- Giesecke+devrient GmbH / Giesecke+devrient Currecy Technology GmbH et al. v. Lumenco, LLCSome claims unpatentablePTAB · Nov 21, 2025 · IPR2024-00839 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1, 2, 5, 6, and 12–20 are unpatentable as obvious; claims 3, 4, and 7–11 were not shown unpatentable because the asserted combinations did not establish random mirror selection.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed definition of a POSITA because Petitioner’s definition is consistent with the types of problems encountered in the art, the prior art solutions to those problems, and the sophistication of the technology. For example, the ʼ863 patent provides, as relevant background, a discussion of anti-counterfeiting devices made up of arrays of lenses used to display unique images, placed on currency and labels for retail products. Ex. 1001, 1:31–43. The ʼ863 patent also discusses using lenses to create holograms. Id. at 2:7–20. Similarly, the prior art in this field, such as Fuhse847, relates to the use of lenses and mirrors to create hologram images for security purposes. Ex. 1022, 1–8. These descriptions demonstrate, consistent with Petitioner’s proposed definition, that a POSITA would need an educational background to understand optics, lenses, and mirrors along with professional experience with optical security features to understand the creation holograms and images using lenses and mirrors for the purpose of preventing counterfeiting of currency and other valuable products. Patent Owner’s proposed definition differs from Petitioner’s in that it includes “or a similar field” when describing the education level of a POSITA and it includes “with diffusive light” when describing the experience level of a POSITA. As to the first difference, the addition of “similar field” introduces vagueness and unnecessary uncertainty into the definition. Patent Owner does not explain what aspects of computer science would make it a field similar to the others listed, or what additional engineering coursework would suffice to make a person a POSITA. See Ex. 2001 ¶ 25. Nor does Patent Owner explain, generally, what makes a field “similar” to the ones listed or how to make that determination. As to the second difference, the addition of “with diffusive light”” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner did not move to exclude Dr. Hesselink’s testimony. See 37 C.F.R. § 42.62; Pet. Reply 25 (arguing that Patent Owner waived its ability to challenge Dr. Hesselink’s qualification.). At the hearing, Patent Owner explained that its argument that Dr. Hesselink is not a POSITA “goes to [the] weight” of Dr. Hesselink’s testimony. Tr. 37:8. In any event, Patent Owner’s argument is based on its proposed definition of a POSITA, which we do not adopt. We, therefore, are not persuaded that Dr. Hesselink testimony should be given little or no weight.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim terms require express construction.” Pet. 11. Patent Owner agrees “that the terms do not require construction for purposes of evaluating the Petition.” PO Resp. 13. We do not need to construe any terms explicitly to reach our decision on institution. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“teaches the preamble and all of the limitations of claim 1. Pet. 12–34. Petitioner contends that it would have been obvious to a POSITA to automate the computations for designing micro mirror arrays in Fuhse847 with Rich’s teaching of a processor running software. Id. at 14–17. Patent Owner does not specifically dispute Petitioner’s contentions regarding the preamble, limitations 1b–1e, and the motivation to combine Fuhse847 and Rich. See generally PO Resp. We have reviewed Petitioner’s contentions and supporting evidence and are persuaded that the combination of Fuhse847 and Rich teaches the preamble and undisputed limitations 1b–1e, and that one of ordinary skill in the art would have been motivated to combine Fuhse847 and Rich in the manner set forth in the Petition.” slip op. at 17
Patent outcomesUS 11,448,863 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,448,863 - PTAB · Nov 20, 2025 · IPR2025-00951 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–19 and all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over DuroMax and De Vries.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner. As to the inclusion of physics in Petitioner’s definition, Patent Owner acknowledges that an undergraduate mechanical engineering degree holder would have the requisite knowledge here but does not adequately explain why an undergraduate physics degree holder would not. In addition, Patent Owner requires “a four-year degree in mechanical engineering or a closely related field,” but fails to identify what fields are “closely related.” See Prelim. Resp. 10 (emphasis added). Based on the Winkel Declaration, we are persuaded at this stage that a hypothetical undergraduate physics degree holder would have had adequate knowledge for one of ordinary skill in the art of the invention here. See Winkel Decl. ¶ 106. As to the requisite years of experience proposed in the definitions— three for Petitioner versus “at least one” for Patent Owner—we note that Patent Owner’s definition is broader than, but includes, Petitioner’s definition. Moreover, for both the inclusion of physics and the years of experience issues, Patent Owner acknowledges that the arguments in the Preliminary Response “are not impacted based on which definition is applied.” Prelim. Resp. 10. Further, Patent Owner does not argue at this stage that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would have understood either the challenged patent or the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding and on the current record, we need not and do not explicitly construe the phrase “selector switch.” See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Although we do not expressly adopt Petitioner’s proposed construction at this stage of the proceeding, we note that it at least generally aligns with the tentative claim construction issued by the United States District Court in the California Litigation: “Mechanical device whose positioning precludes simultaneous access to two fuels.” Ex. 300310 at 2; see also 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”); Memorandum from Acting Director Coke Morgan Stewart to Members of the Patent Trial and Appeal Board (Sept. 15, 2025), available at https://www.uspto.gov/sites/default/files/documents/ Memo_re_prior_findings_of_fact_and_conclusions_of_law_9_16_25.pdf (“Prior Determinations Memo”) (discussing PTAB consideration of prior findings of fact and conclusions of law). We also note that Patent Owner” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Like the Federal Circuit in In re Ellis, although the patent classification of the reference is “some evidence of ‘non-analogy, . . . we consider the similarities and differences in structure and function of the inventions . . . to carry far greater weight.” In re Ellis, 476 F.2d at 1372 (affirming the Board and rejecting the applicant’s nonanalogous art argument). Here, the challenged patent discusses in the Background of the Invention the need for a way to “prevent both valves from being ‘on’ at the” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,598,101 - Giesecke+devrient GmbH / Giesecke+devrient Currecy Technology GmbH et al. v. Lumenco, LLCAll claims unpatentablePTAB · Nov 19, 2025 · IPR2024-00838 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–12 are unpatentable: claims 1 and 6 over Fuhse262, and the dependent claims over the additional asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed definition of a POSITA because Petitioner’s definition is consistent with the types of problems encountered in the art, the prior art solutions to those problems, and the sophistication of the technology. For example, the ʼ191 patent provides, as relevant background, a discussion of anti-counterfeiting devices made up of arrays of lenses used to display unique images, placed on currency and labels for retail products. Ex. 1001, 1:27–42. The ʼ191 patent also discusses using lenses to create holograms. Id. at 2:6–21. Similarly, the prior art in this field, such as Fuhse262, relates to the use of lenses and mirrors to create hologram images for security purposes. Ex. 1006 ¶¶ 1–7. These descriptions demonstrate, consistent with Petitioner’s proposed definition, that a POSITA would need an educational background to understand optics, lenses, and mirrors along with professional experience with optical security features to understand the creation of holograms and images using lenses and mirrors for the purpose of preventing counterfeiting of currency and other valuable products.” slip op. at 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“spot. Ex. 1006 ¶¶ 95–96, Fig. 10. Dr. Hesselink credibly testifies that while Fuhse262 depicts rays that form a light spot, the rays depicted are “chief rays” that depict only the center rays of light for each optical element. Ex. 1003 ¶¶ 178–179. Ambient light, however, reflects from the entire surface of the mirrors and forms reflected beams of light, not just the center rays aimed at the center point. Id. ¶ 178. According to Dr. Hesselink, the “chief ray” is representative of the larger bundle of rays that form the beams of light reflected off of the mirrors. See Id. ¶ 44. The volume of the voxel is set by the intersection of these beams and the center of the voxel is the point at which the center rays of each beam intersect. Id. ¶ 179. Although Dr. Lindstrand testifies “a POSITA would not have understood Fuhse262 to disclose creating a voxel” (Ex. 2004 ¶ 43), Dr. Lindstrand does not dispute Dr. Hesselink’s testimony that light would reflect off of the entire surface of Fuhse262’s mirrors and form reflected beams of light. See Ex. 2004 ¶¶ 42–58; Ex. 1055, 112:15–21 (“You also agree the ambient light would not just strike the center of the surface, it would strike the entire surface, correct? . . . THE WITNESS: I would say that that is a fair and accurate description.”) Dr. Hesselink’s testimony explaining that light beams would reflect off the entire surface of Fuhse262’s micromirrors and would create a voxel when they intersect with each other, provides sufficient support demonstrating how a POSITA would have understood Fuhse262’s disclosure of light rays being reflected off of mirrors and converging at a light spot shown in Figure 10. See Unification Techs. LLC v. Micron Tech. Inc., 2024 WL 3738401 at *7 (Fed. Cir. Aug. 9, 2024) (affirming the use of expert testimony to demonstrate how a skilled artisan would have understood a prior art reference’s disclosure as teaching a claim limitation).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends that “no claim terms require express construction.” Pet. 15. “Patent Owner agrees that the terms do not require construction for purposes of evaluating the Petition.” PO Resp. 13. We do not need to construe any terms explicitly to reach our decision on institution. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to the dispute).” slip op. at 12
- BurdenUnpatentable
“off the entire surface of Fuhse262’s micromirrors and would create a voxel when they intersect with each other, provides sufficient support demonstrating how a POSITA would have understood Fuhse262’s disclosure of light rays being reflected off of mirrors and converging at a light spot shown in Figure 10. See Unification Techs. LLC v. Micron Tech. Inc., 2024 WL 3738401 at *7 (Fed. Cir. Aug. 9, 2024) (affirming the use of expert testimony to demonstrate how a skilled artisan would have understood a prior art reference’s disclosure as teaching a claim limitation). Patent Owner argues that light beams that intersect in an irregular or unintentional manner would not necessarily form a voxel, but does not explicitly show that Fuhse262’s light beams do, in fact, intersect in an irregular manner. PO Resp. 19. Petitioner has shown, as supported by Fuhse262’s disclosure, that Fuhse262’s mirrors are each oriented intentionally to point to a spot that allows them to create a light spot at the intended coordinates. See Pet. 27 (“In particular, Fuhse262 explains that ‘[t]he position of the mirror surfaces, i.e. the normal vector n, is to be determined in such a way that the light incident from a specified direction k ⃗ is reflected onto the focal point (x0, y0, z0) for all micromirrors 102 assigned to light spot 110.’”) (quoting Ex. 1006 ¶¶ 96–97). This disclosure, combined with Dr. Hesselink’s testimony that the intersection of light beams from the mirrors would create not just a spot but a voxel due to light reflecting off the entire surface of Fuhse262’s mirrors demonstrates that Fuhse262 teaches limitation 1b.5.” slip op. at 19
Patent outcomesUS 10,901,191 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,901,191 - MPL Brands NV, Inc. v. Buzzballz, LLCAll claims unpatentablePTAB · Nov 17, 2025 · PGR2024-00035 · APJ Cynthia M Hardman · PGR · Final written decision
Claims 1–20 are unpatentable as obvious over the cited prior art, based on the Board’s findings across the four asserted grounds.
RulingsFinal written decision- Skill levelOther
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art” slip op. at 12
- Expert testimonyPatent owner expert discountedDecided for patent owner
“person or designer of ordinary skill in the art. See Reply 7; Ex. 2001 ¶ 5. Patent Owner asserts that Mr. Kirkpatrick’s testimony is nevertheless relevant because it “informs the opinion of expert witnesses who do qualify as POSITAs” (i.e., Dr. Rojas). PO Resp. 4–5. But the level of ordinary skill in the art as defined here does not mention patents or patent drawings, and Patent Owner has not explained why or in what capacity a person of ordinary skill in the art would have consulted with a patent illustrator.15 For these reasons, we accord no weight to Mr. Kirkpatrick’s opinions on how a person of ordinary skill in the art would have viewed the figures. See” slip op. at 26
- BurdenFwd all claims unpatentableUnpatentable
“Petitioner has the burden of proving unpatentability of the challenged claims by a preponderance of the evidence. 35 U.S.C. § 326(e). Having reviewed the parties’ arguments and cited evidence, for the reasons we discuss below, we find that Petitioner has demonstrated by a preponderance of the evidence that claims 1–20 are unpatentable as obvious over the cited prior art.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“For the above reasons, and after considering Patent Owner’s” slip op. at 47
Patent outcomesUS 11,932,441 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,932,441 - Giesecke+devrient GmbH / Giesecke+devrient Currency Technology GmbH et al. v. Lumenco, LLCAll claims unpatentablePTAB · Nov 17, 2025 · IPR2024-00836 · APJ Nabeel U Khan · IPR · Final written decision
Claims 1, 6–14, 28, and 32–39 are unpatentable as obvious over the asserted combinations of Fuhse262, Fuhse925, Jordan, and Fuhse172.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“ways: the first is the inclusion of “or a similar field” when describing the education level of a POSITA, and second is the inclusion of “with diffusive light” when describing the experience level of a POSITA. We decline to include either of these additional requirements in the definition of the level of ordinary skill. As to the first difference, Patent Owner does not explain what aspects of computer science would make it a field similar to the others listed, nor what additional engineering coursework would suffice. See Ex. 2004 ¶ 25. Nor does Patent Owner explain, generally, what makes a field “similar” to the ones listed or how to make that determination. We determine that Patent uncertainty into the definition and, therefore, do not adopt it. As to the second difference, Patent Owner proposes that the level of skill include two years’ experience with “diffusive light micro-optic security features.” The ʼ294 patent, however, does not mention “diffusive light.” Instead, the challenge claims and the written description of the ʼ294 patent use the term “ambient light.” See, e.g., Ex. 1001, Abstract, 20:50, 59. Ambient light, such as sunlight, includes both parallel and diffuse light. See Ex. 1055, 97:21–98:8; Ex. 1006 ¶ 54 (describing the use of sunlight or ceiling light). The ʼ294 patent mentions ambient light in an ordinary manner without discussing any distinctions between parallel light and diffuse light or giving any significance to the nature of diffuse light and its effects on the invention. We, therefore, adopt Petitioner’s definition of level of ordinary skill except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal.” slip op. at 11
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made”) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (emphasis added); Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (“What a reference teaches a person of ordinary skill is not . . . limited to what a reference specifically ‘talks about’ or what is specifically ‘mentioned’ or ‘written’ in the reference.”). Here, Petitioner has established that Fuhse262 discloses mirrors that reflect light rays converging at a light spot. Ex. 1006 ¶¶ 95–96, Fig. 10. Dr. Hesselink credibly testifies that while Fuhse262 depicts rays that form a light spot, the rays depicted are “chief rays” that depict only the center rays of light for each optical element. Ex. 1003 ¶¶ 169–170. Ambient light, however, reflects from the entire surface of the mirrors and forms reflected beams of light, not just the center rays aimed at the center point. Id. ¶ 170. According to Dr. Hesselink, the “chief ray” is representative of the larger bundle of rays that form the beams of light reflected off of the mirrors. See Id. ¶ 44. The volume of the voxel is set by the intersection of these beams and the center of the voxel is the point at which the center rays of each beam intersect. Id. ¶ 171. Although Dr. Lindstrand testifies a POSITA would not have understood Fuhse262 to disclose creating a voxel (Ex. 2004 ¶ 43), Dr. Lindstrand does not dispute Dr. Hesselink’s testimony that light would reflect off of the entire surface of Fuhse262’s mirrors and form reflected beams of light. See Ex. 2004 ¶¶ 42– 58; Ex. 1055, 112:15–21 (“You also agree the ambient light would not just strike the center of the surface, it would strike the entire surface, correct? . . . THE WITNESS: I would say that that is a fair and accurate description.”) would reflect off the entire surface of Fuhse262’s micromirrors and would create a voxel when they intersect with each other, provides sufficient support demonstrating how a person of ordinary skill in the art would have understood Fuhse262’s disclosure of light rays being reflected off of mirrors and converging at a light spot shown in Figure 10. See Unification Techs. LLC v. Micron Tech. Inc., 2024 WL 3738401 at *7 (Fed. Cir. Aug. 9, 2024) (affirming the use of expert testimony to demonstrate how a skilled artisan would have understood a prior art reference’s disclosure as teaching a claim limitation).” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner argues that “no claim terms require express construction to resolve the challenges here.” Pet. 13. Patent Owner “agree[s] that the terms Resp. 13–14. Having reviewed the record and the arguments before us, we determine that no claim terms require express construction to resolve the dispute between the parties.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As to Petitioner’s more general allegations regarding motivation to combine the embodiments of Fuhse262 and reasonable expectation of success, we agree with Petitioner for the reasons provided in the Petition and summarized above. Specifically, we agree with Petitioner that Fuhse262 concave mirrors and lenses with embodiments that use micromirrors. See Ex. 1006 ¶ 83 (“In order to still obtain a higher resolution in the produced light-spot image with an unchanged high floating height, the large mirrors or lenses used in the previous exemplary embodiments are each replaced by a plurality of smaller micromirrors or microprisms, which together have essentially the same optical effect as the original optical element.”). We also agree that the embodiments of Fuhse262 build on each other and often refer back to each other. For example, Fuhse262 expressly refers back to “previous exemplary embodiments” when explaining that micromirrors may replace other optical elements in the various embodiments. Ex. 1006 ¶ 83. Fuhse262’s Figures 8(a) through 8(d) build on each successive example, adding and modifying the configuration of mirrors disclosed in the previous figure. See Id. ¶¶ 88, 94 (explaining that Figure 8(b) is based on Figure 8(a) but shows mirrors arranged in checkerboard-like manner and Figures 8(c) and 8(d) further modify the configuration with every “fourth field” and “ninth field” respectively being assigned to specific light spots.) Fuhse262 also explains that Figure 9 is a sectional view of Figure 8 and that Figure 10 illustrates the “calculation of the flat mirror surfaces of the micromirrors” of Figures 8 and 9. Id. ¶¶ 91, 95. For the aforementioned reasons, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that a person of ordinary skill would have been motivated to combine the teachings of the relied upon embodiments of Fuhse262.” slip op. at 18
Patent outcomesUS 10,189,294 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,189,294 - PTAB · Nov 13, 2025 · IPR2025-00805 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“C. Patent Owner’s Arguments Under 35 U.S.C. § 325(d) In the Preliminary Response, Patent Owner contends that Petitioner’s unpatentability arguments presented in this proceeding were previously considered by the USPTO. See Prelim. Resp. 31–33. In her decision referring this matter to the Board, then-Acting Director Stewart rejected that argument. See Paper 20 at 2–3 (discussing why “Petitioner provides persuasive reasoning, supported by evidence, that discretionary denial under 35 U.S.C. § 325(d) is not appropriate”); see also Prelim. Resp. 31–33 (referring to and citing Patent Owner’s Discretionary Denial Brief (Paper 8)). We need not and do not address this issue further.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner. As to the inclusion of physics in Petitioner’s definition, Dr. Singhose (a professor of mechanical engineering) testifies as to why undergraduate mechanical engineering degree holders would have the requisite knowledge here, but does not testify that undergraduate physics degree holders would not. See Singhose Decl. ¶¶ 2, 27, 28. In addition, Patent Owner and Dr. Singhose require “a four-year degree in mechanical engineering or a closely related field,” but fail to identify what fields are “closely related.” See Prelim. Resp. 11; Singhose Decl. ¶ 27. Based on the Morse Declaration, we are persuaded at this stage that a hypothetical undergraduate physics degree holder would have adequate knowledge for one of ordinary skill in the art of the invention here. See Morse Decl. ¶ 31. As to the requisite years of experience proposed in the definitions— three for Petitioner versus “at least one” for Patent Owner—we note that Patent Owner’s definition is broader than, but includes, Petitioner’s definition. Moreover, for both the inclusion of physics and the years of experience issues, Patent Owner acknowledges that the arguments in the Preliminary Response “are not impacted based on which definition is applied.” Prelim. Resp. 12 (citing Singhose Decl. ¶¶ 30–34). Further, Patent Owner does not argue at this stage that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In inter partes reviews, the Board interprets claim language using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Petitioner does not propose express constructions for any claim terms. Pet. 12. Patent Owner also does not propose any express constructions. See Prelim. Resp. 12. On the current record, we need not construe explicitly any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As discussed below, however, the parties dispute the meaning of “gaseous fuel.” We address this issue below in the analysis of the challenge to claims 1–3, 5–9, and 18 based on Nakafushi and Olmr.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,393,034 - Recor Medical, Inc. / Otsuka Medical Devices Co., Ltd. v. Medtronic Ireland Manufacturing Unlimited Co.Some claims unpatentablePTAB · Nov 3, 2025 · IPR2022-00431 · APJ Eric C Jeschke · IPR · Remand
On remand, claims 1–3 and 8–12 are unpatentable over the instituted grounds; claim 4 was not shown unpatentable.
RulingsRemand decision- RemandOther
“Federal Circuit (Paper 33), which vacated the original Final Written Decision and remanded the proceeding to the Board. See ReCor Med., Inc. v. Medtronic Ir. Mfg. Unlimited Co., No. 2023-2251, 2025 WL 944511 (Fed. Cir. Mar. 27, 2025) (“the Appeal Decision” or “Appeal Dec.”); see also Paper 41 (copy of the Appeal Decision). The Federal Circuit’s mandate issued on May 5, 2025. See Paper 40. We have jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision on Remand under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons below, on the complete record, we conclude that Petitioner has proven, by a preponderance of the evidence, the unpatentability of claims 1–3 and 8–12 of the challenged patent, and we conclude that Petitioner has not proven, by a preponderance of the evidence, the unpatentability of claim 4.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedNot shown unpatentable
“and Petitioner’s rebuttal evidence. Objective evidence of nonobviousness, when present, must be considered as part of an obviousness inquiry. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Notwithstanding what the teachings of the prior art would have suggested to one of ordinary skill in the art, the totality of the evidence submitted, including objective evidence of nonobviousness, may lead to a conclusion that one or more of the challenged claims would not have been obvious to one of ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984).” slip op. at 50
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“1. Claims 1–3 and 8–11 Because the obviousness ground based on Levin and Acker is dispositive as to challenged claims 1–3 and 8–11, we need not reach this additional ground as to those claims. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 371 (2018) (holding that a petitioner “is entitled to a final written decision addressing all of the claims it has challenged”); Boston Sci. Scimed, analysis in the appeal to the Federal Circuit. See Appeal Dec. *1–*2 (summarizing grounds at issue on appeal and not discussing anticipation based on Acker). Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (nonprecedential) (stating that the “Board need not address issues that are not necessary to the resolution of the proceeding,” such as “alternative arguments with respect to claims [the Board] found unpatentable on other grounds”); SK Hynix Inc. v. Netlist, Inc., IPR2017-00692, Paper 25 at 40 (PTAB July 5, 2018) (determining all challenged claims to be unpatentable and not addressing additional grounds). 2. Dependent Claim 4 As to dependent claim 4, in the context of this ground, Petitioner relies on Acker as to the additional limitations in claim 4 in the same manner as relied on in the context of the ground based on Levin and Acker. See Pet. 73 (“The combination teaches this element for the same reasons described in [the obviousness ground based on Levin and Acker], claim 4, with the exception that [one of ordinary skill in the art] would have been motivated based on his or her knowledge of prior renal denervation work, as noted above.”). Thus, for the same reasons discussed above (see § II.C.3.c), we determine, based on the complete record, that Petitioner has not demonstrated by a preponderance of the evidence that claim 4 would have been obvious based on Acker and the knowledge of one of ordinary skill in the art. G. Asserted Obviousness of Claim 12 Based on Acker, the Knowledge of a Person of Ordinary Skill in the Art, and Yock Petitioner asserts that claim 12, which depends from independent claim 1, would have been obvious based on Acker, the knowledge of one of ordinary skill in the art, and Yock. Pet. 12, 75; Pet. Reply 35–36. Patent Owner provides arguments addressing this ground. PO Resp. 57–60; PO” slip op. at 75
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“1. Independent Claim 1 Petitioner contends that Acker discloses each limitation of claim 1. Pet. 61–63; Pet. Reply 35. In the “Overview of the Ground” section, Petitioner references its proposed construction of the phrase “configured to” and states that “it is proper to consider whether the prior art is ‘capable of’ performing the recited functions, as opposed to requiring that a designer of a prior art device have actually conceived of the recited functional language.” Pet. 61. Petitioner continues: “If the PTAB agrees that this is the proper approach to claim construction, then Acker also anticipates the claims challenged in this ground.” Id. For the reasons below, we determine, based on the complete record, that Petitioner has not demonstrated by a preponderance of the evidence that claim 1 is anticipated by Acker. As to element 1d, which includes the phrase “configured to,”16 Petitioner states that Acker is capable of being used to target renal neural fibers outside of the blood vessel to thermally induce modulation of target neural fibers while protecting non-target tissue in the blood vessel wall from thermal injury for the reasons discussed under claim 1, limitation [1d] and in the section entitled “Reasonable Expectation of Success”, beginning on page 37 [of the Petition]. Pet. 62–63 (citing Daft Pet. Decl. ¶ 179) (first bracketed text added by Petitioner). Patent Owner argues that, in the context of this asserted ground based” slip op. at 71
Patent outcomesUS 8,845,629 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,845,629 - Exotec Product France SAS / Exotec North America Inc. et al. v. Opex CorporationAll claims unpatentablePTAB · Oct 28, 2025 · IPR2024-00850 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1, 3–12, 14, and 23–27 are unpatentable as obvious over Raizer and Hangzhou.
RulingsFinal written decision- Skill levelOther
“B. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither Petitioner nor Patent Owner proposes an express construction” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417. In this case, we must determine whether one of ordinary skill in the art would recognize that Hangzhou’s disclosure of driving its auto-guided trolleys 200 under shelves 100 would improve the operation of Raizer’s system in the same way. For us to resolve this question in Petitioner’s favor, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). However, bodily incorporation, i.e., “an actual physical substitution of” Hangzhou’s auto-guided trolleys or operating software into Raizer’s system, is not required. See In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).” slip op. at 23
Patent outcomesUS 11,472,632 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,472,632 - PTAB · Oct 23, 2025 · IPR2025-00989 · APJ Timothy G Majors · IPR · Institution
The Board instituted IPR on all challenged claims based on the asserted grounds, finding a reasonable likelihood of success on the Schaffer-Hartley and Schaffer-Eller combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. For reasons explained below, we conclude that Petitioner shows a reasonable likelihood that it will prevail with respect to at least one of the ’291 patent’s challenged claims. We institute inter partes review on all challenged claims. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). Findings and conclusions at this stage are preliminary and based on the current record. Any final decision will be based on a full trial record.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that Petitioner’s proposed POSA definition lacks specificity. That definition, if interpreted generically, could mean that a person may qualify as a POSA if they had, for example, a B.S. in mechanical engineering and only two years of experience designing or engineering any type of product in any field. That is too broad. We find that a POSA would have had the agreed-upon educational credentials—an undergraduate degree in mechanical engineering or a related engineering discipline. Ex. 1003 ¶ 36; Ex. 2001 ¶ 73. We find that a POSA would also have had 2–4 years of design or engineering experience related to products in the field of the invention, which involves endovascular devices and the surgical procedures that use such devices. Ex. 1001, 1:24–60 (background of the invention). Such devices include, but are not necessarily limited to, hemostasis valves and catheters for minimally-invasive vascular surgeries. Id. And, consistent with the testimony of the parties’ experts, the POSA need not have had firsthand experience designing hemostasis valves. See, e.g., Ex. 1029 (Zalesky Tr.), 72:11–73:7 (testifying direct experience “designing” hemostasis valves or aspiration catheters is not necessary, but “general experience with vascular devices and procedures” is required); Ex. 2006 (Thornton Tr.), 180:13–19. Further, as Dr. Zalesky testified, the POSA’s experience related to developing such devices “could be as simple as bench testing and looking at clinical data.” Ex. 1029, 74:5–75:1. Lastly, a POSA would have had an” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“As noted above, the challenged claims require a “filament formed in a loop around the tubular sidewall” where, when a portion of the filament is pulled away from the loop, the loop’s diameter reduces, thereby reducing the diameter of the lumen formed by the tubular sidewall to seal the valve. See supra Section II.D. Every embodiment in the ’291 patent where the filament is described as forming a “loop” in the manner claimed involves a filament that is necessarily flexible. See, e.g., Ex. 1001, 13:17–29, Figs. 6–7. The valve would not work if the looped filament were somehow inflexible— pulling an end of the filament would not change the diameter of the loop, and the valve would not seal. Ex. 2001 ¶ 65 (testifying “a loop in a rigid component would necessarily be fixed in size” and the “inherent property of flexibility is essential to the loop structure of the claims”); Ex. 1023, 16–17” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are unpersuaded that Schaffer describes a valve with a filament as claimed. If, as construed above (supra Section III.C), the filament requires flexibility, Petitioner has not demonstrated that Schaffer describes such a feature in its valves. Instead, we agree with Patent Owner that a POSA would more likely understand Schaffer’s two U-shaped actuating members as being rigid features. Prelim. Resp. 33–36. We agree with Patent Owner that Petitioner implicitly admits that Schaffer’s actuating members are rigid leakage around tools inserted through the central lumen when in use and compared to the use of a flexible string or wire (of Hartley or Eller). Prelim. Resp. 34 (citing Pet. 51). We also find Dr. Zalesky’s interpretation of Schaffer more plausible than Mr. Thornton’s on the question of whether a POSA would have regarded Schaffer’s actuating members as being rigid structures. Ex. 2001 ¶¶ 78–85 (testifying, inter alia, that a POSA would have understood from Schaffer’s disclosure about making the actuator and actuating members from machining pre-existing amounts of metals and/or plastics, and further explaining that flexible parts would deform and be difficult to machine through conventional techniques); Ex. 1005 ¶¶ 81–82. Mr. Thornton opines that Schaffer’s disclosed manufacturing techniques for the actuator/actuating members are only examples and “a person of ordinary skill in the art could have simply purchased pre-made [flexible] flat wire or plastic tapes or ribbons.” Ex. 1003 ¶ 96. Such opinion invokes, at best, obviousness-based reasoning. This does not establish that Schaffer alone describes a filament sufficient to anticipate the claims. Furthermore, Mr. Thornton’s opinion that a POSA “would have understood that Schaffer’s U-shaped actuating members would have preferably been formed from a thin, flexible material” finds no support in Schaffer itself. Ex. 1003 ¶ 95. This opinion is also at odds with his testimony in related cases about an alleged formation of gaps with Schaffer’s actuating members, which suggested those members had a set “size” and lacked flexibility. See IPR2025-01157 (Ex. 1003 ¶ 81 (testifying a POSA “would have recognized that Hartley’s flexible string may better seal the valve than Schaffer’s metallic/plastic actuating members” because, “if a tool did not fit the size of” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,865,291 - 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
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.