does Patent Owner allege that a USB charger would not work given sufficient time.11 See generally PO Resp. and Sur-reply. And, when faced with no alternative, the person of ordinary skill in the art must balance the trade-offs and consider charging slowly, or not at all. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (explaining that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner 11 Petitioner in its Reply presents some evidence of charging times using a USB input charger. Pet. Reply 4–7; Ex. 1044 ¶¶ 6–12, Appendix A. Patent Owner disputes the accuracy of Petitioner’s calculations. Sur-reply 2–11. But, whether Petitioner’s calculations are accurate or not, Petitioner’s proposed alternative modification does not remove the faster charging path and instead adds the convenience and flexibility of a secondary charging method where the primary and faster charging path is unavailable. Ex. 1044 ¶ 12.” slip op. at 21
Patent outcomesUS 11,447,023 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,447,023 - PTAB · Jul 28, 2025 · IPR2025-00308 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claim 1, finding a reasonable likelihood it would be shown obvious over Darnell and Kim; it did not reach the Dasgupta and Kim ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it will prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “a bachelor’s degree in computer science and two years’ experience in cloud computing or a similar field, or a master’s degree in computer science or similar field.” Pet. 8 (citing Ex. 1002 ¶¶ 1–55, 119–122). Patent Owner describes a person of ordinary skill in the art as a person having “a bachelor’s degree in electrical engineering or computer science, and approximately 3 years of experience working with content management systems and graphical user interfaces; or a more advanced degree such a master’s or doctorate with proportionally less work experience.” Prelim. Resp. 14. Petitioner and Patent Owner’s descriptions of a person of ordinary skill are similar, although Patent Owner’s proposal is slightly more experienced. Both appear to be reasonably consistent with the subject matter of the ’068 patent. For purposes of this decision, we adopt Petitioner’s description, which is supported by the testimony of Petitioner’s declarant, Dr. Martin. See Ex. 1002 ¶ 121; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the current record, we credit Dr. Martin’s testimony and preliminarily determine that the ordinary and customary meaning of the term “real time” as it is used in the context of the ’068 patent means to provide or transmit content when it is available without significant delay. This, however, does not resolve the issue of whether, as Petitioner contends, the claims require that content must be streamed in “real time” to just a “master server,” or as Patent Owner contends, content must also be streamed in “real time” to a “master webpage.”” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of aggregating and presenting multiple feed sources to a user.” Pet. 15 (citing Ex. 1002 ¶ 390–391). Petitioner notes, for example, that “Darnell addresses ‘[l]ooking through a dense list of content items to locate items of interest,’ which is cumbersome for a user,” and Kim “similarly addresses the problem of viewing multiple pieces of fragmented content from news sources, blog entries, email, and the like in a ‘consuming experience having significant drawbacks.’” Pet. 15–16 (citing Ex. 1002 ¶ 391; Ex. 1004 ¶ 9; Ex. 1005 ¶ 1). Petitioner asserts that a person of ordinary skill in the art would have understood Kim’s teachings for aggregating news, blog entries, and email in a network computer and sending the feeds to a remote computer for display in a UI to be suitable for use with Darnell’s feed reader architecture, in which content feed sources are aggregated on a remote server instead of at the user device. Pet. 16 (citing Ex. 1005 ¶¶ 20–24; Ex. 1002 ¶ 391). Petitioner asserts that a person of ordinary skill in the art would have also been motivated to implement Kim’s identification of “traits” and the organization of the user interface based on those traits in Darnell’s feed aggregation system. Id., ¶ 392. A POSITA would have been further motivated to implement Kim’s feed application, email application, media application, and photo application using Darnell’s server system 104 rather than on user devices, because doing so would allow users to access personalized content feeds on any user device (e.g., phone, computer, tablet, etc.) instead of only on a single user device. Pet. 16–17 (citing Ex. 1002 ¶¶ 392–395). Petitioner also asserts that a person of ordinary skill in the art would have further understood Darnell and Kim to be compatible because they disclose content feed aggregators with a similar user experience—aggregating multiple content feeds from different sources into a unified user interface displayed on a user device. Darnell, Abstract, ¶¶ 8, 11–14, 30–32, 37–38, Fig. 1; Kim, Abstract, ¶¶ 20–23, 37, Fig. 1; Martin, ¶¶ 396-397. Thus, a POSITA would have been motivated to implement Kim’s additional feed types and feed processing on a server instead of the user device based on Darnell’s teachings.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,334,068 - PTAB · Jul 28, 2025 · IPR2025-00307 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–18 on all four § 103 grounds, finding a reasonable likelihood that claim 1 would have been obvious over Darnell and Kim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has shown a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- Settled expectationsDecided for patent owner
“or “Petition”), to institute an inter partes review of claims 1–18 (the “challenged claims”) of U.S. Patent No. 9,729,658 B2 (Ex. 1001, “the ’658 patent”). On March 28, 2025, the Board issued a notice extending the deadline for discretion briefing pursuant to the bifurcated discretionary denial review process that applies to proceedings with a patent owner preliminary response due after March 26, 2025.1 Paper 10. On May 1, 2025, RazDog Holdings LLC (“Patent Owner”) timely filed a Preliminary Response, Paper 12 (“Prelim. Resp.”). Patent Owner filed a request for discretionary denial. Paper 11. Petitioner filed an opposition to Patent Owner’s request for discretionary denial. Paper 13. On May 16, 2025, the Acting Director issued a decision denying Patent Owner’s request for discretionary denial and referring the petition to the Board. Paper 18.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Based on the current record, we credit Dr. Martin’s testimony and preliminarily determine that the ordinary and customary meaning of the term “real time” as it is used in the context of the ’658 patent means to provide or transmit content when it is available without significant delay. This, however, does not resolve the issue of whether, as Petitioner contends, the claims require that content must be streamed in “real time” to just a “master server,” or as Patent Owner contends, content must also be streamed in “real time” to a “master webpage.”” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“1. Rationale to Combine Darnell and Kim Petitioner contends that “Darnell and Kim address similar problems of aggregating and presenting multiple feed sources to users.” Pet. 13 (citing Ex. 1002 ¶ 146). Petitioner notes, for example, that “Darnell addresses ‘[l]ooking through a dense list of content items to locate items of interest,’ which is cumbersome for users,” and Kim “similarly addresses the problem of viewing multiple pieces of fragmented content from news sources, blog entries, email, and the like in a ‘consuming experience having significant drawbacks.’” Pat. 13–14 (citing Ex. 1002 ¶ 146; Ex. 1004 ¶ 9; Ex. 1005 ¶ 1). Petitioner asserts that a person of ordinary skill in the art would have understood Kim’s teachings for aggregating news, blog entries, and email in a network computer and sending the feeds to a remote computer for display in a UI to be suitable for use with Darnell’s feed reader architecture, in which content feed sources are aggregated on a remote server instead of at the user device. Pet. 14 (citing Ex. 1005 ¶¶ 20–24; Ex. 1002 ¶ 146). Petitioner asserts that a person of ordinary skill in the art would have also been motivated to implement Kim’s identification of “traits” and the organization of the UI based on those traits in Darnell’s feed aggregation system. Id., ¶147. POSITAs would have been further motivated to implement Kim’s feed application, email application, media application, and photo application using Darnell’s server system 104 rather than on user devices, because doing so would allow users to access personalized content feeds on any device (e.g., phone, computer, tablet, etc.) instead of only on a single device. Pet. 14–15 (citing Ex. 1002 ¶¶ 147–150). Petitioner also asserts that a person of ordinary skill in the art would have further understood Darnell’s and Kim’s compatibility because they disclose content feed aggregators with a similar user experience—aggregating multiple content feeds from different sources into a unified UI displayed on user devices. Darnell, Abstract, ¶¶ 8, 11–14, 30–32, 37–38, Fig. 1; Kim, Abstract, ¶¶ 20–23, 37, Fig. 1; Martin, ¶¶ 151–152. Thus, POSITAs would have been motivated to implement Kim’s additional feed types and feed processing on a server instead of user devices based on Darnell’s teachings.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,729,658 - PTAB · Jun 13, 2025 · IPR2025-00351 · APJ Beth Z Shaw · IPR · Institution
The Board instituted IPR of claims 1–26 on all grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. Under the second Fintiv factor, the proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision weighs against exercising our authority to deny institution because there is no trial date scheduled. Id. at 9; see Ex. 1031, 3. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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). The Board, however, has discretion to deny a petition even when a petitioner meets that threshold. Id.; see, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). For the reasons that follow, we grant institution of inter partes review.” slip op. at 2
- Skill levelOther
“have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols.” Pet. 10 (citing Ex. 1002 ¶¶ 67–68). Petitioner further states that “a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA.” Id. Patent Owner submits a similar definition (see Prelim. Resp. 13–14), but states that a POSITA “would understand that . . . the subject of the patent is a software-based solution to broadcasting multimedia streams, and the skillset and expertise in hardware-based systems would not make one knowledgeable about software-based systems.” Prelim. Resp. 13–14. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. 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). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Claim 1 does not limit the “caching unit” in any way. With this in mind, we preliminarily agree that Farber discloses the subject matter of limitation 1a sufficiently to meet Petitioner’s burden on institution. b.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 11,140,441 - PTAB · Jun 13, 2025 · IPR2025-00350 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–13 for all petition grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“After Patent Owner made these arguments, though, the district court in the Florida Litigation (1) stayed all deadlines indefinitely and (2) said that the October trial will not go forward as scheduled. Ex. 1028, 3. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 14
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, Here, a Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. . . . A person with less formal education but more experience, or more formal education but less experience, could also meet the standard. Pet. 19 (citing Ex. 1007 ¶¶ 68–69). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the inventions in the ‘002 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art. Prelim. Resp. 12 (citing Ex. 2006 ¶ 59) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. at 12–13 (citing Ex. 2006 ¶ 60). At this stage, our decision would be the same under either definition. Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“There is no dispute that (1) Avellan’s user initiates the request and eventually receives the stream and (2) gateway server 134 receives a request for a media stream for playback on a broadcast channel. See id. at 32–39; Pet. 22. The issue here is whether claim 1 requires that the recited “content provider” originates the request. We agree with Petitioner that claim 1 does not require this. Prelim. Reply 7. Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:51–54. Claim 1 recites “comprising” in the preamble of the method (id. at 14:50), which is a encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n. Pet. 22. That is, Avellan’s gateway platform 134 receives a request for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 24 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 22. ii. Remaining Limitations Apart from the arguments discussed above, Patent Owner does not present arguments specifically directed to the other limitations of claim 1. See Prelim. Resp. We determine that Petitioner’s arguments made in connection with those limitations are sufficient at this stage and on this record. Pet. 24–32. We agree with Petitioner that Avellan teaches obtaining content from the networks 150 and 152, as recited in 1b; rendering a webpage by a browser at gateway 134, as recited in 1c; generating the screen captures at gateway 134, as recited in 1d; and assembling and providing the media stream when gateway server 134 compresses the image or video format and sends it to the browser 106, as recited in 1e and 1f. Id. at 24–29. Petitioner has provided a sufficient rationale at this stage why a method with the subject matter recited in lg and 1h would have been obvious. Id. at 29– 32. Conclusion At this stage and on this record, it is reasonably likely that Petitioner would prevail in showing that claim 1 is unpatentable as obvious over Avellan. The Petition’s merits are compelling because Petitioner’s challenge plainly leads to a conclusion that claim 1 is unpatentable.” slip op. at 12
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,524,002 - PTAB · Jun 13, 2025 · IPR2025-00349 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petition grounds, finding a reasonable likelihood that Avellan anticipates claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv Order 6. That is the case here. Thus, the first Fintiv factor strongly weighs against exercising the authority to deny institution. Id. slip op. at 6
- Skill levelOther
“B. Merits 1. Level of Ordinary Skill in the Art According to the Petition, A Person of Ordinary Skill in the Art (“POSITA”) at the time of the claimed invention would have a bachelor’s or equivalent degree in computer science or a related field and at least 2 years of experience in multimedia processing or delivery using internet protocols. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could have also met the relevant standard for a POSITA. Pet. 14–15 (citing Ex. 1002 ¶ 68). Patent Owner provides a different definition: A person of ordinary skill in the art at the time of the claimed inventions in the ‘074 Patent would have had a bachelor’s degree in computer science or a related field, and at least two years of experience working in the field of software systems used in generating and broadcasting multimedia streams. An individual with less technical education but more experience, or vice versa, could also qualify as a person of ordinary skill in the art Prelim. Resp. 10 (citing Ex. 2006 ¶ 58) (emphasis added). Patent Owner argues that the definition must include experience in software systems because the invention is a software-based solution. Id. (citing Ex. 2006 ¶ 59). Should Patent Owner dispute Petitioner’s definition during trial, we encourage Patent Owner to explain how a software-focused definition would affect any obviousness analysis in our final written decision.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Apart from being received from the content provider, claim 1 does not limit the request’s origin in any way. Rather, claim 1 only requires that the request is received from the content provider. Ex. 1001, 14:48–50. Claim 1 recites “comprising” in the preamble of the method (id. at 14:47), which is a term that does not exclude additional, unrecited steps. Thus, claim 1 encompasses user-originated requests that are received from other entities. With this understanding of the claim, we preliminarily agree with Petitioner that Avellan discloses limitation 1a through its communication path from network 150 to user computers 1041–104n via gateway platforms 1301–130n and broadcast device 102. Pet. 17–18. That is, Avellan’s gateway platform 134 receives a request from broadcast device 102 for at least one media stream, and claim 1 does not exclude user-originated requests. See id. We agree that the content can be video from CNN, BBC, ESPN, or other live-streaming television feeds. Id. at 19 (citing Ex. 1003, 8:18–21). Thus, at this stage and on this record, we agree with Petitioner that Avellan discloses limitation 1a. See id. at 17–19.” slip op. at 13
§ 102 anticipationDiscretionary denialPatents in suitUS 10,123,074 - Merck Sharp & Dohme LLC v. The Johns Hopkins UniversityAll claims unpatentablePTAB · Jun 9, 2025 · IPR2024-00240 · APJ Deborah Katz · IPR · Final written decision
Claims 1–42 are unpatentable: claims 1–42 are anticipated by the MSR, and the Board also finds the challenged claims obvious over the MSR and cited combinations.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“claims a method of treating a human patient with colorectal cancer having certain characteristics using pembrolizumab and the main prior art reference cited by Petitioner discloses testing pembrolizumab to treat human patients. (See Ex. 1001, 25:40–50, Ex. 1005; see Decision 8–9.) Accordingly, the relevant field of Patent Owner’s claims is treating human patients, as well as testing existing compounds. Neither party directs us to evidence of the level of skill in the art beyond what we considered for institution of trial. In the Decision to institute trial, we determined that the level of skill in the art relevant to the claims of the ’393 patent is not limited to knowledge of and experience with conducting research relating to oncology or developing and conducting clinical trials. (See Dec. 8–9.) We determined that the level of skill also includes knowledge of and experience with treating colorectal cancer patients with immunotherapy compounds, identifying the conditions these patients may have, and understanding the literature regarding clinical trials for such colorectal cancers and the associated conditions and immunotherapy. (See id.) Because the parties do not present additional evidence or argument, we maintain that determination.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“what one of ordinary skill in the art would have known and understood at the relevant time. Specifically, Petitioner relies on the testimony of Alfred L. Neugut, M.D., Ph.D., M.P.H.3 (Ex. 1003) and Paul E. Oberstein, M.D. (Ex. 1150). Patent Owner relies on the testimony of Nils Lonberg, Ph.D. (Ex. 2001) and Richard Goldberg, M.D. (Ex. 2090).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“1 requires a causal relationship wherein the patient must be tested for MSI-H and, if he or she is determined to be MSI-H or dMMR, then the patient is treated with 10 mg/kg of pembrolizumab every 14 days. We further agree that this relationship is different than the use of the term “after” in claims 7, 20, and 27, wherein patients must be treated with a different cancer therapy, and wherein the cancer must have later progressed for the treatment to be within the scope of these claims. (Ex. 1001, 25:66–7, 26:44–46, 26:63–64.) In claim 1, a biological sample from the patient must be tested to determine if the cancer is MSI-H and, if so, the patient is treated with a therapeutically effective amount of pembrolizumab. For this reason, if the prior art teaches the limitations of 1) testing a biological sample obtained from a patient having colorectal cancer to determine that the patient’s colorectal cancer is microsatellite instability high or mismatch repair deficient, and 2) treating the patient with a therapeutically effective amount of pembrolizumab if the patient’s colorectal cancer is determined to be microsatellite instability high or DNA mismatch repair deficient, the art anticipates claim 1. We are not persuaded that claim 1 requires or excludes anything else because nothing else is recited in the claim.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Microsatellite Unstable (MSI) Tumors.” (Ex. 1005, 2.) The parties’ witnesses agree that MK-3475 is pembrolizumab, the compound recited in claim 1. (See Neugut Decl., Ex. 1003 ¶ 37; see Lonberg Decl., Ex. 2001, ¶ 65.) Patent Owner does not dispute Petitioner’s assertion that the MSR was published on a government web site on June 10, 2013, more than two years before the priority date of the ’393 patent on July 10, 2015. (See Pet. 7 (citing Ex. 1005, 3, Ex. 1003 ¶ 35).)” slip op. at 17
Patent outcomesUS 11,591,393 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,591,393
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.