- Merck Sharp & Dohme LLC v. The Johns Hopkins UniversityAll claims unpatentablePTAB · Sep 18, 2025 · IPR2024-00625 · APJ Deborah Katz · IPR · Final written decision
Claims 1–8 are unpatentable: claims 1–4 and 6–8 are anticipated by MSR, and claim 5 is obvious over MSR with the additional marker-testing teachings of Chapelle.
RulingsFinal written decision- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference.” Acoustic Tech., Inc. v. Itron Networked Sols., Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020). Extrinsic evidence, such as declarations and depositions may be considered when it is used to explain, but not expand, the meaning of a reference. See In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (holding that the depositions and declarations of skilled workers were properly used to show what those skilled in the art would have known about the prior art). Although Patent Owner argues that a missing element cannot be filled by what an ordinarily skilled artisan would have envisioned, Petitioner’s argument is based on what one of ordinary skill in the art would have understood from what the MSR expressly teaches. (See Pet. 20 (“Indeed, prior art concerning the MSI-H Study indicates that the physicians understood postings on clinicaltrials.gov indicated that patients had ‘metastatic tumors.’ (EX1049, 444; see also EX1050, S4; EX1003, ¶62.)”).) Unlike the facts of Nidec, where a missing signal could have been envisioned but was not present, we are persuaded by the evidence Petitioner presents that those of ordinary skill in the art understood the MSR express disclosure to include patients with unresectable or metastatic tumors because references referring to the study underlying the MSR discuss the inclusion of patients with metastatic tumors in the study. Even if Dr. Neugut’s reasoning that the reference to “measurable” disease in the MSR would have indicated patients having metastatic cancer is flawed, we are persuaded by Petitioner’s evidence of publications referring to the MSR as a study of metastatic colorectal cancer, and we are further persuaded that one of ordinary skill in the art would have understood the MSR to disclose treating patients having metastatic colorectal cancer with pembrolizumab. (See Ex. 1049, 444, Ex. 1050, S4.) Patent Owner does not address this evidence. Instead, Patent Owner acknowledges that “the MSR discloses treating cancer patients that could be within the claimed subset,” but argues that the MSR does not inherently anticipate results later obtained by treating only patients within the claimed subset. (See Pet. Sur- Reply 5–6.) We are persuaded, though, that Petitioner’s challenge is based on what one of ordinary skill in the art would have understood from the MSR (that patients who had an unresectable or metastatic tumor were selected), not on what is inherent to the disclosure of the MSR. We are persuaded that one of ordinary skill in the art at the time would have understood the MSR to teach selecting a patient “who has an unresectable or metastatic,” as required in claim 1. c) Element 1.2: “microsatellite instability-high (MSI-H) or mismatch slip op. at 14
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Patent Owner argues further that the MSR discloses an experimental use that does not qualify as prior art. (See PO Resp. 16–23.) Patent Owner argues that an inventor can be granted latitude to experiment in the public eye until her invention is ready for patenting. (See id. at 16 (citing Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 64 (1998).) According to Patent Owner, the experimental use negation applies to the MSR under a 13-factor analysis provided in Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353 (Fed. Cir. 2002). (See PO Resp. 17–23.) For example, Patent Owner argues that to establish that treatment of MSI-H cancers was effective, the inventors had to test treatment in humans, there being no animal models, and had to publish the MSR on the government website under federal law. (See PO Resp. 18–20.) Patent Owner argues further that the inventors had control over the MSI-H clinical study and that the field of cancer treatment was highly unpredictable, among other facts. (See id. at 19–20.) Patent Owner argues that “[a]t the time of the MSR’s posting, the claimed invention was not, nor could it have been, ready for patenting. The clinical study that ultimately collected the data reported in the patent specification and supporting the patent claims had not and could not have commenced before the MSR was posted.” (Id. at 21.) In City of Elizabeth, the Supreme Court was concerned that “[i]t is sometimes said that an inventor acquires an undue advantage over the public by delaying to take out a patent, inasmuch as he thereby preserves the monopoly to himself for a longer period than is allowed by the policy of the law,” but held that “when the delay is occasioned by a bona fide effort to bring his invention to perfection, or to ascertain whether it will answer the purpose intended,” the experiment use exception can preserve the inventor’s rights. City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 137 (1877). Because we are not persuaded that Patent Owner could not have filed an earlier application, we are not persuaded that the experimental use doctrine is properly applied in this case. Given that clinical trial protocols published on the ClinicalTrials.gov website have been successfully asserted as prior art in other cases, we are not persuaded by Patent Owner’s arguments that the MSR is not available as prior art against the challenged claims. See, e.g., Salix Pharms., Ltd. v. Norwich Pharms. Inc., 98 F.4th 1056, 1061 (Fed. Cir.), cert. denied, 145 S. Ct. 567 (2024), and cert. denied, 145 S. Ct. 983 (2024). After considering the parties’ arguments and evidence, we are” slip op. at 24
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“In order to show that objective evidence renders the method of claim 5 non-obvious, Patent Owner must show a nexus between the subject matter recited in claim 5 and the evidence of non-obviousness. See Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019) (“to be accorded substantial weight in the obviousness analysis, the evidence of secondary considerations must have a ‘nexus’ to the claims, i.e., there must be ‘a legally and factually sufficient connection’ between the evidence and the patented invention. . . . Ultimately, ‘[t]he patentee bears the burden of showing that a nexus exists.’” (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988), WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999)). Patent Owner argues that there is a nexus between the development and commercialization of pembrolizumab and the patented method of treatment recited in the challenged claims, citing, inter alia, the package insert for Keytruda® (pembrolizumab), but Patent Owner does not direct us to evidence of a nexus to MSI-H or MMR deficient tumors that exhibit instability in the microsatellite markers recited in claim 5 and the unexpected results, commercial success, or other objective measures of non-obviousness flowing from these additional limitations. (See PO Resp. 50–63 (citing Ex. 2129, Ex. 2072 ¶ 190, Ex. 2090 ¶¶ 82–92).) Patent Owner directs us only to evidence regarding determining MSI-H status and then using Keytruda® to treat MSI-H cancer patients, which we determine to be anticipated by the MSR. (See PO Resp. 60.) When evidence of a “secondary consideration [] is exclusively related” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“(Ex. 1001, 26:19–28.) In Grounds 3 and 5, Petitioner argues, relying on Dr. Neugut’s testimony, that Chapelle teaches standard methods of testing whether a tumor is MSI-H, including determining whether the patient’s tumor exhibits instability in a microsatellite marker, such as BAT-25 or BAT-26. (See Pet. 42 (citing Ex. 1007, 3380, 3383; Ex. 1003 ¶ 107).) For example, Chapelle states that “‘a standard test’ using a ‘[p]anel consisting of … BAT26, BAT25’ has ‘stood the test of time.’” (Ex. 1007 at 3382.) Dr. Neugut testifies that one of ordinary skill in the art would have been motivated to treat a patient with an unresectable or metastatic MSI-H dMMR tumor, wherein the tumor exhibits instability in the BAT-25 and BAT-26 microsatellite marker, and would have expected success in doing so, in light of the teachings of Chapelle. (See Ex. 1003 ¶¶ 105–108.) We find that the record as recounted above supports Petitioner’s challenges of claim 5 in Grounds 3 and 5.” slip op. at 31
Patent outcomesUS 11,339,219 unpatentable§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,339,219 - PTAB · Sep 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Remand
The Board instituted IPR of claims 1–21 on all asserted grounds after finding a reasonable likelihood of prevailing on the Nishida-based challenges.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“partes review of U.S. Patent No. 8,266,749 B2 (“the ’749 patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–21 of the ’749 patent. Nike, Inc. (“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 10) and Patent Owner filed a Sur-reply (Paper 13). We discretionarily denied institution under 35 U.S.C. § 325(d). Paper 20. Petitioner filed a request for Director Review of the Decision denying institution. Paper 21. Director Review was granted, the Decision denying institution of inter partes review was vacated, and the case was remanded to the Board. Id. at 4. Specifically, the case was “remanded to the Board with instructions to consider Petitioner’s Nishida grounds and to determine whether the Petition should be instituted.” Id. at 3–4.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the Petition and the Preliminary Response “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 ’749” slip op. at 2
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In support of Petitioner’s position, Dr. Adanur testifies that “Nishida discloses that the unfinished surface area 1.1 is part of the web 1 itself,” that Nishida discloses that the computer-controlled process can (using Nishida’s phrase) “put in” up to seven different textile fibers or yarns into the web of material in one operation, and that, “[t]hus, Nishida discloses simultaneously knitting its layouts 2 and tongue 40 (each a ‘textile element’) with the unfinished surface area 1.1 (a ‘surrounding textile structure’).” Ex. 1002 ¶ 216 (citing Ex. 1022, 2:12–20, 4:47–55, 5:45–49). For purposes of institution, we credit that testimony over the testimony of Dr. Pastore, because, on the current record, we regard Dr. Adanur’s testimony as more consistent with the evidence. This and the other related issues may be explored more fully during the trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’749 patent in March 2004 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 23–24. Patent Owner states that, “[f]or purposes of this Preliminary Response, Nike applies Skechers’ definition for a person of ordinary skill in the art.” Prelim. Resp. 14. 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 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - PTAB · Sep 9, 2025 · PGR2025-00023 · APJ Michael J Fitzpatrick · PGR · Institution
Instituted PGR on claims 1–9 because the Board found it more likely than not that at least one challenged claim is unpatentable over the ’629 publication.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review requires that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable” or that “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” 35 U.S.C. § 324(a)–(b). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Accordingly, we grant the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends a person of ordinary skill in the art (“POSITA”) would have a Ph.D. degree in biological, chemical or biochemical engineering, molecular biology, or biochemistry and at least two years of experience in the field of utilizing or assessing horseshoe crab zymogen proteins (lysate, purified native and/or recombinantly produced) for endotoxin detection and quantitation. More education could substitute for experience to a certain extent, and vice versa. Pet. 22 (citing Ex. 1003 ¶¶48–49). Patent Owner does not dispute Petitioner’s description of a POSITA in its Preliminary Response. Prelim. Resp. 10. 1 In addition to other changes to Title 35, the AIA introduced amendments to 35 U.S.C. § 102. Because Patent Owner concedes that the ’725 application “contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013” (Ex. 1022), the AIA version of § 102 applies to the ’109 patent. AIA § 3(n)(1)(B); Ex. 1001, 1:11–14 (claiming priority to the ’725 application). 2 US 2019/0241629 A1, published August 8, 2019 (“the ’629 publication” (Ex. 1015)). At this stage, we find Petitioner’s description of the level of ordinary skill in the art sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes an express construction of any claim term. See Pet. 22–23; Prelim. Resp. 10. We determine that no express claim construction is necessary based on the present record.” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“To show that the claims of the ’109 patent are unpatentable for lack of written description, Petitioner would have needed to show that the specification as filed (i.e., the ’420 application) fails to reasonably convey to those skilled in the art that Patent Owner had possession of the claimed subject matter as of the July 3, 2023, filing date. Petitioner did not. Pet. 23– 24. Nor does Petitioner’s declarant offer testimony that could support such a showing. See Ex. 1003 ¶50 (“I have been asked to provide my opinions as to the state of the art in this field for purposes of determining what the inventors disclosed as their invention as of December 10, 2013.”), ¶51 (“Whenever I offer an opinion in this declaration about the knowledge of a POSA, the manner in which a POSA would have understood the claims of the ’109 patent or its description, the manner in which a POSA would have understood the prior art, or what a POSA would have been led to do based on the prior art, I am referencing the December 10, 2013 timeframe.”). Although the ’420 application is essentially identical to the ’767 application, the person of ordinary skill in 2013 is not the same as in 2023. See Ariad, 598 F.3d at 1351 (“[T]he [written description] test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” (emphasis added)). Thus, the information presented in the Petition, which is limited to the perspective of a 2013 POSITA, does not demonstrate that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable for lack of written description.” slip op. at 12
Claim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 11,959,109 - PTAB · Sep 9, 2025 · IPR2025-00440 · APJ Tawen Chang · IPR · Institution
The Board instituted IPR of claim 21 on both asserted § 103 grounds, finding a reasonable likelihood that claim 21 is obvious over Mizumura with the ’498 PCT and over Mizumura with McClymont.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons discussed below, we determine Petitioner has demonstrated a reasonable likelihood that the challenged claim of the ’318 patent is unpatentable. Accordingly, we institute an inter partes review of the challenged claim on each of the Grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Nevertheless, we determine that the contrary evidence Petitioner has cited suffices to establish a reasonable likelihood of success at this preliminary stage of the proceeding. In this regard, we also note Dr. Jain’s testimony — currently unrebutted — that an ordinarily skilled artisan would have known, based on Tokunaga’s sequence comparisons of Factor C proteins, that “certain sequence differences between [Limulus polyphemus] and Tachypleus tridentatus were non-conservative (i.e., potentially giving rise to changes in function in terms of enzymatic activity of Factor C).” Ex. 1002 ¶ 94 (citing Ex. 1022, 157). We likewise note Dr. Jain’s testimony that such artisan would have recognized Tokunaga’s conclusion, regarding “immunological and biochemical properties” of Factor C proteins of the two different horseshoe crab species, to be “based on only gross biophysical-biochemical properties” that are not “granular enough” to predict functional properties such as residual activity in presence of specific ions. Ex. 1002 ¶ 100.” slip op. at 22
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledOther
“submitted in a different proceeding and in a different forum, and our rules contemplate objections to admissibility only after institution. See 37 C.F.R. § 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”); also compare Fed. R. Evid. 801(c) (defining hearsay as a statement, not made at the current trial or hearing, “offer[ed] in evidence to prove the truth of the matter asserted”), with Fed. R. Evid. 801(d)(2) (excluding from hearsay statement offered against an opposing party where statement was made by “a person whom the party authorized to make a statement on the subject” or by a “party’s agent or employee on a matter within the scope of that relationship and while it existed”). Nevertheless, as discussed above, Petitioner has provided contrary evidence, including statements from Patent Owner’s patent application, suggesting that, “due to the various differences and diversity of biomolecules depending on the genus and species of the horseshoe crab,” it had not been possible “to accurately determine the full-length sequence structure, expression, and function of [Limulus] proteins and genes using conventional methods” more than 20 years after complete gene and amino sequences from two Tachypleus horseshoe crab species had been reported. Pet. 35 (citing, e.g., Ex. 1005 ¶¶ 12–17). Thus, even if we were to take the Frohman Declaration into account, we find that Petitioner has established a reasonable likelihood 28 of success that the ’767 application disclosures did not enable an ordinarily skilled artisan to make and use the invention of the challenged claim without undue experimentation. Furthermore, assuming that the disclosures in ’767 application would have enabled an ordinarily skilled artisan to express recombinant Limulus polyphemus Factor C protein in HEK293, we find Petitioner has established, sufficient for purposes of institution, that the disclosures do not enable an ordinarily skilled artisan to make such a protein exhibiting the “full scope” of the claimed residual activity, without undue experimentation. Patent Owner cites to disclosures in the ’767 application that (1) describe how to produce recombinant Factor C in HEK293 cells and measure residual activity, (2) suggest “Factor C expressed in mammalian cells can have low susceptibility to activity inhibition by ions,” and (3) provide examples where residual activity met the required minimum. Prelim. Resp. 26–27, 32–34. Nevertheless, whether an ordinarily skilled artisan would have been able to make, based on these disclosures and without undue experimentation, a recombinant Factor C protein having residual activity encompassed by claim 21 but higher — even significantly higher — than that achieved in the example, is a fact intensive issue that would benefit from further development during trial.15 See, e.g., In re” slip op. at 28
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“the proceeding, and for the reasons set forth below, we are persuaded that Petitioner has shown sufficiently, for purposes of institution, that the ’767 application does not provide adequate written description support for claim 21 of the ’318 patent and that, accordingly, Mizumura, the ’498 PCT, and McClymont qualify as prior art to the challenged claim.” slip op. at 19
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,236,318 - LG Energy Solution, Ltd. v. Molecular Rebar Design, LLCAdverse judgmentPTAB · Sep 2, 2025 · IPR2025-00355 · APJ Avelyn Ross · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner after it disclaimed claims 1–23, terminated the IPR, and cancelled the scheduled hearing.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under our rules, a party may request adverse judgment against itself at any time during a proceeding, and we construe a disclaimer of all claims involved in a trial as a request for adverse judgment. 37 C.F.R. §42.73(b). Because Patent Owner has disclaimed all challenged claims, and has requested adverse judgment, we determine that it is appropriate to enter adverse judgment against Patent Owner pursuant to 37 C.F.R. § 42.73(b) and to terminate this proceeding. Under these circumstances, we grant Patent Owner’s Motion, and grant Patent Owner’s request that the hearing in this matter, scheduled for September 15, 2025, be cancelled.” slip op. at 2
NonePatents in suitUS 9,636,649 - LG Energy Solution, Ltd. v. Molecular Rebar Design, LLCAdverse judgmentPTAB · Sep 2, 2025 · IPR2024-01005 · APJ Avelyn Ross · IPR · Adverse judgment
The Board entered adverse judgment against Patent Owner, terminated review of claims 1–23, and cancelled the scheduled hearing after Patent Owner disclaimed all challenged claims.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Under our rules, a party may request adverse judgment against itself at any time during a proceeding, and we construe a disclaimer of all claims involved in a trial as a request for adverse judgment. 37 C.F.R. §42.73(b). Because Patent Owner has disclaimed all challenged claims, and has requested adverse judgment, we determine that it is appropriate to enter adverse judgment against Patent Owner pursuant to 37 C.F.R. § 42.73(b) and to terminate this proceeding. Under these circumstances, we grant Patent Owner’s Motion, and” slip op. at 2
NonePatents in suitUS 9,636,649 - Synaffix B.V. v. Hangzhou Dac Biotech Co., Ltd.Some claims unpatentablePTAB · Aug 26, 2025 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Final written decision
Claims 1–17, 20, 21, 24, 26, and 29–31 are unpatentable; claims 25 and 32–34 were not shown unpatentable, and the motion to exclude was dismissed as moot.
RulingsFinal written decision- RemandOther
“review of claims 1–17, 20, 21, 24–26, and 29–34 of the ’682 patent. Paper 2 (“Pet.”), 1, 3. Patent Owner, Hangzhou DAC Biotech Co., Ltd., filed a Preliminary Response (Paper 9, “Prelim. Resp.”). We initially determined that the information presented in the Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17. Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel (“DRP”). Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Delegated Review Panel vacated our decision and remanded the case to this panel with a revised claim construction for claim 1. Paper 23 (“DRP Dec.”). On August 30, 2024, we instituted an inter partes review after remand from the Director. Paper 25 (“Inst. Dec.”). Patent Owner subsequently filed a Patent Owner Response (Paper 31, “Resp.”), Petitioner filed a Reply (Paper 36, “Reply”), Patent Owner filed a Sur-reply (Paper 44, “Sur-reply”), and Petitioner filed a Sur-sur-reply (Paper 48, “Sur-sur-reply”).” slip op. at 2
- PTAB / AIA Trials › Motions to amend / substitute claimsOther
“I. Patent Owner’s Motion to Exclude Evidence Patent Owner moves to exclude Exhibits 1089 and 1090. Paper 50. As we did not rely on either of Exhibits 1089 or 1090 in deciding this matter, Patent Owner’s motion is dismissed as moot.” slip op. at 96
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableMixed
“For these reasons, Patent Owner’s arguments and cited evidence also” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“function as R2, and the ethyl group may function as R4, which can be a linear alkyl having 1–6 carbon atoms. We note that claim 3 permits R5 and R6 to be absent. For these reasons, the arguments presented in the Petition demonstrate that claim 3 would have been obvious over Singh’s Compound 3 when modified in view of Harris.” slip op. at 73
Patent outcomesUS 10,131,682 mixed§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,131,682 - Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentablePTAB · Aug 26, 2025 · IPR2024-00671 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1, 2, 15, 17, 18, 51, 54, and 57 are unpatentable as obvious over the asserted combinations of Richardson, Zhao, Yu, Paparrizos, and Dao.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 41–44; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” PO Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’243 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’243 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“We agree with Petitioner that the skilled artisan would have had reason to combine the teachings of Richardson and Zhao to achieve the subject matter of claim 1. For example, Petitioner contends that a person of ordinary skill in the art would have modified Richardson’s system to include the USB input circuit of Zhao “to avoid the need to supply a proprietary charger or other type of AC ‘power brick’ that would be less ubiquitous or less standardized,” increase flexibility and convenience, and cater to consumer demand for USB technology. Pet. 36 (citing Ex. 1003 ¶¶ 88–89). Petitioner further alleges that the addition of a USB input circuit would provide for an alternative where traditional charging methods are lost, damaged, or otherwise unavailable. Id. at 35 (citing Ex. 1003 ¶ 88). Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a person of ordinary skill in the art would have modified the teachings of the applied references. See KSR, 550 U.S. at 418.” slip op. at 21
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Ex. 1005 ¶ 28 (emphasis added). Dr. MacCarley testifies that a person of ordinary skill in the art would have known what external battery charger could have been used and where to place it in Richardson’s system. Ex. 1044 ¶ 13. In particular, Dr. MacCarley explains that there are numerous points in the circuitry disclosed by Richardson where a charging pathway from an external battery charger (e.g. the “battery charger” that Richardson explains is “not shown”, EX1005, ¶ [0028]) could be connected to charge Richardson’s batteries. EX2010, 52:3–54:5. Any of these connection points would be a trivial modification of Richardson’s embodiment. A PHOSITA would have understood how to implement this type of well-known configuration of an external battery charger and associated charging circuitry, which would have been as simple as wiring connections to the terminal anode and cathode of the batteries. The simplicity of this connection is why it is not surprising that Richardson describes such a pathway and leaves it “not shown” in the figures. Id. We credit the testimony of Dr. MacCarley in this regard. Moreover, Dr. Fayed confirms that it was known to recharge a jump starter with a barrel charger. Ex. 2014 ¶ 23.” slip op. at 28
Patent outcomesUS 11,584,243 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,584,243 - Adc Solutions Auto LLC v. The Noco CompanyAll claims unpatentablePTAB · Aug 26, 2025 · IPR2024-00577 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1, 32, 38, 39, 47, 52, and 54 are unpatentable as obvious over Richardson and Zhao and over Yu and Paparrizos.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa. Pet. 22 (citing Ex. 1003 ¶¶ 39–42; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” PO Resp. 19. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’023 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’023 patent and the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits there are no formal claim constructions necessary in this proceeding.” Pet. 23. Patent Owner “does not propose any terms need to be construed.” PO Resp. 18. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We agree with Petitioner that the skilled artisan would have had reason to combine the teachings of Richardson and Zhao to achieve the subject matter of claim 1. For example, Petitioner contends that a person of ordinary skill in the art would have modified Richardson’s system to include the USB input circuit of Zhao to avoid the need to supply a proprietary charger or other type of AC ‘power brick’ that would be less ubiquitous or less standardized,” increase flexibility and convenience, and cater to consumer demand for USB technology. Pet 45–46 (citing Ex. 1003 ¶¶ 88– 89). Petitioner further alleges that the addition of a USB input circuit would provide for an alternative where traditional charging methods are lost, damaged. or otherwise unavailable. Id. at 45 (citing Ex. 1003 ¶ 88). Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a person of ordinary skill in the art would have modified the teachings of the applied references. See KSR, 550 U.S. at 418. We acknowledge, but are not convinced by, Patent Owner’s arguments that the nature of Richardson requires the ability to charge a high capacity battery and rapid recharging and therefore would not have led a person of ordinary skill in the art to include Zhao’s USB charging circuit in Richardson. See PO Resp. 25–31. In particular, we are not persuaded that Richardson is limited to high capacity, rapid recharging of batteries as Patent Owner suggests. Instead, Richardson broadly describes “an apparatus and method for temporarily delivering supplemental power to the electrical system of a vehicle” (Ex. 1005 ¶ 6) where “[t]he jump starter 10 may be configured for 12, 18, 24, 30, 36, 42 or 48 volts” (id. ¶ 34). According to Richardson, this may be achieved by using “two or more batteries of the same or different voltage levels . . . to achieve the voltage requirements of the vehicle to be started.” Id. By way of example, Richardson states that “if the batteries 23 are both 12-volt batteries, the system may be configured for 12- or 24-volt operation” and “[i]f the batteries 23 are 12-volt batteries and a battery 25 is a 6-volt battery, 18- or 30-volt configurations may be provided.” Id. Neither Richardson’s claims nor its specification require any particular charging capacity or charging time. See generally Ex. 1005. While a single, near-final paragraph of Richardson introduces the concept of rapid charging of the jump starter batteries to charge a fleet of vehicles, Richardson characterization is permissive or optional. For example, Richardson states The charging system of the vehicle may be used to charge the capacitors 21 and jump starter batteries 22. . . . This allows the capacitors 21 and jump starter batteries 22 to be fully recharged in about 1 to 5 minutes and can therefore start many vehicles in a row without becoming discharged. Id. ¶ 55 (emphasis added). We do not view this singular occurrence as supplanting the breadth of Richardson’s complete disclosure. Furthermore, the crux of Patent Owner’s argument is that because of Richardson’s goal of charging high capacity batteries a USB charger would require significant charging time. PO Resp. 29; Sur-reply 2–14 But, nowhere does Patent Owner allege that a USB charger would not work given sufficient time.11 See generally PO Resp. and Sur-reply. And, when faced with no alternative, the person of ordinary skill in the art must balance the trade-offs and consider charging slowly, or not at all. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (explaining that “a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner 11 Petitioner in its Reply presents some evidence of charging times using a USB input charger. Pet. Reply 4–7; Ex. 1044 ¶¶ 6–12, Appendix A. Patent Owner disputes the accuracy of Petitioner’s calculations. Sur-reply 2–11. But, whether Petitioner’s calculations are accurate or not, Petitioner’s proposed alternative modification does not remove the faster charging path and instead adds the convenience and flexibility of a secondary charging method where the primary and faster charging path is unavailable. Ex. 1044 ¶ 12.” slip op. at 21
Patent outcomesUS 11,447,023 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,447,023 - Air Products And Chemicals, Inc. v. Evonik Operations GmbH And Evonik CorporationNo claims unpatentablePTAB · Aug 18, 2025 · IPR2024-00611 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 1–23 were not shown unpatentable: the Ungerank Patent was not established as prior art, and Scholz did not establish the claimed recycle range or motivation to modify its systems.
RulingsFinal written decision- BurdenNot shown unpatentable
“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (quoting 35 U.S.C. § 316(e)). Here, Petitioner asserts that (1) the combined teachings of the Ungerank Patent and Scholz disclose or suggest all of the limitations of claims 1–5, 7, 9, and 11–23 of the ’380 patent, and (2) the Ungerank Patent qualifies as prior art because the portions cited in the Corrected Petition and the Baker Declaration were published in the Ungerank Application.7 slip op. at 16
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“Petitioner ultimately has the burden of persuasion, based on all the evidence, on both these assertions. See Dynamic Drinkware, 800 F.3d at 1378. After reviewing the parties’ arguments and the evidence of record, we are not persuaded that Petitioner establishes, by a preponderance of the evidence, that the portions of the Ungerank Patent relied on in the Corrected Petition and the Baker Declaration qualify as prior art. There is nothing in the Initial Petition or the exhibits filed in support thereof that indicates Petitioner’s intention to rely on the Ungerank Application as prior art in this proceeding. The Initial Petition defines “Ungerank” as the Ungerank Patent, and all citations to “Ungerank” in support of Petitioner’s allegations are to the Ungerank Patent. Initial Pet. 3, 12–14, 17–42. The Initial Petition does not refer to the Ungerank Application, and the Ungerank Application was not submitted as an exhibit with the Initial Petition. Id. at iii–v (Exhibit List). And Petitioner’s expert declarant, Dr. Baker, did not consider the Ungerank Application when formulating his opinions in support of the Initial Petition. Ex. 1003 ¶ 51 (identifying materials considered). Although the Corrected Petition redefines “Ungerank” as the Ungerank Application, the Corrected Petition retains its citations to the Ungerank Patent.8 Corrected Pet. 3, 12–15, 18–43. In that regard, Petitioner generally asserts that the Ungerank Application’s “specification and figures 8 At the hearing, Petitioner’s counsel stated that they left the citations to the Ungerank Patent in the Corrected Petition because they “didn’t want to make tons and tons of changes,” and the Ungerank Patent citations “are much more specific.” Tr. 12:10–13; see also Pet. Reply 10 (“Moreover, by citing AP-1006’s column and line numbers instead of AP-1038’s paragraph numbers, Petitioner provided more specific citations in support of its arguments.”). are identical to the” Ungerank Patent, but does not direct us to where the specific portions of the Ungerank Patent that it asserts to be prior art can be found in the Ungerank Application. See id. at 3. We are also not directed to any evidence in the record that indicates that Dr. Baker compared the portions of the Ungerank Patent on which he relies to the disclosures in the Ungerank Application, or even considered the Ungerank Application at all. See Ex. 1003 ¶ 51; Ex. 1041 ¶ 4; Ex. 2009, 44:10–45:18; Ex. 2018, 12:18– 23. We decline to perform an analysis that is missing from the Corrected Petition and Dr. Baker’s testimony. See United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”). Accordingly, Petitioner does not establish, by a preponderance of the evidence, that the cited portions of the Ungerank Patent were published in the Ungerank Application.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“Our rules provide that a petitioner must include “[a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence including material facts, and the governing laws, rules, and precedent.” 37 C.F.R. § 42.22(a). Our rules also state that “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” Id. § 42.23(b). “‘Respond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” CTPG 74. Our Trial Practice Guide explains that “Petitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g., to make out a prima facie case of unpatentability.” Id. at 73; see also id. at 74 (“Examples of indications that a new issue has been raised in a reply include new evidence necessary to make out a prima facie case for the patentability or unpatentability of an original or proposed substitute claim, such as newly raised rationale to combine the prior art references that was not expressed in the petition.”). In the Reply, Petitioner argues that “POSITAs ‘might have already figured out’” that, in Comparative Example 1, the surface area of the membrane in stage 2 was larger than that of the membrane is stage 1, and Scholz’s Figure 7 systems with larger stage 2 membrane areas than stage 1 were “consistent with POSITAs’ likely intuition about [Comparative Example 1’s] stage 2 and stage 1 areas.” Pet. Reply 19. As Petitioner concedes, this “an additional reason POSITAs would have found it appropriate to look to Scholz’s Figure 7 to better understand [Comparative Example 1’s] relative surface areas.” Id. (citing Ex. 1041 ¶¶ 31–32) (emphasis added). The case presented in the Corrected Petition is that a POSITA would have looked to Scholz because Comparative Example 1 does not provide details on the area of the membranes or their ratios. Corrected Pet. 18–19. Petitioner’s admitted “additional reason” to combine the Ungerank Patent and Scholz in the Reply is a newly raised rationale to combine the prior art references necessary to make out a prima facie case of unpatentability. See CTPG 74. Accordingly, Petitioner’s untimely new argument is waived, and we do not consider it here.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Having considered the complete trial record, we determine that Petitioner fails to sufficiently demonstrate that the combination of the Ungerank Patent and Scholz teaches limitation [1.f.ii] because Petitioner fails to establish by a preponderance of the evidence that a POSITA would have been motivated to look to the relative sizes of the membranes in the stages of Scholz’s Figure 7 to determine the relative sizes of the membranes in the stages of Comparative Example 1.” slip op. at 21
Patent outcomesUS 10,471,380 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 10,471,380
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.