• Gettattle, Inc. v. Afterwords, Inc.Instituted
  PTAB · Oct 7, 2025 · IPR2025-00677 · APJ Ryan H Flax · IPR · Institution

  Instituted review of claims 1–7, 10, 13, 16, 18, and 19 on all four anticipation grounds because the Petition showed a reasonable likelihood of prevailing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 37 C.F.R. § 42.4(a), we have authority to determine whether to institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions in view of the existing record, we conclude that Petitioner demonstrates a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’811 patent is unpatentable under the presented grounds. See Pet. Therefore, we grant institution of inter partes review. Our reasoning is discussed below. A.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ORDINARY LEVEL OF SKILL IN THE ART Petitioner contends: As of the effective priority date of the ‘811 patent, a person of ordinary skill in the relevant field at the time would be familiar with the pre-existing point of sale and network-based technologies as above, for example in Section I.D. above as well as the “BACKGROUND OF THE INVENTION” portion of the ‘811 patent specification. Ex. 1001, col. 1, l. 21 – col. 5, l. 10. This person would include someone who has, through education or practical experience, at least 2-3 years of experience in software engineering, such as the development of data sets, database management, and networking integration for dynamic content generation and network-based distribution. Pet. 10. Patent Owner states, “[f]or the purposes of this Preliminary Response only, Patent Owner applies Petitioner’s definition of a person of ordinary skill in the art. See Petition, p. 10.” Prelim. Resp. 14. We accept and use Petitioner’s proposed, and unopposed, definition of the ordinarily skilled artisan. It appears to comport with the level of skill in the art reflected in the prior art of record and the ’811 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther

    “The claim language does little to identify any meaning of “point-of- sale interface.” Looking to the ’811 patent’s written description, it never uses the term “point-of-sale interface,” but it states “moder[n] Point-of-Sale (POS) systems . . . capture rich details around their customers’ purchasing activity.” Ex. 1001, 1:52–54. The Specification further states that “[t]he transaction data may be stored locally to a point-of-sale (“POS”) device or to a remote location, such as a cloud service provider.” Id. at 2:23–25. Regarding the associated term “interface,” the written description states, “[i]n general, as used herein, an interface is a component of computer executable instructions stored in a tangible, non-transitory medium and executed by processor 12 to present a display of information related to the interface allowing someone to view and/or interact with the presented information.” Id. at 4:32–37. We are pointed to and find nothing in the ’811 patent’s prosecution history that sheds any further light on the meaning of this language. See Pet. 12–14; Prelim. Resp. 12–13; Ex. 1003. Based on the intrinsic record, we find that the ’811 patent describes a point-of-sale as being local to a transaction, e.g., a sale/purchase of a product” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “At this point in the proceeding, we do not agree with Patent Owner that the recited survey module must be autonomous, self-contained, or a web-container package. As discussed above, we preliminarily interpret this term to mean software code for displaying a survey question. We find no support in the current record to add to this definition any additional requirements related to autonomy, self-containment, or a web-based context for the survey module. The Petition (at 19) points to Douglas as teaching the claimed survey module, i.e., in Douglas, software sent to the customer for taking a product survey on the display of the customer’s computer device. Douglas teaches, in response to a customer providing a survey trigger (e.g., purchase data signals), a survey generator creates a transaction-specific survey (e.g., “Was the item you found too expensive?”) and transmits it to the customer’s device (e.g., a mobile phone with a touchscreen); the survey is interactive; and the customer touches or clicks their device’s screen to respond to the survey questions. Ex. 1007 ¶¶ 34–35. Moreover, Douglas also discloses that its survey “interact[s] with the customer using one or more software applications on customer device 106,” which may be, e.g., a computer or mobile phone, further, “[t]he one or more software applications may be provided by survey system 101, or merchant 107, or a third party,” and finally, “[t]he one or more software applications may be web-based applications and/or native mobile applications installed on the customer device 106.” Id. ¶¶ 18–20; see also Prelim. Resp. 35 (conceding as much). Thus, Douglas appears to disclose a survey system where a survey server responds to a triggering survey token created by a merchant and sent by a customer, that connects the customer with a particular purchase, by creating a purchase-specific survey question and sending it to a customer’s electronic device, where the survey question is displayed on a web-browser by software, and the customer’s survey answers may then spur the system to generate and follow up with additional questions. See Ex. 1007 ¶¶ 18–20, 27–29, 33–39. This appears to include the claimed survey module at issue. As for Patent Owner’s argument that the recited survey module must” slip op. at 31

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 10,430,811
• Front Line Medical Technologies, Inc. v. Prytime Medical Devices, Inc.All claims unpatentable
  PTAB · Oct 1, 2025 · PGR2024-00028 · APJ Jeffrey N Fredman · PGR · Final written decision

  Claims 1–10 are unpatentable as obvious over Fogarty and Chengod; the Board found that combination sufficient for every challenged claim.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “7. Conclusion Based on the entirety of the record, we determine that a person of” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “3. Analysis In our claim construction analysis “[w]e begin, as we often do, with” slip op. at 18

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed board ownOther

    “the feature of the solid wire being “secured at a proximal-most end thereof within the proximal hub” was added during prosecution to overcome a rejection. Ex. 1002, 573-580. The prior art was distinguished because its guidewire “is configured to be steered and manipulated through the blood vessel, and subsequently removed, and, therefore, cannot be secured at a proximal end thereof to the luer hub 310.” Id., 578-79 (emphasis added). Accordingly, the prosecution history further demonstrates “secured” was not intended to cover removable attachment.” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “2. Patent Owner’s Arguments Concerning Claim 1 and Our Analysis a. Reasonable Expectation of Success in modifying catheters to less than 6 Fr Patent Owner asserts “Petitioner has failed to perform a proper obviousness analysis by not adequately demonstrating a reasonable expectation of success in modifying Fogarty.” PO Resp. 35. Patent Owner asserts “the category of ‘Fogarty catheters’ is broad and diverse” and “Dr. Resnick admits he has no idea whether Chengod’s or Deaton’s catheters have interior constructions similar to that of the cited Fogarty reference.” Id. at 35‒36 (citing Ex. 2002, 52:16‒57:1). Patent Owner asserts that Petitioner has therefore not demonstrated that a PHOSITA would have a reasonable expectation of success in modifying the particular catheter taught by the cited Fogarty patent (Ex. 1004) to the claimed size when considering the shaft has a spring coil and braid in addition to the outer tube and lumen. Id. Petitioner responds “(1) Fogarty did not indicate the catheter’s size; (2) Fogarty catheters smaller than 6 Fr were known and disclosed in Chengod (and Deaton); and (3) sizing Fogarty’s catheter less than 6 Fr would work (i.e., reasonable expectation of success) because it did work.” Pet. Reply 19. Petitioner asserts that Yassinzadeh “shows a catheter that is less than 6 Fr and that includes a similar spring coil construction as found in the Fogarty patent” where the “dilator 150 has a diameter of either 5 Fr or 6 Fr.” Id. at 19‒20 (citing Ex. 1033 ¶¶ 86‒97 (“Yassinzadeh”)). Petitioner asserts that Yassinzadeh’s “analogous construction being less than 6 Fr confirms a PHOSITA would have a reasonable expectation of success in sizing the catheter in Fogarty (Ex-1004) less than 6 Fr.” Id. at 20 (citing Ex. 1034 ¶ 97). Patent Owner responds “Petitioner fails to specify what” slip op. at 53

  Patent outcomesUS 11,857,737 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,857,737
• Microsoft Corporation v. Edge Networking Systems, LLCInstituted
  PTAB · Sep 30, 2025 · IPR2025-00618 · APJ Nabeel U Khan · IPR · Institution

  The Board instituted IPR on claims 1–5, 7, 8, 12–15, 18, and 19 on both § 103 grounds, finding a reasonable likelihood that at least one claim under each ground is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’823 patent. We institute inter partes review as to all the challenged claims of the ’823 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art (POSITA) “would have had a bachelor’s degree in computer science, computer engineering, or equivalent degree, and approximately three years of experience working in the computer science or engineering field.” Pet. 12 (citing Ex. 1003 ¶ 58). Petitioner further argues that “[a]dditional experience might substitute for less education and vice versa” and that “POSITAs in June 2013 would have been knowledgeable about the design and management of networked systems and virtualization technologies, and techniques.” Id. Patent Owner “does not contest Petitioner’s proposed definition” of a POSITA at this stage of the proceeding. Prelim. Resp. 17. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’823 patent and the cited prior art.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “given its plain and ordinary meaning in this proceeding, and that no specific claim construction of any claim term is required.” Pet. 10. Petitioner explains that the parties have proposed “different constructions for various claim terms pending in the Related Litigation” but that the Grounds “render the claims unpatentable under either party’s construction, and any reasonable construction, and thus the Board need not construe any term.” Id. at 10–11 (citing Ex. 1003 ¶ 367; Ex. 1070; Ex. 1071).2 Patent Owner does not expressly address claim construction in its Preliminary Response. We determine that, at this stage of the proceeding, no explicit constructions are required to resolve the dispute between the parties. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “E. Combination of Vasell, Alves, Rellermeyer, and Hall As explained above, Petitioner contends that the technical implementation details that were intended to implement Vasell’s teachings are described in Alves, Rellermeyer, and Hall. Pet. 36. Petitioner argues, therefore, that the motivation to modify Vasell to include features described in the other references is demonstrated by the references themselves. Id. at 36–37 (citing Ex. 1003 ¶¶ 375–376). For example, according to Petitioner, a POSITA would have been motivated to modify Vasell with Alves’ teaching of a centralized application repository for storing its distributed applications to provide increased scalability. Id. at 38, 39 (citing Ex. 1008, 263, 266; Ex. 1003 ¶¶ 378–379). Petitioner contends that a POSITA would have been motivated to modify Vasell with Rellermeyer’s management software to provide for load balancing, failover and elastic scalability. Id. at 38 (citing Ex. 1003 ¶ 380). Finally, Petitioner argues that a POSITA would have been motivated to modify Vasell with Hall’s management software that requires digital signatures for distributed applications to provide increased security for using third party applications. Id. at 38, 39 (citing Ex. 1003 ¶ 381). Patent Owner does not separately dispute Petitioner’s contention that a POSITA would have been motivated to combine Vasell, Alves, Rellermeyer, and Hall. to combine the prior art references and determine that Petitioner has established a reasonable likelihood that a person of ordinary skill in the art would have combined Vasell, Alves, Rellermeyer, and Hall with a reasonable expectation of success for the reasons provided by Petitioner.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,695,823
• Microsoft Corporation v. Edge Networking Systems, LLCInstitution denied
  PTAB · Sep 30, 2025 · IPR2025-00619 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because Microsoft did not show a reasonable likelihood of proving claims 1, 2, 4–7, and 9 obvious over Vasell, Alves, Hall, and Rellermeyer.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[Persons of ordinary skill in the art (“POSITAs”)] as of June 2013 would have had a bachelor’s degree in computer science, computer engineering, or equivalent degree, and approximately three years of experience working in the computer science or engineering field. Additional experience might substitute for less education and vice versa. To that end, POSITAs in June 2013 would have been knowledgeable about the design and management of networked systems and virtualization technologies, and familiar with operating/distributed systems and security and privacy techniques. Pet. 15 (citing Ex. 1003 ¶ 58).4 Patent Owner does not contest this in its Preliminary Response. Prelim. Resp. 36–37. We apply Petitioner’s definition of the level of ordinary skill in the art here.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner has not sufficiently explained how the combination of Vasell, Alves, Hall, and Rellermeyer teaches or suggests a programmable network device and a programmable cloud device that are each “powered by a sandboxing operating system,” as required by all challenged claims. Our reasoning follows.” slip op. at 10

  § 103 obviousness
  Patents in suitUS 10,686,871
• Microsoft Corporation v. Edge Networking Systems, LLCInstitution denied
  PTAB · Sep 30, 2025 · IPR2025-00617 · APJ Jason M Repko · IPR · Institution

  The Board denied institution because Microsoft did not show a reasonable likelihood of proving claims 1, 2, 6–8, 10–13, and 15 obvious over Vasell, Alves, Hall, and Rellermeyer.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[Persons of ordinary skill in the art (“POSITAs”)] as of June 2013 would have had a bachelor’s degree in computer science, computer engineering, or equivalent degree, and approximately three years of experience working in the computer science or engineering field. Additional experience might substitute for less education and vice versa. To that end, POSITAs in June 2013 would have been knowledgeable about the design and management of networked systems and virtualization technologies, and familiar with operating/distributed systems and security and privacy techniques. Pet. 14 (citing Ex. 1003 ¶ 59).4 Patent Owner does not contest this in its Preliminary Response. Prelim. Resp. 39. We apply Petitioner’s definition of the level of ordinary skill in the art here. 2 Congress amended § 103 when it passed the Leahy-Smith America Invents Act (AIA). Pub. L. No. 112–29, § 3(c), 125 Stat. 284, 287 (2011). Petitioner asserts that the version amended by the AIA applies here. Pet. 23. 3 We use Petitioner’s nomenclature in which Petitioner collectively refers to the Vasell patent (Ex. 1004) and its corresponding provisional applications (Exs. 1015, 1016) as “Vasell.” 4 Erez Zadok, Ph.D. submitted a declaration on behalf of Petitioner. See Ex. 1003.” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner has not sufficiently explained how the combination of Vasell, Alves, Hall, and Rellermeyer teaches or suggests a programmable network device and a programmable cloud device that are each “powered by a sandboxing operating system,” as required by all challenged claims. Our reasoning follows.” slip op. at 10

  • BurdenNot shown unpatentable

    “Petitioner has not sufficiently explained how the combination of Vasell, Alves, Hall, and Rellermeyer teaches or suggests a programmable network device and a programmable cloud device that are each “powered by a sandboxing operating system,” as required by all challenged claims. Our reasoning follows.” slip op. at 10

  § 103 obviousness
  Patents in suitUS 10,893,095
• Xencor, Inc. v. Merus N.V.Instituted
  PTAB · Sep 26, 2025 · IPR2025-00605 · APJ Tawen Chang · IPR · Institution

  The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Desjarlais or Moore or obvious over Lazar alone.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “SAS, 138 S. Ct. at 1356. Thus, because we determine, based on the arguments and evidence on the present record, that there is a reasonable likelihood Petitioner would prevail with respect to claim 1, we institute an inter partes review of all challenged claims under each Ground presented in the Petition. Id.; see also 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.”). III. CONCLUSION For the reasons provided above, we find that Petitioner has demonstrated a reasonable likelihood of showing at trial that at least one of the challenged claims of the ’859 patent is unpatentable under at least one ground. Accordingly, we institute inter partes review of all challenged claims based on all the Grounds presented in the Petition.” slip op. at 49

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “As Petitioner points out, the cited disclosure in the ’935 provisional does not “mention[] positions 364 and 368 together as a pair of positions for potential mutations on two chains.” Pet. 28 (citing Ex. 1002 ¶¶ 109–19). Although Patent Owner is correct that examples or actual reduction to practice are not required for adequate written description and “[a] specification may . . . contain a written description of a broadly claimed 34 invention without describing all species that [the] claim encompasses,” Prelim. Resp. 15 (quoting Ariad Pharms., 598 F.3d at 1352 and Cordis Corp. v. Medtronic AVE Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003)), the ’935 provisional must still “reasonably convey[] to those skilled in the art that the inventor[s] had possession of the claimed subject matter” as of the relevant date. Regeneron Pharms., Inc. v. Mylan Pharms. Inc., 127 F.4th 896, 914 (Fed. Cir. 2025); Ariad, 598 F.3d at 1351. In this case, Table A of the ’935 provisional discloses a list of CH3 domain interface residues and identifies, for each interface residue in heavy chain A, the contacting residue in the corresponding chain B. Ex. 1030, 17, Table A. Table A does not, however, describe any particular substitutions or pairs of substitutions that should be made to the CH3 domains. See, e.g., Pet. 28 (citing Ex. 1002 ¶¶ 109–119). Table 7 of the ’935 provisional does identify specific amino acid substitutions in CH3 domains, including substitutions resulting in a positively charged residue at position 364 (e.g., S364K) and a negatively charged residue (e.g., L368D) at position 368. Ex. 1030, 52, Table 7. Patent Owner argues that this table “discloses specific positions for ‘identification of novel charge pair mutants.’” Prelim. Resp. 13 (citing Ex. 2010 ¶ 48). As Petitioner points out, however, while Example 13 of the ’935 provisional relates to identification of novel charge pair mutants, Table 7 itself was only a “first step” in this identification process. Ex. 1030, 51:6–17. In this step, “many interface contact residues in the IgG CH3 domain were scanned one by one or in groups for substitutions that would result in repulsion of 35 identical heavy chains” so that identified substitutions can then be used to generate antibodies “by engineering matched pairs of CH3 residues in one or more IgG heavy chains – CH3 regions” in follow up experiments. Id. Accordingly, Table 7 does not appear to describe heterodimer combinations, such as those that would result from a pairing of chains with different substitutions. Pet. 29–30 (citing, e.g., Ex. 1002 ¶¶ 111–118). As Petitioner further points out, the follow up experiments testing the matched pairs of CH3 residues did not include paired substitutions at positions 364 and 368. Id. at 29–31. Patent Owner points to disclosure in the ’935 provisional describing, as a distinguishing feature of its invention, the substitution of non-charged or neutral amino acids in wildtype CH3 with charged residues, which according to the ’935 provisional has the “advantage that at least one additional charge-charge interaction in the CH3 interface is created.” Prelim. Resp. 12 (citing, e.g., Ex. 2010 ¶¶ 42–48). For the same reasons discussed above, Petitioner has sufficiently established, for purposes of institution, that such disclosure would not reasonably convey to an ordinarily skilled artisan that the inventors had possession of the entire genus of heterodimeric antibodies comprising CH3 domains wherein a non-charged amino acid is replaced with a charged residue so as to create an additional charge-charge interaction in the CH3 interface. In this regard, we also note that “a description that merely renders the invention obvious does not satisfy the [written description] requirement.” Ariad, 598 F.3d at 1352.” slip op. at 34

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner

    “adequately describes a heterodimeric antibody comprising the recited charged residues at the recited positions of the CH3 domains, i.e., “a positively charged amino residue at position 364” at a first CH3 domain and “a negatively charged amino acid residue at position 368” of the second CH3 domain. Having considered the evidence of record at this preliminary stage of the proceeding, and for the reasons set forth below, we are persuaded that Petitioner has shown sufficiently, for purposes of institution, that the ’935 provisional does not provide adequate written description support for claim 1 of the ’859 patent and that, accordingly, Desjarlais and Moore qualify as prior art to that claim. As Petitioner points out, the cited disclosure in the ’935 provisional does not “mention[] positions 364 and 368 together as a pair of positions for potential mutations on two chains.” Pet. 28 (citing Ex. 1002 ¶¶ 109–19). Although Patent Owner is correct that examples or actual reduction to practice are not required for adequate written description and “[a] specification may . . . contain a written description of a broadly claimed 34 invention without describing all species that [the] claim encompasses,” Prelim. Resp. 15 (quoting Ariad Pharms., 598 F.3d at 1352 and Cordis Corp. v. Medtronic AVE Inc., 339 F.3d 1352, 1365 (Fed. Cir. 2003)), the ’935 provisional must still “reasonably convey[] to those skilled in the art that the inventor[s] had possession of the claimed subject matter” as of the relevant date. Regeneron Pharms., Inc. v. Mylan Pharms. Inc., 127 F.4th 896, 914 (Fed. Cir. 2025); Ariad, 598 F.3d at 1351.” slip op. at 34

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “The ’859 patent does not provide an explicit definition of “immunoglobulin class.” Nevertheless, we do not construe that term to require “two heavy chains with four domains, VH, CH1, CH2, and CH3, and two Fab arms.” As an initial matter, the Specification teaches that antibodies include, 16 e.g., IgE and IgM — which have an additional CH4 domain in their heavy chains — as well as functional derivatives and/or fragments of known antibody isotypes. Ex. 1001, 11:44–48. Patent Owner’s proposed construction, which limits antibodies to those having two Fab arms and “two heavy chains with four domains, VH, CH1, CH2, and CH3,” excludes these embodiments and cannot be correct. Moreover, the ’859 patent defines antibody as containing “one or more domains” that bind an epitope on an antigen. Ex. 1001, 11:39–44. Thus, an antibody does not require two Fab arms as in a native immunoglobulin molecule.12 The ’859 patent also describes a preferred embodiment as “Ig-like molecules.” Id. at 11:49–52. Thus, we look to the definition of “Ig-like molecule” in the ’859 patent, i.e., “a proteinaceous molecule that possesses at least one immunoglobulin (Ig) domain,” to inform our understanding of the phrase “immunoglobulin class of proteins.” Ex. 1001, 11:4–6. Accordingly, we further construe “immunoglobulin class of proteins” to mean proteinaceous molecules comprising at least one domain that is derived from or shares sequence homology with an immunoglobulin domain.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,926,859
• Xencor, Inc. v. Merus N.V.Instituted
  PTAB · Sep 26, 2025 · IPR2025-00604 · APJ Ryan H Flax · IPR · Institution

  The Board instituted IPR on claims 1, 2, 7–24, 26–28, and 30–32 on all four grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions in view of the existing record, we conclude that Petitioner demonstrates a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’286 patent is unpatentable under the presented grounds. See Pet. Therefore, we grant institution of inter partes review. Our reasoning is discussed below. A.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A POSA at the time of the alleged invention would have at least an advanced degree (e.g., a Master’s or Ph.D.) in biochemistry, process chemistry, protein chemistry, chemical engineering, molecular and structural biology, biochemical engineering, or similar disciplines; several years of post-graduate training or related experience (including industry experience) in one or more of these areas; and two or more years of experience in the production of bispecific antibodies. (EX1002, ¶¶16-17.) Pet. 15. Patent Owner states, “[f]or purposes of the Preliminary Response, Patent Owner applies Petitioner’s proposed definition of a POSA.” Prelim. Resp. 10. At this point, we accept and use Petitioner’s proposed, and unopposed, definition of the ordinarily skilled artisan. It appears that Petitioner’s proposed definition comports with the level of skill in the art reflected in the prior art of record and the ’286 patent, itself. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). C.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningNo construction neededDecided for petitioner

    “The ’286 patent uses the term “heavy chain” or “heavy chains” repeatedly; however, we find no express definition of the term. See generally Ex. 1001. Rather, the ’286 patent uses the term “heavy chain” in relation to antibody structure in a way that suggests the term is standard and well known in the art. See, e.g., id. at 3:19–59 (Background). The parties’ briefing on the technology reinforces this fact. See Pet. 5–14 (“The basic structure of natural IgG comprises four protein chains—two identical heavy chains (shown in red) and two identical light chains (shown in blue)—which are arranged in a Y-shaped configuration: . . . (EX1013, 112-13; EX1002, ¶¶23-30.)”); Prelim. Resp. 3–4 (“Natural or wild type Igs have a particular structure made of two identical light (L) chains and two identical heavy (H) chains. See EX2008 at ¶ 23. Each Ig heavy chain consists of three constant domains (CH1, CH2, and CH3) and one variable domain (VH), which is also isotypes, or a functional derivative and/or fragment of these. In a preferred embodiment, Ig-like molecules are produced that are antibodies of the IgG isotype because IgG antibodies e.g. have a longer half life as compared to antibodies of other isotypes. Ex. 1001, 11:9–21. As noted above (see supra Section I.C), IgG antibodies’ heavy chains have three constant domains, but IgE and IgM have four. Thus, Patent Owner’s argument that heavy chain means one variable and three constant domains, and two differently-binding Fab arms, ignores embodiments of the invention. consistent with the definition of heavy chain in the ’286 Patent. See EX2008 at ¶ 24; EX1001 at 11:58–66.”). This is also how the ’286 patent generally uses the term. See Ex. 1001, 11:58–12:1. But, the Specification does not limit its embodiments to only IgG antibodies because it also describes that the invention may be “IgG1, IgG2, IgG3, IgG4, IgA, IgE, and IgM” type antibodies, and fragments. Ex. 1001, 11:9–21; see also supra n.10 (quoting the ’286 patent’s definition of antibody). Other embodiments would not necessarily have the heavy chains as argued by Patent Owner. There is no evidence of record that the ’286 patent’s claims or the Specification generally use or limit the term “heavy chains” (or “heavy chain”) in any way deviating from its ordinary and customary meaning in the art. Therefore, at this stage of the proceeding, we decline to expressly interpret this claim language. 2. Summary on Claim Construction At this stage of the proceeding, we expressly construe no claim terms and give each claim term the ordinary and customary meaning it would have had to the person of ordinary skill in the art as of the invention date. See Nidec Motor Corp., 868 F.3d at 1017. If either party intends to further argue claim construction at trial, they should do so in a clearly designated section of their briefing so as to expressly identify such arguments. See, e.g., 37 C.F.R. § 42.104(b)(3) (content of petition); see also Board’s Consolidated Trial Practice Guide (CTPG) at 46, 48–45 (Nov. 2019).12 Claim construction arguments should not be relegated to patentability arguments on the facts.” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted

    “In brief summary, these limitations require one CH3 heavy chain to have a positive amino acid substituted in place of a neutral one, the other CH3 heavy chain to have a negative amino acid substituted in place of a neutral one, and that when the heavy chains are expressed by culturing the host cell these positive and negative amino acids interact and the antibody produced is a heterodimeric antibody. Petitioner asserts that Lazar expressly teaches engineering two CH3 domains so that, when expressed, they interact and form a heterodimeric CH3 interface by making neutral-to-positive and neutral-to-negative amino acid substitutions at known interacting residues on each CH3 domain, e.g., S364E (changing neutral serine to negative glutamic acid at residue 364) on one CH3 domain, and L368K (changing neutral leucine to positive lysine at residue 368) on the other CH3 domain; or T366D (swapping neutral threonine for negative aspartic acid at residue 366) on one CH3 domain and L351K (swapping neutral leucine for positive lysine at residue 351) on the other CH3 domain; that these residues were known in the art to be respective interfacing contact residues; that these modifications favor Fc heterodimerization; and that they result in a heterodimeric antibody (proof-of-concept shown by synthesizing and screening). Pet. 23–28 (citing Ex. 1001, 13:1–17, 17:67–18:3, 19:5–12; Ex. 1002 ¶¶ 111–119; Ex. 1004 ¶¶ 121, 183, 241 (Tables 1, 2); Ex. 1007, 8:9–10, 17:19–20 (Table 1); Ex. 1008, 244–36).” slip op. at 29

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 9,358,286
• Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentable
  PTAB · Aug 26, 2025 · IPR2024-00671 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1, 2, 15, 17, 18, 51, 54, and 57 are unpatentable as obvious over the asserted combinations of Richardson, Zhao, Yu, Paparrizos, and Dao.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 41–44; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” PO Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’243 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’243 patent and the prior art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “We agree with Petitioner that the skilled artisan would have had reason to combine the teachings of Richardson and Zhao to achieve the subject matter of claim 1. For example, Petitioner contends that a person of ordinary skill in the art would have modified Richardson’s system to include the USB input circuit of Zhao “to avoid the need to supply a proprietary charger or other type of AC ‘power brick’ that would be less ubiquitous or less standardized,” increase flexibility and convenience, and cater to consumer demand for USB technology. Pet. 36 (citing Ex. 1003 ¶¶ 88–89). Petitioner further alleges that the addition of a USB input circuit would provide for an alternative where traditional charging methods are lost, damaged, or otherwise unavailable. Id. at 35 (citing Ex. 1003 ¶ 88). Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a person of ordinary skill in the art would have modified the teachings of the applied references. See KSR, 550 U.S. at 418.” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Ex. 1005 ¶ 28 (emphasis added). Dr. MacCarley testifies that a person of ordinary skill in the art would have known what external battery charger could have been used and where to place it in Richardson’s system. Ex. 1044 ¶ 13. In particular, Dr. MacCarley explains that there are numerous points in the circuitry disclosed by Richardson where a charging pathway from an external battery charger (e.g. the “battery charger” that Richardson explains is “not shown”, EX1005, ¶ [0028]) could be connected to charge Richardson’s batteries. EX2010, 52:3–54:5. Any of these connection points would be a trivial modification of Richardson’s embodiment. A PHOSITA would have understood how to implement this type of well-known configuration of an external battery charger and associated charging circuitry, which would have been as simple as wiring connections to the terminal anode and cathode of the batteries. The simplicity of this connection is why it is not surprising that Richardson describes such a pathway and leaves it “not shown” in the figures. Id. We credit the testimony of Dr. MacCarley in this regard. Moreover, Dr. Fayed confirms that it was known to recharge a jump starter with a barrel charger. Ex. 2014 ¶ 23.” slip op. at 28

  Patent outcomesUS 11,584,243 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,584,243
• Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentable
  PTAB · Aug 26, 2025 · IPR2024-00577 · APJ Avelyn M Ross · IPR · Final written decision

  Claims 1, 32, 38, 39, 47, 52, and 54 are unpatentable as obvious over Richardson and Zhao and over Yu and Paparrizos.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art, as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa. Pet. 22 (citing Ex. 1003 ¶¶ 39–42; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” PO Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’023 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’023 patent and the prior art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner submits there are no formal claim constructions necessary in this proceeding.” Pet. 23. Patent Owner “does not propose any terms need to be construed.” PO Resp. 18. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 12

  • Expert testimonyPetitioner expert creditedDecided for petitioner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We agree with Petitioner that the skilled artisan would have had reason to combine the teachings of Richardson and Zhao to achieve the subject matter of claim 1. For example, Petitioner contends that a person of ordinary skill in the art would have modified Richardson’s system to include the USB input circuit of Zhao to avoid the need to supply a proprietary charger or other type of AC ‘power brick’ that would be less ubiquitous or less standardized,” increase flexibility and convenience, and cater to consumer demand for USB technology. Pet 45–46 (citing Ex. 1003 ¶¶ 88– 89). Petitioner further alleges that the addition of a USB input circuit would provide for an alternative where traditional charging methods are lost, damaged. or otherwise unavailable. Id. at 45 (citing Ex. 1003 ¶ 88). Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a person of ordinary skill in the art would have modified the teachings of the applied references. See KSR, 550 U.S. at 418. We acknowledge, but are not convinced by, Patent Owner’s arguments that the nature of Richardson requires the ability to charge a high capacity battery and rapid recharging and therefore would not have led a person of ordinary skill in the art to include Zhao’s USB charging circuit in Richardson. See PO Resp. 25–31. In particular, we are not persuaded that Richardson is limited to high capacity, rapid recharging of batteries as Patent Owner suggests. Instead, Richardson broadly describes “an apparatus and method for temporarily delivering supplemental power to the electrical system of a vehicle” (Ex. 1005 ¶ 6) where “[t]he jump starter 10 may be configured for 12, 18, 24, 30, 36, 42 or 48 volts” (id. ¶ 34). According to Richardson, this may be achieved by using “two or more batteries of the same or different voltage levels . . . to achieve the voltage requirements of the vehicle to be started.” Id. By way of example, Richardson states that “if the batteries 23 are both 12-volt batteries, the system may be configured for 12- or 24-volt operation” and “[i]f the batteries 23 are 12-volt batteries and a battery 25 is a 6-volt battery, 18- or 30-volt configurations may be provided.” Id. Neither Richardson’s claims nor its specification require any particular charging capacity or charging time. See generally Ex. 1005. While a single, near-final paragraph of Richardson introduces the concept of rapid charging of the jump starter batteries to charge a fleet of vehicles, Richardson characterization is permissive or optional. For example, Richardson states The charging system of the vehicle may be used to charge the capacitors 21 and jump starter batteries 22. . . . This allows the capacitors 21 and jump starter batteries 22 to be fully recharged in about 1 to 5 minutes and can therefore start many vehicles in a row without becoming discharged. Id. ¶ 55 (emphasis added). We do not view this singular occurrence as supplanting the breadth of Richardson’s complete disclosure. Furthermore, the crux of Patent Owner’s argument is that because of Richardson’s goal of charging high capacity batteries a USB charger would require significant charging time. PO Resp. 29; Sur-reply 2–14 But, nowhere does Patent Owner allege that a USB charger would not work given sufficient time.11 See generally PO Resp. and Sur-reply. And, when faced with no alternative, the person of ordinary skill in the art must balance the trade-offs and consider charging slowly, or not at all. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (explaining that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner 11 Petitioner in its Reply presents some evidence of charging times using a USB input charger. Pet. Reply 4–7; Ex. 1044 ¶¶ 6–12, Appendix A. Patent Owner disputes the accuracy of Petitioner’s calculations. Sur-reply 2–11. But, whether Petitioner’s calculations are accurate or not, Petitioner’s proposed alternative modification does not remove the faster charging path and instead adds the convenience and flexibility of a secondary charging method where the primary and faster charging path is unavailable. Ex. 1044 ¶ 12.” slip op. at 21

  Patent outcomesUS 11,447,023 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,447,023
• Mastercard Incorporated / Mastercard International Incorporated v. Ov Loop, Inc.All claims unpatentable
  PTAB · Aug 7, 2025 · IPR2023-01289 · APJ James A Tartal · IPR · Remand

  On remand, the Board maintained that claims 1–33 are unpatentable as obvious over Collinge, including claims 10–13 and 27–30.

  RulingsRemand decision

  • RemandDecided for petitioner

    “Decision which components of Collinge “the Board relied on for claim 10’s limitation ‘receiving [at the remote computer system] an authorization request to authorize the transaction from the POS terminal.’” Remand Order 3. The Order instructs: “[o]n remand, the Board shall consider Patent Owner’s arguments as to claims 10 and 27, and their dependent claims. Regardless of the Board’s disposition on remand, the Board should address Patent Owner’s arguments and explain more fully its findings as to claims 10 and 27.” Id. The Remand Order further states that “this case is remanded to the Board for consideration of the arguments made in Patent Owner’s DR Request” and that we “should point more specifically to where in Collinge the argued limitation is taught, if anywhere, and which components of Collinge satisfy the limitation, if any.” Id. As instructed, in this Decision we consider Patent Owner’s arguments raised in the DR Request as to claims 10 and 27, and their dependent claims.3 As explained in detail below, and consistent with our determination in the Final Written Decision, we conclude Petitioner establishes by 3 We consider the arguments presented in Patent Owner’s DR Request in the context of arguments presented in Patent Owner’s Response, as arguments on the merits may be considered waived unless presented in that Response. See Paper 16, 9 (explaining that “Patent Owner is cautioned that any arguments not raised in the response may be deemed waived”). a preponderance of the evidence that the subject matter of claims 10–13 and 27–30 of the ’171 patent would have been obvious over Collinge.4” slip op. at 3

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable

    “Ex. 1011 ¶ 77. In short, although paragraph 77 of Collinge is cited in the Petition and addresses both issuer processing server 308 and acquirer processing server 312, Petitioner relies on and shows that issuer processing server 308 (not acquirer processing server 312) receives “an authorization request to authorize the transaction from the POS terminal,” as required by claim 10. Pet. 58–59; Pet. Reply 16–18; DR Req. Opp. 2–4. Furthermore, there is no dispute that in Collinge the “authorization process” is performed at issuer processing server 308 in response to a request it receives. Ex. 1011 ¶ 77 (“The issuer processing server 308 may then validate the application cryptogram”). Claim 10 requires “performing an authorization process” including “receiving an authorization request to authorize the transaction from the POS terminal” at the remote computer system. We recognize that acquirer processing server 312 facilitates receiving transaction information from the POS terminal and communicating an authorization request to the issuer processing server 308. See Ex. 1011 ¶ 77. It is merchant point-of-sale terminal 120, however, that transmits “the received payment information and any additional transaction information (e.g., transaction amount, merchant identifier, etc.) to the acquirer processing server 312,” so that “acquirer processing server 312 may then generate and submit an authorization request for the financial transaction” through payment network 124 to issuer processing server 308 for validation. Id. Thus, Petitioner shows that in Collinge the request received by the issuer processing server 308 is “from” the POS terminal, as required by claim 10. See Pet. 58–6-; Ex. 1011, ¶ 77, Fig. 7.” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “’095 Provisional, reproduced above). Reply 17–18 (citing Ex. 1009 ¶ 46, Fig. 7). We credit Dr. Fiske in this regard, who explains that “the functionality performed” in the components in the “Blue-Box Structures,” that is Collinge’s Cloud Systema and Issuer System, “share a ‘connection 178’ therebetween,” as shown in Figure 7 of the ’095 Provisional. Ex. 1050 ¶ 43. We also considered Dr. Easttom’s opinion that Collinge’s Cloud System 110 and Issuer System 108 (see Ex. 1011, Fig. 7) are not one computer system because, in his view, each item “is (one or more) separate systems that operated independently from the others.” Ex. 2009 ¶ 150; see also PO Resp. 36–37 (arguing that Petitioner presents “no evidence” to show that allegedly “distinct” components are part of one remote computer system). We find Dr. Easttom’s opinion untenable because it is contrary to the express disclosure of Collinge, which demonstrates that, rather than operating “independently,” Cloud System 110 and Issuer System 108, and specifically remote-SE system 110 and issuer processing server 308, are connected and operate together through that connection, remotely from the mobile device. The Final Written Decision expressly agrees with and adopts Petitioner’s contentions with regard to claim 10, and we maintain that position here. See FWD 56–59.” slip op. at 26

  Patent outcomesUS 10,032,171 unpatentable
  § 103 obviousness
  Patents in suitUS 10,032,171

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.