- PTAB · Nov 4, 2025 · IPR2025-00785 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were unpatentable over either asserted § 103 combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). 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. 37 C.F.R. § 42.108(a).” slip op. at 2
- BurdenDenied
“Petitioner’s single-reference allegations do not align with its two “combination” challenges identified above. As for its “combination” allegations, Petitioner does not identify, for example: (1) which limitations in claim 1 are missing in any of Chow, Reiffin, and Kurowski; (2) which aspects of any of these references requires modification to achieve the invention of claim 1; (3) which specific reference Petitioner posits to teach any such missing limitation in another reference or as the basis to modify a specific feature in a given reference; or (4) a rational reason as to why the skilled artisan would have combined particular teachings from one of Chow, Reiffin, and Kurowski with particular teachings of another such reference to achieve the invention of claim 1 as a whole.5 Instead, Petitioner improperly punts its burden to define its obviousness challenges to the Board (and Patent Owner). See, e.g., Pet. 38 (“To the extent the Board disagrees that [any particular] limitation is disclosed by the Chow/Reiffin combination 4 See, e.g., Pet. 16, 19 (“Thus, Chow and Reiffin both disclose or suggest claim [1b].” “Therefore, claim 1 was obvious over Chow and Reiffin separately and over their combination.”); see also id. at 12–19, 37–42. 5 Petitioner argues that the skilled artisan would have combined Reiffin with Chow for “increased computational power and the ability to solve larger problems.” Pet. 11. These generic “reasons” to combine the alleged teachings of Chow and Reiffin (and Kurowski) lack rational underpinning, particularly because Petitioner does not even identify which teachings of which references are being combined to achieve any particular limitation in claim 1. See Prelim. Resp. 40 (“[Petitioner’s] ‘spaghetti on the wall’ approach fails [to] explain how Petitioners’ purported motivation for combining Chow and Reiffin fits with each of the at least 64 different possibilities for combining Chow and Reiffin.”).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and quotes various passages in Chow. Pet. 13–14. For example, Petitioner identifies that, under “Description of the Related Art,” Chow states: “Typically, workload is apportioned by somehow logically dividing the data to be processed. For example, a block of data might be divided evenly into a number of parts equal to the number of available threads, so that each thread can independently process a separate portion of the data. This is called ‘static’ or ‘a priori’ partitioning.” Pet. 13 (citing Ex. 1003, 1:38–42; Ex. 1022 ¶ 144). Petitioner also identifies that Chow describes “aggregate tasks” divisible into “multiple sub-tasks,” and “multiple task execution units are independently operated on-demand to sequentially self-allocate and execute sub-tasks of the aggregate task.” Pet. 13–14 (citing Ex. 1003, 1:66–2:15). After presenting such quoted passages from Chow, Petitioner proffers the conclusion that Chow discloses the Partitioning Limitation, but does so without sufficiently explaining why such passages allegedly teach or suggest the features of the Partitioning Limitation not only within the context of claim 1 as a whole, but given that Chow itself disparages such “static” or “a priori” partitioning as posing “a significant problem” (Ex. 1003, 1:52–58). Patent Owner persuasively responds (and we agree for the same” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“combination” challenges identified above. As for its “combination” allegations, Petitioner does not identify, for example: (1) which limitations in claim 1 are missing in any of Chow, Reiffin, and Kurowski; (2) which aspects of any of these references requires modification to achieve the invention of claim 1; (3) which specific reference Petitioner posits to teach any such missing limitation in another reference or as the basis to modify a specific feature in a given reference; or (4) a rational reason as to why the skilled artisan would have combined particular teachings from one of Chow, Reiffin, and Kurowski with particular teachings of another such reference to achieve the invention of claim 1 as a whole.5 Instead, Petitioner improperly punts its burden to define its obviousness challenges to the Board (and Patent Owner). See, e.g., Pet. 38 (“To the extent the Board disagrees that [any particular] limitation is disclosed by the Chow/Reiffin combination 4 See, e.g., Pet. 16, 19 (“Thus, Chow and Reiffin both disclose or suggest claim [1b].” “Therefore, claim 1 was obvious over Chow and Reiffin separately and over their combination.”); see also id. at 12–19, 37–42. 5 Petitioner argues that the skilled artisan would have combined Reiffin with Chow for “increased computational power and the ability to solve larger problems.” Pet. 11. These generic “reasons” to combine the alleged teachings of Chow and Reiffin (and Kurowski) lack rational underpinning, particularly because Petitioner does not even identify which teachings of which references are being combined to achieve any particular limitation in claim 1. See Prelim. Resp. 40 (“[Petitioner’s] ‘spaghetti on the wall’ approach fails [to] explain how Petitioners’ purported motivation for combining Chow and Reiffin fits with each of the at least 64 different possibilities for combining Chow and Reiffin.”). slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,257,582 - 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 - PTAB · Oct 31, 2025 · IPR2025-00873 · APJ David Cotta · IPR · Institution
The Board instituted review of claims 1–14 on all asserted grounds after finding a reasonable likelihood that claim 1 is obvious over Gilmour, Merriman, and Frauenhofer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on at least one challenged claim is unpatentable. Thus, for reasons explained below, we institute inter partes review of claims 1–14 of the ’445 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1002 ¶¶ 30–34). Petitioner asserts that the POSA’s education “could include a bachelor’s degree in business or economics, with an emphasis on the use of technology in marketing or advertising” or “similar knowledge gained through actual work experience.” Id. Alternatively, the POSA’s education could include “a bachelor’s degree in computer science or equivalent industry experience, and work with a team that includes software engineers.” Id. According to Petitioner, the POSA “could also have qualified with more formal education and less technical experience, or vice versa.” Id. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’445 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Petitioner “applies plain-and-ordinary meaning to all terms.” Pet. 20. We determine that no terms require express construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, 8 and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner recognizes that the combination of Gilmour and Merriman alone “does not disclose that the profile owner computer automatically 17 selects a media property entity of a plurality of media property entities based on a comparison of the profile information with a plurality of stored requests from the plurality of media property entities.” Id. at 42. To address this deficiency, Petitioner asserts that Frauenhofer “discloses automatically selecting a user of a plurality of users based on a comparison of content with the plurality of stored requests from the users.” Pet. 44 (citing Ex. 1014, 3:12–19). Petitioner argues that it would have been obvious to combine Frauenhofer’s teachings with those of Gilmour and Merriman to arrive at the claimed method. Id. According to Petitioner a POSA “would have been motivated to make this combination because it would conveniently allow Gilmour’s requesting entities (which are media property entities) to make initial requests to the profile service provider, and then automatically receive profiles matching the requests on an ongoing or periodic basis.” Id. at 45. (citing Ex. 1010, 41; Ex. 1011, 39–40, 51; Ex. 1012 ¶ 25; Ex. 1013, 3:20– 23; Ex. 1002 ¶ 155).” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,984,445 - 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 - PTAB · Oct 23, 2025 · IPR2025-00987 · APJ Stephen E Belisle · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any of claims 1–37 was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2024); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). 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. 37 C.F.R. § 42.108(a). Applying those standards, and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that any one of the Challenged Claims is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we deny institution of an inter partes review of the ’722 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’722 patent, the background technical field, the prior art, and Petitioner’s proposed definition of the skilled artisan, which is supported with testimony of Dr. Easttom (Ex. 1003 ¶¶ 22–23), we apply the level of skill set forth above.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits a proposed construction for the term “activation module” implicated in dependent claims 17–19, 23–25, 29–31, and 35–37. Pet. 10–12. Petitioner otherwise argues, “[n]o express construction of the other challenged claims is necessary in this IPR because the prior art renders these claims obvious under any reasonable construction.” Pet. 12. Patent Owner argues that “the Board should apply the plain and ordinary meaning to all challenged claim terms under the Phillips standard.” Prelim. Resp. 9. We find that no express construction of any term is necessary to resolve this case.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“generic “reasons” to combine the alleged teachings of Lawson and Choquier lack rational underpinning, particularly for the specific and substantial modifications of Lawson necessary to reach the subject Mapping Limitation, and are beset with impermissible hindsight. The Board must “recognize that we cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.” Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“Without any explanation as to how or why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against.”); see KSR, 550 U.S. at 421 (2007) (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”). “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1313–14 (CCPA 1971). In this case, Petitioner does not show sufficiently how or why an alleged desire to “increase efficiency, redundancy, and scalability of Lawson’s routing network” would have led the ordinarily skilled artisan specifically to the subject Mapping Limitation, but for using claim 1 as a roadmap. Indeed, as Patent Owner persuasively argues: The Petition fails to tie these generic design goals to the specific functionality that the Petition seeks to cherry-pick from Choquier and import into Lawson. Put another way, the Petition does not explain what about Choquier’s scalability, load balancing and redundancy techniques would have motivated [the skilled artisan] to have configured Lawson’s servers to “determine which server groups (node types) should receive an event update based on this server groups to event producer mapping.” Prelim. Resp. 26–27. Petitioner never identifies how Lawson’s registries of servers/consumers become the claimed gateway-kept category→node-type mapping (EX1005, 10:63–67; 12:36–43). Nor does Petitioner show that Choquier’s service map—not keyed by message category and used for CPU-based server selection—somehow supplies the missing category→node-type routing rule that controls update-message traffic through routing nodes (EX1007, 11:2–22; 12:33–36; 12:56–61). To the contrary, Choquier’s update path increases processing by replicating each update to every server in the service group (EX1007, 21:27–50), which is the opposite of the claim’s mapping-based control that limits which nodes must process a given update. Id. at 30–31. We find this context shows that Petitioner’s reasons for combining Lawson and Choquier (and Tsutsumitake) to achieve the subject Mapping Limitation lack rational underpinning, and that Petitioner’s proposed combination of teachings is based on impermissible hindsight.” slip op. at 27
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,407,722 - PTAB · Oct 16, 2025 · IPR2025-00702 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 4, 5, 16, 17, and 19 on all asserted grounds after finding a reasonable likelihood that claim 4 was obvious over Nakamura and Benini.
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) (2023). 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 ’270 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’270 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or a similar field, with at least two years of relevant experience working with VR [virtual reality] and AR [augmented reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 27 (citing Welch Decl. ¶¶ 88–90, 91). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“(citing Phillips, 415 F.3d at 1312–17). “[W]hile extrinsic evidence can shed useful light on the relevant art, . . . it is less significant than the intrinsic record in determining the legally operative meaning of claim language.” Phillips, 415 F.3d at 1317 (internal quotation marks omitted). We construe expressly only those claim terms that require analysis to determine whether to institute inter partes review. 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”). Petitioner contends that “[t]his Petition establishes the prior art meets each of the claim limitation[s] under any reasonable construction,” and, “[t]hus, no express construction is required.” Pet. 27–28. Patent Owner’s Preliminary Response does not contain a separate claim construction section. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“1. Setting an origin location Limitation 4.a.1 recites, “a first manual input for setting a[n] origin location setting for a location reference for gameplay.” Ex. 1001, 24:44–46. Patent Owner argues that Petitioner has not shown that this limitation disclosed or rendered obvious by the relied-on references. See Prelim. Resp. 29. Petitioner contends that Nakamura teaches the user’s manual selection of a starting point of a game. Pet. 38–40 (citing, inter alia, Welch Decl. ¶¶ 147–148; Ex. 1007 ¶¶ 9, 35–36, Fig. 5); see also id. at 62 (for this Ground 2, referencing the contentions made for Ground 1). Petitioner further contends that “[a] POSITA would have also recognized that the initial position setting provides a location reference for gameplay.” Id. at 63. For this Ground 2, Patent Owner incorporates by reference its arguments regarding Ground 1 based on Cheok, Nakamura, and Foxlin077. See Prelim. Resp. 29. Patent Owner argues that “Nakamura’s position icon 113 [displayed at a virtual location appropriate for the initial position] represents a virtual character’s virtual location in the virtual world, rather than a user’s physical location, and has no relationship to the physical location.” Prelim. Resp. 24 (citing Ex. 1038 ¶¶ 36, 38). According to Patent Owner, “establishing a physical origin location as a location reference is critical to key features of the patented system.” Id. at 25 (citing Section III of the Preliminary Response). Patent Owner’s argument is not commensurate in scope with the language of claim 4, which recites an input for setting “a[n] origin location,” not “a physical origin location.” In support of its arguments, Patent Owner relies on the Specification, stating, for example, that “[t]he ’270 patent’s system ‘prompt[s] a user to” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,967,270 - PTAB · Oct 15, 2025 · IPR2025-00746 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–3 of the ’151 patent over Levine under §103, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion as to Independent Claims Having reviewed the contentions Petitioner has presented, with supporting evidence, and in light of Patent Owner’s arguments made in the Preliminary Response, we determine that Petitioner has shown a reasonable likelihood of prevailing on its contentions of obviousness for claims 1 and 2 of the ’582 patent and claim 1 of the ’151 patent.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We are not persuaded by Patent Owner’s arguments. As stated in our summary of Petitioner’s contentions, Petitioner relies on what would have been obvious to a person of ordinary skill in the art given Levine’s programming architecture and providing a button or other interface for the avatar to perform an action in that game. It seems reasonable, at this juncture, that Levine’s teachings of various actions that characters of a game can take (picking up a sword, for example), combined with the teaching that a user can press *9999 to “kill” a monster, reasonably support that a person of ordinary skill in the art would use Levine’s teachings of a client interacting with a game object (by clicking a mouse, angling the joystick or pressing a trigger button) to provide a button to “shoot” the sniper’s rifle as argued by Petitioner. Ex. 1003 ¶¶ 211, 528, 659. Furthermore, we are not persuaded by Patent Owner’s characterization of Levine as having no need for manual control of the “sniper” rifle. None of the passages of Levine that Patent Owner points to state that the actions by an avatar are automated. And even if some automation of actions were implemented in a game, Levine leaves it to the game designer to implement the set of rules on how the user’s actions would affect the state of the objects in the game. See id. ¶ 351. Accordingly, given the latitude of design options that Levine describes to interact with an avatar, Petitioner’s contention of using Levine’s interface space with buttons appears to be a reasonable and suitable option for playing Levine’s “sniper” game, and require the manual interaction with such a button to “shoot” the rifle.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill, would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information. A person could also have qualified as a person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. 745 Pet. 4−5 (citing Ex. 1002 ¶¶ 21−25); 746 Pet. 4−5. Patent Owner does not propose a level of ordinary skill. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6
§ 103 obviousnessPatents in suitUS 10,974,151 - PTAB · Oct 15, 2025 · IPR2025-00745 · APJ Miriam L Quinn · IPR · Institution
The Board instituted review of claims 1, 2, 11, and 13 of the ’582 patent and claims 1–3 of the ’151 patent on all asserted Levine obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’582 patent and at least one claim of the ’151 patent are unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the instant Petitions. 37 C.F.R. § 42.108(a).” slip op. at 3
- Skill levelSkill level petitioner adoptedOther
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill, would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years combined experience in designing and/or developing interactive location-based computer systems/software, such as video games or other simulations incorporating location information. A person could also have qualified as a person of ordinary skill in the art with some combination of (1) more formal education (such as a master’s of science degree) and less technical experience, or (2) less formal education and more technical or professional experience. 745 Pet. 4−5 (citing Ex. 1002 ¶¶ 21−25); 746 Pet. 4−5. Patent Owner does not propose a level of ordinary skill. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 6
- BurdenInstituted
“We are persuaded by Petitioner’s showing at this juncture, that Levine teaches the “location-based game” by describing the use of Locales in the grid system to show the “virtual playfield” in which the games are played, and that the “first character” in Levine is an “avatar” controlled by a user as described by Petitioner and summarized above. We are also persuaded by Petitioner’s showing at this juncture (and as summarized above) that Levine teaches a “first character in said virtual playfield is displayed on a display” because in the example described as the “sniper” game, Levine renders a graphical representation (depicted in Figure 47) of the Locale in which the “sniper” is located and the relative position of other game characters in nearby areas. In addition, it is reasonable to conclude, based on the argument and evidence in the present record, that it would have been obvious to show the required location in the “monster” game given that the users roam around Wall Street with the objective of finding “monsters” to “kill” and as such, it would have been obvious to display, on whichever device users are using to play, the location of the “avatar” and the “monsters.” And currently there is no evidence in the record showing that displaying locations of the “avatars,” “monsters,” or any other character’s locations would have been uniquely challenging or difficult for one of ordinary skill in the art. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).” slip op. at 10
NonePatents in suitUS 9,662,582 - PTAB · Oct 15, 2025 · IPR2025-00703 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1, 4, 11, 16, 30, and 102 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Cheok and Foxlin077.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“persuasive for several reasons. As an initial matter, the claim does not recite “a bounded physical play space.” Rather, the claim recites “a physical playfield.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) in 2004 would have had at least a bachelor’s degree in electrical engineering, computer science, or similar field, with at least two years of relevant experience working with VR [Virtual Reality] and AR [Augmented Reality] systems. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Welch ¶95; see also ¶¶94. Pet. 17. Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“references’ teachings. Prelim. Resp. 36–38. Patent Owner specifically argues that “[t]here is no motivation to modify Cheok’s method for allegedly determining the direction of gameplay to include a prompt requesting a manually provided direction; it already allegedly determines direction by the user’s simple movement, which the user will already do while playing the game, a much more efficient process.” Id. at 36 (citing Pet., 29–36). According to Patent Owner, “[a]dding a prompt requesting manual user input for a direction of gameplay has drawbacks to user experience; it slows down the beginning of gameplay and complicates the overall system, removing the natural feel of playing without having to set up the game, when Cheok already works for its intended purpose.” Id. at 36–37. We do not find these arguments persuasive at this stage. Even if Patent Owner is correct that the proposed combination would be less efficient or slow down the beginning of play, that there may be drawbacks from the proffered combination of teachings does not necessarily show a lack of motivation to combine teachings. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000). And, even if the proposed combination would not have been the best choice, that does not necessarily mean that it was non-obvious. See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021) (“It’s not necessary to show that a combination is ‘the best option, only that it be a suitable option.’” (quoting PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014)). Dr. Welch testifies, for example, that “[a] POSITA would have . . . recognized it would be beneficial to improve the Cheok system by implementing a similar inertial sensor initialization/reinitialization process [as in Foxlin077] to address any potential accuracy or user experience issues associated with drift.” Welch Decl. ¶ 156. Dr. Welch also testifies that, “in a virtual environment application like the Cheok system, in which a user must interact with the real environment, a POSITA would have understood that Foxlin077’s manual reinitialization process would be beneficial to address accumulated drift when an automatic drift compensator component is not sufficiently removing drift.” Id. ¶ 157. At this stage, that testimony is unrebutted with evidence, as opposed to mere attorney argument.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2023). 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 ’821 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’821 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,033,821
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.