- PTAB · Oct 29, 2025 · IPR2025-00885 · APJ Avelyn M Ross · IPR · Institution
The Board instituted review of claims 1–11 on all petition grounds and granted ADC Solutions Auto LLC’s unopposed motion to join IPR2024-01219 in an understudy role.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We agree with the parties that the Deltran Petition involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art. Under these circumstances, our reasons for instituting review based on Deltran’s petition apply with equal force to the “substantively identical” Petition filed by ADC Solutions. Id. Accordingly, for the same reasons set forth in the Institution Decision filed in the Deltran IPR, we institute review on all claims and all grounds asserted in the Petition. See generally IPR01219, Paper 8 (Institution Decision in the Deltran IPR).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“(1) the Motion for Joinder is timely, having been filed “no later than one month of the institution decision” in the Deltran IPR (Motion 6); (2) the Petition here “is substantially identical to the petition in the Deltran IPR” (id.; see also id. at 7 (“there are no substantive changes to the facts, citations, evidence, or arguments relied upon”); (3) “joinder should have no meaningful impact on the Deltran IPR trial schedule because the present Petition presents no new issues or grounds of unpatentability” (id. at 8); (4) “Petitioner explicitly agrees to take an ‘understudy’ role, which will simplify briefing and discovery” in the joined proceeding, “so long as the current lead petitioner in IPR2024-01219 remains an active party (id. at 9; see also id. at 4, 6);2 and (5) joinder will simplify “briefing and discovery” as all issues will be resolved “in a single proceeding” (id. at 9). Patent Owner does not contest any facts alleged by ADC Solutions in its Motion for Joinder. Having considered Petitioner’s Motion for Joinder, we determine that joinder of the instant proceeding with in the Deltran IPR is appropriate. For the reasons in our Decision Instituting Review in Deltran IPR, we find that the Petition in this proceeding also warrants institution of inter partes review and that joinder is appropriate. Accordingly, we grant Petitioner’s 2 We understand the “understudy role” as including Petitioner not making any oral argument or presentation during telephone conferences with the Board.” slip op. at 4
NonePatents in suitUS 11,667,203 - PTAB · Oct 29, 2025 · IPR2025-00918 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1–11 on all asserted grounds and granted Canadian Solar’s motion for joinder in IPR2025-00007.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–11 of the ’104 patent in IPR2025-00007 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00007, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’104 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner did not file an opposition to Petitioner’s Motion for Joinder. Upon consideration of Petitioner’s arguments, we are persuaded that it is appropriate under these circumstances to join Petitioner to the proceeding in IPR2025-00007. Petitioner’s agreement to accept an “understudy” role and to not actively participate in IPR2025-00007 unless the current petitioner ceases to participate will limit any potential impact on the trial schedule and will avoid increasing the costs or complexity of the proceeding. Therefore, joinder of 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. Petitioner to IPR2025-00007 will further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. 37 C.F.R. § 42.1(b).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 ’104 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 ’104 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we need 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 11
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,722,104 - PTAB · Oct 29, 2025 · IPR2025-00917 · APJ Debra L Dennett · IPR · Institution
The Board instituted IPR on claims 1–17 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable, and granted Canadian Solar’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We instituted review of claims 1–17 of the ’009 patent in IPR2025-00006 after a review of all arguments and evidence presented by the parties, including Patent Owner’s arguments in its preliminary response. For the reasons discussed in the Institution Decision in IPR2025-00006, we determine that Petitioner demonstrates a reasonable likelihood of showing at least one claim of the ’009 patent is unpatentable. Thus, we find that the Petition warrants institution of inter partes review on all claims and grounds set forth in the Petition.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Patent Owner did not file an opposition to Petitioner’s Motion for Joinder. Upon consideration of Petitioner’s arguments, we are persuaded that it is appropriate under these circumstances to join Petitioner to the proceeding in IPR2025-00006. Petitioner’s agreement to accept an “understudy” role and to not 8 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. actively participate in IPR2025-00006 unless the current petitioner ceases to participate will limit any potential impact on the trial schedule and will avoid increasing the costs or complexity of the proceeding. Therefore, joinder of Petitioner to IPR2025-00006 will further the goals of a just, speedy, and inexpensive resolution of Petitioner’s challenge. 37 C.F.R. § 42.1(b).” slip op. at 12
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 5 (citing Ex. 1003 ¶ 49). 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 ’009 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 ’009 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o claim construction is necessary to resolve this Petition.” Pet. 25. For purposes of this Decision, we need 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 11
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 10,230,009 - Apple Inc. v. Resonant Systems, Inc.All claims unpatentablePTAB · Oct 23, 2025 · IPR2024-00983 · APJ Norman H Beamer · IPR · Final written decision
Claims 1–6, 10, 17, 19, and 20 are unpatentable under § 103 over Alexander and Cosper; the alternative Gregorio-based grounds did not establish unpatentability.
RulingsFinal written decision- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“112(f). Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). But if the term does not use the word “means,” then it is presumed not to be subject to Section 112(f). Id. “That presumption can be overcome, but only if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp., 948 F.3d 1342 (Fed. Cir. 2020). “The correct inquiry, when ‘means’ is absent from a limitation, is whether the limitation, read in light of the remaining claim language, specification, prosecution history, and relevant extrinsic evidence, has sufficiently definite structure to a person of ordinary skill in the art.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1298 (Fed. Cir. 2014).” slip op. at 12
- Prior constructionPrior construction adoptedDecided for patent owner
“both parties have asserted in the Apple Litigation that the “control component” requirement is a means-plus-function limitation subject to 35 U.S.C. §112(f), despite the fact that the control component limitation does not recite “means for.” Pet. 3 (citing Ex. 1012, 3–8; Ex. 1013, 13); PO Resp. 6–7. Indeed, the court in the Apple Litigation has concluded that the control component requirement is subject to 35 U.S.C. § 112(f), and has construed that requirement accordingly: Function: receiving control signals input to the oscillating resonant module; receiving outputs from the one or more sensors; controlling oscillation of the mass to produce a vibration response according to the received control signals by generating, using one or more of the received sensor outputs, control outputs to an actuator that drives the mass to oscillate. Structure: a microcontroller, a processor, a microprocessor, or a CPU that performs the algorithm shown in Figure 45 or the algorithm described in the corresponding text. See, e.g., 31:19–32:13, and equivalents thereof. Ex. 2001, 10; Ex. 2002, 40. Because of the Apple Litigation record, Petitioner presents its challenges in the alternative, first applying a plain meaning approach to the control component requirement, and also analyzing the requirement under the construction adopted in the Apple Litigation. Pet. 3–5. We adopt the court’s construction in the Apple Litigation. 35 U.S.C.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert declarant contends that person of ordinary skill in the art (POSITA) “would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of vibration-generating systems; additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 27. Patent Owner offers “a similar level of ordinary skill in the art.” PO Resp. 2. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’882 patent specification.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“(1) Analogous Art Our reviewing court has stated that “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes omitted). While these two criteria are helpful in many instances, we must not lose sight of the key question at hand: what is “prior art” as that term is used in 35 U.S.C. § 103(a)? References that are “too remote to be treated as ‘prior art’” are excluded from the obviousness analysis. In re Sovish, 769 F.2d 738, 741, 226 (Fed. Cir. 1985). The non-analogous art test provides helpful insight on the underlying question of what is “prior art” within the meaning of the statute; we should not, however, be blind to the reality of the circumstances of the case before us. In re Wood, 599 F.2d 1032, 1036 (CCPA (1979). Nor should we adhere to rigid and mandatory formulas that overly limit the inquiry. KSR Int’l Co., 550 U.S. at 419.” slip op. at 22
Patent outcomesUS 11,152,882 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,152,882 - Shenzhen Root Technology Co., Ltd. v. Willow Blossom Holdco Limited And Willow Innovations, Inc.InstitutedPTAB · Oct 14, 2025 · IPR2025-00554 · APJ Barry L Grossman · IPR · Institution
The Board instituted review of claims 17–19 and 21–33 on every asserted ground, finding a reasonable likelihood that claim 17 is unpatentable over Furrer alone and Furrer with Alvarez.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the Petition and the evidence of record, based on the analysis in this Decision, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of the challenged claims is unpatentable. Accordingly, we institute an inter partes review of all challenged claims and on all grounds asserted in the Petition. PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (stating that a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had “bachelor’s degree in mechanical engineering or a similar field and at least two years of experience designing human breast pump equipment. More education could substitute for experience and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 30–33). Mr. Bauer’s Declaration testimony states he considered some of the factors listed above. Ex. 1003 ¶ 32. Mr. Bauer testifies that based on his background and experience, in his opinion, the level of ordinary skill is as stated by Petitioner. Id. at 33. For purposes of this Decision, based on the prior art, the sophistication of the disclosed technology in the ’381 patent, and Mr. Bauer’s undisputed testimony, we adopt Petitioner’s definition of the level of ordinary skill.6” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms should be construed according to the Phillips standard,” and that “no formal claim constructions are necessary for purposes of resolving controversies in this proceeding. Pet. 3. We agree. Given the lack of dispute on this record, we do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Mr. Bauer further testifies: For electric-powered breast pumps, the only two options for providing electricity to the pump was either via a wire plugged into an outlet or via a battery, as would have been well-known to a POSITA. It would have been obvious for a POSITA to utilize a battery as the power source for Furrer’s pump as it was one of the two available options and would have provided known benefits. Ex. 1003 ¶ 93. As to why this a person of ordinary skill would have chosen the option of a battery powered breast pump, Mr. Bauer testifies that: Selection of battery power for Furrer’s pump would have beneficially provided a portable system that was usable during travel. Additionally, such a configuration would have allowed the user to move freely about a room, or be positioned in a location within a room without being tethered to a wall plug, allowing the user to, for example, sit or lay in the most convenient location while using the system without having to worry about being close to an outlet. Such mobility provided by selecting battery power for Furrer’s pump would have particularly aligned with Furrer’s suggestion for a ‘hands-free’ and discrete solution. Id. (internal citations omitted); see also Ex. 1003 ¶¶ 138, 143, 145 (further discussing the motivation to combine Furrer and Alvarez in the context of Ground 1B). Based on the record before us, without any evidence or argument to the contrary, we determine that Petitioner shows sufficiently for purposes of trial institution that Furrer, alone or in combination with Alvarez, discloses the claimed control unit comprising a battery, and a pump.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,806,454 - Advancell Pty Ltd.InstitutedPTAB · Oct 14, 2025 · PGR2025-00029 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–6 and 8–20 on all asserted grounds, finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After reviewing the parties’ briefs and supporting evidence, we determine that Petitioner has sufficiently shown that Hassfjell-Hoff discloses each element of claim 1. As such, Petitioner’s argument and evidence as set forth above and further discussed below, sufficiently shows that it is more likely than not that claim 1 is anticipated by Hassfjell-Hoff, notwithstanding Patent Owner’s arguments, also addressed below.” slip op. at 16
- Adverse judgmentAdverse judgmentOther
“Here, Patentee Sciencons AS filed a statutory disclaimer of claim 7 of the ’603 patent. Ex. 2001. Based on our review of Exhibit 2001 and U.S. Patent and Trademark Office public records, we find that the disclaimer of claim 7 complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Accordingly, we treat claim 7 as having never been part of the ’603 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because post-grant review cannot be instituted based on disclaimed claims, claim 7 is outside the scope of this proceeding. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 1–6 and 8– 20, the remaining challenged claims that have not been disclaimed.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityGranted
“Sciencons AS also states that ARTBIO, Inc. is responsible for defending the ’603 patent in this proceeding and requests that ARTBIO, Inc. be included in the caption for this proceeding.2 Paper 4, 1; Paper 7, 1. ARTBIO, Inc. has signed powers of attorney appointing the same practitioners that were appointed by Sciencons AS to transact all business associated with the instant post-grant review proceeding of the ’603 patent. See Papers 3, 4, 7, 8. To date, no objection has been raised to Patent Owner’s request. Given Sciencons AS’s representation that ARTBIO, Inc. is currently the exclusive licensee of the ’603 patent and is responsible for defending the ’603 patent, we grant Sciencons AS’s unopposed request that ARTBIO, Inc. be included in the caption. For convenience we refer to Sciencons AS and the purported exclusive licensee ARTBIO, Inc. collectively as “Patent Owner.” As stated supra, to the extent any party disputes ARTBIO, Inc.’s right to participate in this proceeding or to be included in the caption, the party shall request authorization to brief the issue within 10 business days of this Decision.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in chemistry, chemical engineering, physics, nuclear chemistry, radiochemistry, or materials science, or a comparable field of study, plus approximately two to three years of professional experience with radioisotope generators, or other relevant industry experience” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 2–3 (citing Ex. 1002 ¶ 33; Ex. 1017 ¶ 27). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed definition nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposed definition.” slip op. at 10
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 12,125,603 - PTAB · Oct 14, 2025 · IPR2025-00688 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1–18 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“The mere existence of some relationship between a petitioner and another entity, however, is not sufficient to place that petitioner in privity with that entity. Google LLC v. DDC Technology, LLC, IPR2023-00707, Paper 27 at 37 (PTAB Oct. 25, 2023). Instead, that relationship must be related to an earlier lawsuit and be “sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit” or the evidence must show “the petitioner is simply serving as a proxy to allow another party to litigate the patent validity question that the other party raised in an earlier-filed litigation.” WesternGeco, 889 F.3d at 1319.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the art because it is consistent with the skill level reflected in the disclosures of the ’370 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “do[es] not, at this time, contend that any term requires construction,” and instead, states that “[a]ll terms have been accorded their plain and ordinary meaning.” Pet. 10 (citing Ex. 1002 ¶¶ 212–215). Patent Owner does not propose any constructions at this time. See generally Prelim. Resp. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“We are not persuaded by this argument. The Federal Circuit has instructed that [e]ntitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed. While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. Lockwood, 107 F.3d at 1571–72. Here, what “a POSITA would understand,” without disclosure in the specification, is insufficient to show written-description support. Prelim. Resp. 24. Thus, on this record, and for purposes of institution, Patent Owner has not shown that the Provisional Application provides sufficient support for adding the claimed genus to the coal. 3. Summary In sum, on this record, Patent Owner has not shown that either the Provisional Application or the Pre-2018 Applications provide sufficient written-description support for the challenged claims. As a result, we determine that the ’370 patent cannot claim priority to the Provisional Application. Thus, all asserted prior art qualifies as prior art.” slip op. at 25
Claim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 10,933,370 - PTAB · Oct 14, 2025 · IPR2025-00687 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1–8 and 10–18 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Based on the current record, we determine that the Petition is not time-barred. The ’370 patent was not part of the 2019 Delaware lawsuit that forms the basis of Patent Owner’s time-bar allegations. And, as Petitioner explains, when the ’370 patent was asserted in July 2024, Petitioner filed this request for inter partes review about seven months later, i.e., within the one-year period. Furthermore, Patent Owner does not allege which unnamed entity is in privity with Petitioner or provide any details of the relationship that establishes privity. Nor does Patent Owner direct our attention to record evidence that would support its allegations. Therefore, without more, we determine that the Petition is not time-barred.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“The current record supports that Petitioner’s combination of Vosteen589 with Starns and with Mass-EPA would have been “the mere application of a known technique to a piece of prior art ready for the improvement.” KSR, 550 U.S. at 401. Indeed, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id. Patent Owner does not allege that the combination was beyond the skill level of a person of ordinary skill in the art at the time of the alleged invention. See generally Prelim. Resp. Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a skilled artisan would have modified the teachings of the applied references. See KSR, 550 U.S. at 418.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,933,370 - Ascend Elements, Inc. v. Duesenfeld GmbHInstitution deniedPTAB · Oct 10, 2025 · PGR2025-00037 · APJ Kevin W Cherry · PGR · Institution
The Board denied institution of PGR on claims 1–14 because Petitioner did not show that any challenged claim was more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“information presented in the petition filed under [35 U.S.C. §] 321 . . . demonstrates 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). For the reasons set forth below, we determine that Petitioner has failed to demonstrate that it is more likely than not that at least one of claims 1–14 of the ’463 patent is unpatentable. Accordingly, we deny institution of a postgrant review of claims 1–14 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had at least a Bachelor’s degree in electrical engineering, material science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithiumion batteries. Additional formal education focusing on processing of lithium batteries may substitute for practical experience and additional practical experience can substitute for less education.” Pet. 10–11. Patent Owner does not contest this definition of a person of skill in the art. See Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’463 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“distinct from “comminute[ion],” Petitioner offers only the testimony of its expert, Mr. Juzkow, who equates Tomioka’s “cutting” with “comminute[ion].” See Ex. 1003 ¶ 121. However, Mr. Juzkow provides insufficient reasoning to support his conclusion, particularly given the intrinsic and extrinsic evidence discussed above. In contrast, Patent Owner’s expert, Mr. Dantam, provides extensive reasoning, supported by citations to other evidence, to support his conclusion that Tomioka’s “dismantling” is not the claimed “comminution.” Thus, we give more weight to Mr. Dantam’s testimony than Mr. Juzkow’s testimony. Weighing this evidence all together, we find that Petitioner has failed to show that it is more likely than not that Tomioka’s teaches the claimed comminution under Petitioner’s first theory.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundTeaching away not foundNot shown unpatentable
“obvious. Pet. 34–35. However, we agree with Patent Owner that Petitioner has also failed to show that it is more likely than not that Tomioka renders this limitation obvious. See Prelim. Resp. 28–31. To begin with, Petitioner’s contentions lack sufficient reasoning explaining why a person of ordinary skill would have modified Tomioka in the manner proposed. “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Petitioner merely asserts that a person of ordinary skill in the art could use the roller system in place of the dismantling disclosed for the embodiments in Figures 19 and 20. On this record, we find this bare contention insufficient. actual disclosure of Tomioka. The rollers in Tomioka are used to separate the “battery body” from the “resin package enclosing the battery body,” and Tomioka specifically discloses that this technique is designed to “avoid damaging the battery body.” Ex. 1005 ¶¶ 25, 26, 29; Ex. 2011 ¶¶ 72–73. Thus, there is a significant difference between what Tomioka teaches and what Petitioner proposes to use the roller system to do. In addition, as Patent Owner points out, Tomioka specifically discloses there are risks associated with mechanically crushing battery packs, such as “risk of sparking due to residual voltage if the battery units are damaged in the process.” Ex. 1005 ¶ 5. Although we do not agree with Patent Owner that this amounts to a “teaching away,” see In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), we do believe that this teaching suggests a trade off that should be weighed in determining whether to make the modification, see Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). However, Petitioner has failed to account adequately, if at all, for this trade off. Thus, we find that Petitioner has failed to show that it is more likely than not that Tomioka accounts for the claimed “comminuting.”” slip op. at 15
§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 12,119,463 - Apple Inc. v. Resonant Systems Inc., D/B/A/ RevelhmiAll claims unpatentablePTAB · Oct 9, 2025 · IPR2024-00698 · APJ Brian D Range · IPR · Final written decision
Claims 1–5 are unpatentable as obvious under § 103 based on the asserted combinations of Izumi, Cosper, Rossi, Ibuki, and Aldrich.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. PO Resp. 2–3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. at 3. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 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). Our reasoning herein would be the same under Patent Owner’s similar proposal.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“Claim 1, Preamble. Both parties agree that the preamble of claim 1 is limiting. PO Resp. 6. We agree that claim 1’s preamble is limiting. We also note that the parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Because neither party asserts that construction of “driving component” or “control component” is necessary to resolve the issues before us, we decline to expressly construe these claim terms. See, e.g., 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)). For clarity, because Petitioner argues that plain and ordinary meaning is appropriate and because Patent Owner does not dispute that construction, we adopt the plain and ordinary meaning of these claim terms when comparing the challenged claims to the prior art. Other claim terms. It is unnecessary for us to expressly construe other claim terms for purposes of this Decision. See, e.g., Realtime Data, LLC, 912 F.3d at 1375.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art would have combined Izumi’s module to include multiple sensors in accordance with Cosper’s teachings. Pet. 15. Petitioner argues that the sensors would monitor the moving element and generate a control signal in accordance with Izumi. Id. at 15–16. Petitioner further argues that Izumi’s controller would have been implemented using a microprocessor and memory as Cosper suggests. Id. at 16. Petitioner argues three reasons why a person having ordinary skill in the art would have combined Izumi with Cosper’s teachings. Id. at 16–19. First, Petitioner argues that a person having ordinary skill in the art would have looked to Cosper as a way to further Izumi’s objective of having a sensor that detects the and controls the movement of the moving element. Id. at 16–17. Second, Petitioner argues that the combination of Izumi and Cosper would have enhanced reliability of the feedback sensors by capturing “data specific to different operating parameters.” Id. at 17–18. Third, combining the references’ teachings would “facilitat[e] implementation of software instructions” by using a microprocessor and memory. Id. at 18–19. Patent Owner does not dispute Petitioner’s rationale to combine the references’ teachings. Based on our review and consideration of the record, we determine that a preponderance of the evidence supports that a person of ordinary skill in the art would have combined the teachings of Izumi and Cosper in the manner Petitioner argues (“the Izumi-Cosper combination”).” slip op. at 17
Patent outcomesUS 8,093,767 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,093,767
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.