• Abbott Laboratories v. Miracor Medical SANo claims unpatentable
  PTAB · Jun 11, 2026 · IPR2025-00116 · APJ John D Hamann · IPR · Final written decision

  The Board held claims 1–5, 7, 10, 16–24, 26, and 28 not unpatentable under any of the four § 103 grounds because the petition failed to prove required limitations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We find that the ’077 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’077 patent is consistent with the definition of one of ordinary skill in the art proposed by Petitioner, which we adopt. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We further find that our determinations in this Decision would be the same if we were to instead adopt the level of skill proposed by Patent Owner.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner that “axially adjacent” should be given its plain and ordinary meaning of “adjacent to one another as measured along a central axis.” PO Resp. 5–6; see also Ex. 2015 ¶¶ 73–79 (Mr. Leschinsky addressing the claim term “axially adjacent” and explaining that a person of ordinary skill would have understood it to mean that the “first magnetic device and the rotor are ‘adjacent’ to one another, i.e., disposed next to one another, as measured along the central axis about which the rotor spins”). Patent Owner’s construction also is supported by Petitioner’s expert, Mr. Crosby, who agrees that “adjacent to one another as measured along a central axis,” could be “one meaning,” along with “many other meanings.” Ex. 2014,8 19:13–20:11. In sum, consistent with our Institution Decision, we conclude that the plain and ordinary meaning of “axially adjacent” is “at a position adjacent to one another as measured along a central axis.” See Dec. on Inst. 12.” slip op. at 14

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

    “Second, for the reasons below, we determine that we do not need to construe any other claim terms to resolve the disputes between the parties. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe” slip op. at 14

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. As we discuss above, we find “axially adjacent” to mean “adjacent to one another as measured along a central arguments that rest on Petitioner’s assertion that in the Parallel Litigation, Patent Owner “asserts that a magnetic element sealed within a rotor is . . . ‘axially adjacent.’” Id. at 20–21, n.6 (citing Ex. 1019, 5–7). In particular, we find unavailing Petitioner’s argument that Wampler teaches that magnetic pieces 88 (“a first magnetic device”) “are inserted [‘axially adjacent’] in…the impeller.” Id. at 20–21 (citing Ex. 1008 ¶ 80, Fig. 13; Ex. 1003 ¶ 174). We also find unavailing Petitioner’s reliance on Wampler’s Figure 13 and Mr. Crosby’s cited testimony that “the ‘impeller’ and ‘magnetic pieces’ are axially adjacent—situated next to each other on the same axis.” Id. at 21–22 (annotating Ex. 1008, Fig. 13; citing Ex. 1003 ¶¶ 174–176). Petitioner does not sufficiently explain this argument, but appears to conflate being adjacent along a central axis with about an axis. Id. We also find unavailing Petitioner’s argument that under Patent Owner’s construction, Wampler also teaches this limitation, because Patent Owner “concedes that ‘axially adjacent’ components ‘have positioning that is next to one another, perhaps touching or sharing a common side, when measured along the axis.’” Pet. Reply 14–15 (citing PO Resp. 14). Petitioner mischaracterizes Patent Owner’s arguments and ignores Patent Owner’s showing that “axially adjacent” components are “distinct from components that are aligned with one another such that they overlap or occupy the same portion of an axis upon which they are positioned.” PO Resp. 14 (citing Ex. 2015 ¶ 78). For the preceding reasons, Petitioner fails to show by a” slip op. at 24

  Patent outcomesUS 11,754,077 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,754,077
• Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1No claims unpatentable
  PTAB · Apr 28, 2026 · IPR2024-01494 · APJ Justin T Arbes · IPR · Final written decision

  The Board found claims 5, 6, and 9–20 not shown unpatentable over either Bowen and Soukup or Nagahama and Soukup under § 103.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that at the time of the ’909 patent (2004), a person of ordinary skill in the art would have had “a Ph.D. in electrical engineering, physics, materials science, or a related field, and at least one year of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” or “a Master’s degree in electrical engineering, physics, materials science, or a related field, and four years of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent,” where “[l]ess work experience may be compensated by a higher level of relevant education, and vice versa.” Pet. 18–19. In the Decision on Institution, we agreed with and applied Petitioner’s proposed definition. Dec. on Inst. 9. Patent Owner does not propose a different level of ordinary skill in the art in its Response. Both experts utilized Petitioner’s proposed definition. See Ex. 1024 ¶ 25; Ex. 2053 ¶¶ 29–30. Based on the full record developed during trial, including our review of the ’909 patent and the types of problems and solutions described in the ’909 patent and cited prior art, we maintain the previously adopted definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 8

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

    “B. Claim Interpretation We interpret the claims of the challenged patent using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such [claims] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner argues that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary.” Pet. 15. We did not interpret any terms in the Decision on Institution. Dec. on Inst. 9–10. Patent Owner does not propose interpretations of any claim terms in its Response. We conclude, based on the full trial record, that no term requires express interpretation to determine whether Petitioner has met its burden to prove unpatentability of the challenged claims. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (emphasis added) (citation omitted)).” slip op. at 8

  • Strike new argumentNew argument disregardedGranted in part

    “Pursuant to 37 C.F.R. § 42.23(b), “[a] reply may only respond to arguments raised in the corresponding . . . patent owner response.” “‘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.” Patent Trial and Appeal Board Trial Practice Guide § II.I, available at https://www.uspto.gov/patents/ptab/trial-practice-guide (last updated Dec. 12, 2025). “While replies . . . can help crystalize issues for decision, a reply . . . that raises a new issue or belatedly presents evidence may not be considered.” Id. An indication that a new issue is improperly raised in a reply is where a petitioner submits “new evidence necessary to make out a prima facie case” of unpatentability, such as a “newly raised rationale to combine the prior art references that was not expressed in the petition.” Id. That is the case here. Petitioner’s rationale in the Petition for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV based on Soukup was that such an artisan would have expected lowering the barrier height to increase TMR. See Pet. 34–36. Faced with Dr. Bokor’s testimony on cross-examination, Petitioner presents a new theory in its Reply that a person of ordinary skill in the art would not have known what impact lowering the barrier height would have (increase TMR, decrease it, or have no impact at all), but would have expected it to change in some “uncertain” way, which is a “legally sufficient motivation” in Petitioner’s view. See Reply 6–10, 13–16, 23–25. In other words, “[r]ather than explaining how its original” position that lowering barrier height would increase TMR “was correct,” Petitioner articulated “an entirely new theory . . . absent from the [P]etition” after Patent Owner cross-examined Dr. Bokor and “pointed out the flaws of [Petitioner’s] position” in its Response. See Wasica Finance GmbH v. Continental Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). “Shifting arguments in this fashion is foreclosed by statute, [Federal Circuit] precedent, and Board guidelines.” Id.” slip op. at 20

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “Ultimately, the cross-examination testimony above is inconsistent with Dr. Bokor’s opinions in his declaration that, for example, “[i]t was understood to one of skill that lowering the barrier height to increase tunneling would have increased the TMR,” and “[o]ne of skill would have been motivated to adjust oxygen vacancy defects to improve TMR by lowering the barrier height.” See Ex. 1024 ¶¶ 176, 277 (emphasis added); see also id. ¶ 172 (“[O]ne of skill in the art would have been motivated to use [Soukup’s 0.33 eV] or similar height in an MgO MTJ to improve tunneling and hence TMR in Bowen.”). Accordingly, we do not find Dr. Bokor’s declaration testimony regarding a motivation to lower Bowen’s barrier height credible. It is Petitioner’s burden to provide a reasoned, evidence-supported explanation for why a person of ordinary skill in the art would have been motivated to lower Bowen’s 0.9 eV barrier height to 0.33 eV as disclosed in Soukup. See NuVasive, 842 F.3d at 1383; Magnum Oil, 829 F.3d at 1380; TriVascular, 812 F.3d at 1066. Petitioner’s reasoning in the Petition that lowering the barrier height (by introducing oxygen defects) would increase TMR is unsupported by evidence.” slip op. at 31

  Patent outcomesUS 11,968,909 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,968,909
• Penumbra, Inc. v. Rapidpulse, Inc.No claims unpatentable
  PTAB · Feb 17, 2026 · IPR2024-01261 · APJ Jamie T Wisz · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted combinations did not teach the claimed predetermined cycle for controlling distal fluid flow.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(1) a person with a B.S. in engineering or an equivalent field, with two-four years of academic or industry experience in aspiration embolectomy and thrombectomy or comparable industry experience who would, where appropriate, work or consult with others, including a physician, to develop embolectomy or thrombectomy devices; or (2) an interventional neurosurgeon with at least three years of experience developing and/or using medical devices in embolectomy or thrombectomy procedures, and who would, where appropriate, work or consult with others, including an engineer, to develop such a medical device. Pet. 11 (citing Ex. 1005 ¶ 48). Petitioner also contends that, “[a] person with less education but more relevant practical experience, or more relevant education but less practical experience, may also meet this standard.” Id. Patent Owner states that for purposes of its PO Response, it “accepts ¶ 44). We adopt Petitioner’s characterization because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’402 patent and the cited prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “specification explicitly includes sensors similar to those in the prior art in support of their argument that the claimed “predetermined cycle” must not exclude the use of such sensors. Pet. Reply 15 (citing Ex. 1001, 32:55–33:7, 40:66–41:5, 44:9–29). We reviewed the portions of the specification cited by Petitioner. We agree with Patent Owner that one excerpt discussing sensor use appears to be directed to triggering the predetermined cycle rather than causing timing changes during the cycle itself (Ex. 1001, 32:55–66) (describing use of a pressure sensor to “determine when the vacuum channel 3 is clogged by a thrombus and automatically perform the unclogging procedures described herein”), while another excerpt discusses a sensor that Petitioner that the ’402 patent discusses the use of sensors to “tune” the system and that such “tuning” can be done statically (setting the cycle timing in advance) or dynamically (adjusting the timing during the cycle itself). See Ex. 1001, 48:19–49:50. Overall, we find that these disclosures involving sensors demonstrate that sensors may be used in various ways in different embodiments. However, none of these disclosures explicitly discuss the use of sensors in conjunction with a “pre-determined cycle.” Therefore, we find that the ’402 patent specification’s discussion of “sensors” are not particularly informative as to the appropriate construction of a “predetermined cycle” and do not outweigh the other explicit disclosures of “predetermined cycle” in the patent. We next turn to the other intrinsic evidence discussed by the parties — the prosecution history. As discussed by Patent Owner, in the Notice of Allowance, the Examiner found that Garrison did not teach or suggest a “predetermined cycle” because Garrison’s controller “changed the cycle of opening and closing the valves based on feedback from sensors.” Ex. 1004, 86. We acknowledge that the patent applicant filed subsequent comments during prosecution in which they stated that they “do[] not concede that the Examiner’s characterizations of the terms of the claims and the prior art are correct.” Id. at 29. However, we agree with Patent Owner that the importance of the Examiner’s statement in the Notice of Allowance does not rely on it being an express disclaimer (a standard which it does not meet). PO Sur-reply 8. We also considered Petitioner’s contention that the Examiner’s interpretation of Garrison may have been in error (PO Resp. 16); however, even if this were true, the Examiner’s statement still provides helpful insight into how the Examiner was interpreting the term sensors to change the opening and closing of valves during a cycle was not a “predetermined cycle.” Id. at 86. In sum, we find that Patent Owner’s proposed construction is consistent with the usage of the term “predetermined cycle” in the ’402 patent specification and prosecution history. Thus, after considering all of the cited evidence, we construe “predetermined cycle” to mean that “the timing of the sequence of valve operations in the cycle is determined beforehand, i.e., fixed, rather than varying based on feedback after operation begins.”” slip op. at 14

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

    “2. Other Terms The parties also provided proposed constructions for the limitations of “[limited/limiting] to a positive amount of exit flow” and “control[ling] fluid flow in and out from the distal end of the catheter.” See Pet. 15–16; Pet. Reply 1–8; PO Resp. 22–24; PO Sur-Reply 2–6. However, having evaluated the arguments and evidence before us, we determine that construction of these terms is not necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that neither Petitioner nor Mr. Brown propose any combination of Yang and Mullins that does not include Mullins’s pressure sensor in order “to control fluid flow in and out from the distal end of the catheter.” Indeed, in addressing the “predetermined cycle” limitation, Mr. Brown contends that Mullins discloses a “cycling controller that ‘varies aspiration pressure according to sensed pressure within the catheter lumen.’” Ex.1005 ¶¶ 131–32 (citing, e.g., Ex.1008, 27:40–28:20 (“[a] novel aspect of this pump system is the incorporation of feedback into the pump algorithm in order to produce more effective pressure cycling”)). This use of a sensor to change pressure during a cycle, is not a “predetermined cycle” under our construction. combinations is its discussion of distal end flow control, not for its sensors.” Pet. Reply 17 (citing Ex. 1035 ¶ 83). However, Petitioner’s obviousness grounds rely on the combination of Yang and Mullins, especially with regard to Mullins’s disclosure of “a controller” in order “to control fluid flow in and out.” As discussed above, Mullins relies on the sensor-feedback approach in order to control flow and we find that Petitioner has not presented persuasive evidence of how the combined disclosures of Yang and Mullins would control flow without using Mullins’s sensor feedback approach. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983) (error to “consider[] … references in less than their entireties, i.e., in disregarding disclosures in [them] … that diverge from and teach away from the invention”). Therefore, we determine that Petitioner has not sufficiently shown that the combination of Yang and Mullins discloses or renders obvious “a controller configured to open and close the vacuum valve and the vent valve in a predetermined cycle to change a level of vacuum at the distal end of the catheter and to control fluid flow in and out from the distal end of the catheter.” Accordingly, having considered the parties’ respective evidence and arguments, we find that Petitioner has not shown by a preponderance of the evidence that claim 1 of the ’402 patent would have been unpatentable as obvious over the combination of Yang and Mullins.” slip op. at 27

  Patent outcomesUS 11,406,402 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,406,402
• Early Warning Services, LLC v. Intellectual Ventures II LLCNo claims unpatentable
  PTAB · Feb 11, 2026 · IPR2024-01221 · APJ Iftikhar Ahmed · IPR · Final written decision

  Petitioner failed to prove claims 1, 2, 4, 5, 7, 8, 12, 13, 17, 19–21, 23, 24, 26, 27, 29, 30, 34, 39–41, and 43 unpatentable because the cited grounds did not establish the required …

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “image capture device” refers to an imaging-based barcode reader and not a laser-based barcode scanner because we are persuaded that claim language and Specification support that interpretation and also because Patent Owner persuasively shows that a person of ordinary skill in the art would have understood the term as such. Claim 1 recites an “image capture device configured to capture an image.” Ex. 1001, 16:24–25. The plain meaning of the claim term requires that the image be captured, not just scanned. The claim further requires “generating an output based on the information embedded in the image,” requiring that information is retrieved from the captured image. Id. at 16:32–33. A device that does not capture an image is not an “image capture device” under the plain language of the claim. A laser-based barcode scanner employs light reflected from a laser beam to “generate an electrical signal that corresponds to the bars and spaces in the barcode being scanned.” See Ex. 2029 ¶¶ 42–43 (explaining in detail how laser-based barcode self-emitting a laser light across a code to be scanned, with a sensor tuned to capture the reflected light from the laser.”). It simply does not capture an image. slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the complete record, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. The field of the ’167 patent “relates generally to secure transactions, and more specifically, to methods and devices for providing secure identification, verification, and authorization using a portable secure device.” Ex. 1001, 1:8–11. The ’167 patent seeks “to provide methods and devices that are capable of providing secure transactions in a more efficient manner.” Id. at 3:11–13. Accordingly, we adopt Petitioner’s definition. We note, however, that our patentability analysis would be the same under Patent Owner’s definition.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that Wang fails to disclose limitation 1[a]. Wang discloses a portable electronic authorization device (PEAD) that can be used as a self-checkout terminal. Ex. 1004 ¶ 115. In this context, Wang discloses By entering the UPC code or barcode using keypad on the PEAD or scanning in the UPC code or barcode using the input device built into the PEAD such as a barcode scanner or OCR reader, the PEAD can generate the receipt with the list of item prices through the wireless network and Internet by querying the item price using the barcode as the index for price lookup table which is Stored in a Server System. Id. (emphasis added). As discussed above (Section III.C.1), we are persuaded by Patent Owner’s arguments that the claimed “image capture device” refers to an imaging-based device and not a laser-based barcode scanner. Petitioner does not contend that Wang’s disclosure of the barcode scanner necessarily refers to an imaging-based device, but argues that Wang’s disclosure is sufficient because “both imaging-based barcode scanners and laser-based barcode scanners constitute image capture devices.” Reply 11. In light of our claim construction above, we disagree.” slip op. at 27

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Petitioner contends that claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 are unpatentable as obvious over the combination of Wang and Drummond. Pet. 30–43. 1. Drummond Drummond is a patent titled “Automated Banking Machine System and Method,” and “relates to an automated banking machine apparatus and system that are capable of use in a wide area network, and which provides a user with a remote electronic receipt or other record related to a transaction performed at the machine.” Ex. 1008, code (54), ¶ 2. Drummond discloses that its automated banking machine, may “initiate the sending of a non-paper transaction receipt to the customer,” “[t]he receipt may be sent using a wide area network, such as the Internet,” and “[t]he receipt may be an electronic receipt, for example a receipt in the form of an e-mail message.” Id. ¶ 247. 2. Claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 For this obviousness ground, Petitioner relies on the same arguments and evidence as its Ground 1a (anticipation by Wang), discussed above, for the majority of claim limitations. See Pet. 33–43. Importantly, Petitioner relies solely on Wang as teaching independent claim limitations [1a], [23a], and [43b] relating to an image capture device and embedded information. Pet. 36, 41, 43. Accordingly, for the reasons discussed above with respect to Ground 1a, Petitioner has not established by a preponderance of the evidence, that the subject matter of claims 1, 4, 5, 7, 12, 17, 23, 26, 27, 29, 34, and 43 would have been obvious to one of ordinary skill in the art over the combination of Wang and Drummond.” slip op. at 31

  Patent outcomesUS 7,314,167 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,314,167
• Axion Biosystems, Inc. v. Agilent Technologies, Inc.No claims unpatentable
  PTAB · Feb 2, 2026 · IPR2024-01467 · APJ David Cotta · IPR · Final written decision

  Claims 1–8 and 11–15 were not shown unpatentable over Xu-752 and Jones because the proposed combination did not establish obvious millisecond time resolution.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner contends a person of ordinary skill in the art (“POSA”) as of May 2009 “would have had a B.S. in electrical/mechanical/biomedical engineering or biological science, or a related field, and approximately 2 years of relevant experience or equivalent study in systems and methods for bioanalysis of cells.” Pet. 14 (citing Ex. 1003 ¶¶ 23–25). Patent Owner adopts this definition for purposes of this proceeding. PO Resp. 9 (citing Ex. 2009 ¶ 19). We find Petitioner’s description of the level of ordinary skill in the art to be consistent with the level of skill reflected in the ’508 patent and in the prior art of record. Accordingly, we apply Petitioner’s definition in this decision.” slip op. at 7

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner

    “As used herein, “impedance measurement at millisecond time resolution” refers to the ability to perform a series of at least two consecutive impedance measurements within milliseconds of one another for each and every well of the system where each well is associated with an electrode array for impedance measurement. In each instance the time between two consecutive impedance measurements are less than 300 milliseconds from one another. Id. at 10:8–15. There does not appear to be any dispute as to the definitional nature of the first sentence in the passage above. That is, the parties agree that millisecond time resolution should be construed to mean: “the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.” PO Resp. 15 (proposing construction); Pet. Reply. 23 (“Axion also agrees that the term ‘millisecond time resolution’ is ‘the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.’”). The parties also agree that we do not need to determine whether the time interval between two consecutive impedance measurements is less than 300 milliseconds, as set forth in the definition portion of the specification, or whether it can be met by some other time interval, as suggested by other portions of the specification. See e.g., Ex. 1001, 23:49–55 (explaining that “[i]n some embodiments 500 millisecond time resolution is sufficient”), 24:37–39 (similar); PO Resp. 15 (arguing that “the distinction between 300 milliseconds and 500 milliseconds is immaterial to the dispute in this IPR because Jones teaches a 1.5 second update period, thus at least three times longer than the 500 milliseconds formulation”); Pet. Reply 23–24 (section headed “[Petitioner] Agrees That, In This IPR, The 300 Versus 500 Milliseconds Distinction is Immaterial To Addressing the Unpatentability of the Challenged Claims”), see also, Pet. Reply 24–26 (asserting that the claims are indefinite because it is not clear whether they require a 300 or a 500 millisecond time interval, but arguing that “the claims’ unpatentability can be determined without resolving the 300 versus 500 milliseconds indefiniteness issue”). We agree with the parties that “millisecond time resolution” should be construed to mean: “the time between two consecutive impedance measurements for each and every well being evaluated in the claimed apparatus or system.” PO Resp. 15; Pet. Reply. 23. We further agree that resolution of this case does not require that we determine whether the period between two consecutive impedance measurements is less than 300 or less than 500 milliseconds because Petitioner has not carried its burden under either time interval.” slip op. at 7

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1003 ¶ 179. But Dr. Kim does not cite to any additional supporting evidence or provide any technical reasoning to support his statements. The notion that one can reduce the time between measurements by, e.g., reducing the number of frequencies measured, has intuitive appeal and appears mathematically correct. However, the absence of technical reasoning and supporting evidence diminishes the persuasiveness of Dr. Kim’s testimony that the POSA would made such modifications to reduce the time between measurements. Dr. Kim does provide some technical reasoning in connection with his discussion of eliminating all reference channels as a way to get the time resolution down to the levels required by, e.g., claim 14, which recites a millisecond time resolution of “less than 5 milliseconds.” See e.g., Ex. 1003 ¶ 172 (“A POSA seeking to study biological cell phenomena occurring on the order of a few milliseconds would have recognized that after measuring the reference network channels at the start, the reference network channels would not need measured again for some time, e.g., because temperature and other drift factors do not change appreciably on a millisecond time scale.”). However, even if we were to credit this testimony, Dr. Kim still lacks support and reasoning for the selection of the other parameters in his noreference-channel calculations. See, e.g., id. ¶ 173 (positing, but not providing technical reasoning for using, a no-reference-channel impedance system with 16 wells, a single 10kHz measurement frequency, and 16 daughter boards that measure simultaneously rather than sequentially).” slip op. at 29

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable

    “Given that Jones’s only exemplified embodiment targets a 1.5 second update period, that Jones does not suggest reducing the update period, and that much of Jones’s focus is on benefits other than speed of measurement, Jones’s impedance analyzer seems an unlikely choice for a POSA seeking to take measurements having millisecond time resolution. Put another way, we find no persuasive non-hindsight reason that supports Petitioner’s assertion that the POSA would have sought to apply Jones’s impedance analyzer to Xu-752’s system in order to take measurements in millisecond time resolution.” slip op. at 22

  Patent outcomesUS 11,906,508 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,906,508
• Iriusrisk, Inc. v. Threatmodeler Software Inc.No claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Keenan did not disclose the claimed stored threats, and the obviousness combinations did not establish the mapping limitations or a reason to combine.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “construction of “threat,” which we find in the context of the ’366 patent does not encompass “risk.” See supra § III.D.3.a.1 (discussing “‘Threats’ versus ‘Risks’”). We agree with Patent Owner that Petitioner’s premise that “risk” includes “threats” or knowing risk allows for determination of threats is false, and belied by the parties’ experts who do not disagree on this distinction, namely that “risk” is not a “threat,” but rather represents the likelihood of a threat occurring compounded by the impact of such a threat on a given system (discussed above). See Ex. 2002, 24:3–25:5, 31:5–33:2 (Petitioner’s expert, Mr. Hurlbut, agreeing that “Risk = Likelihood x Impact”); Ex. 2009 ¶ 80; PO Sur-reply 9–10. Thus, we find unavailing Petitioner’s attempt to walk backwards from Keenan’s explicit disclosure of “risk” modeling into an anticipatory (explicit) disclosure of stored “threats” that may give rise to such risk. Viewing Keenan in the light agreed upon by the parties’ experts, where “risk” is a product of the “likelihood” of a threat occurring and the “impact” of such a threat on a given system, persuades us that although Keenan discloses “risk,” “types of risk,” and “risk ranking” (see, e.g., Ex. 1004, 16:21–63), Keenan uses such “risk” as a given value without explicitly disclosing any underlying stored threats or use thereof. See Ex. 2009 ¶ 112 (“Keenan does not disclose a system for measuring risk. The risk for objects is determined before the objects are imported into the [Integrated Object Environment]. Keenan does not make that measurement.”). Indeed, in order to “store” “threats” in “one or more databases” as recited in claim 1, such “threats” must be identified (i.e., known) at some level of specificity to the system. Petitioner does not direct us to any persuasive evidence that Keenan explicitly discloses using “threats” or “storing” an identified “threat,” let alone storing such “threat” in a database along with its association with a particular threat model component, and even more so with a threat model component that itself is correlated with a third-party diagram component as recited in claim 1.” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “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 ’366 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Hurlbut (Ex. 1003 ¶ 33).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “43:21–61. Contrary to Petitioner’s arguments (Pet. Reply 3–5), this “subset” feature shows that the “threats” stored in databases in claim 1 represent “potential events” that may or may not occur depending on the composition of a given system undergoing threat modeling—a system may implicate all stored threats, some of them, or even just one of them, leaving the remaining stored threats for use in preparing threat models for other systems. See PO Sur-reply 2–3 (discussing Figure 2 and arguing that “not every threat is necessarily included in the threat model”). We find the claim language itself supports interpreting “threats” as “potential events that, if they occur, can cause adverse effects to a target system.”” slip op. at 19

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “Claim 1 recites, in part, “the one or more mapping files correlating the threat model components with [“third party diagram components”].” Ex. 1001, 43:30–35. Generally, from the standpoint of what claim 1 requires, the parties’ views of “mapping file” are in alignment. Claim 1 plainly recites that a “mapping file” (where a “file” in the context of computer systems is data itself) correlates data A with data B, and when construed in the context of the subject claim language, correlates threat model components (i.e., data A) with third party diagram components (i.e., data B). We find that this interpretation of “mapping files” is sufficient to resolve the controversy between the parties. See Nidec Motor, 868 F.3d at 1017.” slip op. at 39

  Patent outcomesUS 10,713,366 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,713,366
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 26, 2023 · IPR2022-00325 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–17 were not shown unpatentable: the Keely–Geva combinations lacked sufficient reasoning to combine, and did not teach claimed movement in the third dimension.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Testimony cannot take the place of disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. See CTPG at 36. More specifically, the Consolidated Trial Practice Guide sets forth the following: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. For example, because “[a] claim is anticipated only if each and every element as set forth in the 8 For exhibits 1004 and 2025, we use the pagination added by the submitting party. 9 Although not relied on for independent claim 1, Kameyama also was cited in that Information Disclosure Statement that was initialed by the Examiner. Id. single prior art reference,” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), a petitioner asserting anticipation cannot rely on its expert to supply disclosure of a claim element that is not expressly or inherently present in the reference. Similarly, in an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself. CTPG at 36. We, therefore, find that Dr. Bederson’s testimony (Ex. 1002 ¶ 92) does not remedy the deficiency in Geva’s disclosures. Petitioner has not shown that Geva teaches element 1[G].” slip op. at 49

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of nonobviousness based on the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

  • Strike new argumentNew argument disregardedDecided for patent owner

    “Importantly, to prevail in its challenge to Patent Owner’s claims, Petitioner must demonstrate that the claims are unpatentable, and that burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012)); see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). includes argument and evidence indicating clear reliance on Keely’s teachings of determining pen position, consistent with Patent Owner’s contentions. We further find that the Petition does not include Petitioner’s Reply arguments regarding Geva’s planar element. We conclude that the Petition does not set forth Petitioner’s proposed combination of Keely and Geva argued in the Reply and, therefore, the Reply includes improper, new argument. With respect to Patent Owner’s argument that Petitioner’s Reply and Reply declaration should be disregarded (Sur-reply 3; Paper 33, 1), we need not reach that decision because, as discussed below (see §§ III.D.3.b–c) even upon consideration of Petitioner’s new Reply arguments, Petitioner does not demonstrate that claim 1 is unpatentable. To the extent Patent Owner has not fully explained its opposition to the Petition in its Patent Owner Response, Petitioner must demonstrate that the claims are unpatentable, and that burden never shifts to the patentee. Dynamic Drinkware, 800 F.3d at 1378. We had cautioned Patent Owner that arguments not raised in its Patent Owner Response “may be deemed waived.” Paper 8, 9. We determine that any such waiver is not appropriate here because the Petition does not include Petitioner’s newly raised, improper Reply arguments.” slip op. at 23

  • BurdenFwd all claims patentableNot shown unpatentable

    “CTPG at 36. We, therefore, find that Dr. Bederson’s testimony (Ex. 1002 ¶ 92) does not remedy the deficiency in Geva’s disclosures. Petitioner has not shown that Geva teaches element 1[G]. For the reasons given, after consideration of the assertions and the evidence based on the complete record now before us, we determine that Petitioner has not shown that its combination of Keely and Geva teaches element 1[G] of claim 1.” slip op. at 50

  Patent outcomesUS 9,946,369 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,946,369
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Power2b Inc.No claims unpatentable
  PTAB · Jun 23, 2023 · IPR2022-00315 · APJ Barbara A Parvis · IPR · Final written decision

  Claims 1–18 were not shown unpatentable because the Petition did not establish that Keely and Geva teach the touch-sensitive display plane or provide sufficient reasoning to combine them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on the complete record now before us, we maintain our determination in the Institution Decision (Inst. Dec. 8) that Petitioner’s proposed definition is consistent with the level of skill reflected in the 3 Patent Owner does not present objective evidence of non-obviousness into the complete record now before us. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art, except without the “at least” phrase. Our analysis and determinations herein, however, do not turn on which level of skill we adopt.” slip op. at 8

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

    “federal courts, in other words, “the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b),” which is articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2020). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips, 415 F.3d at 1312–13.” slip op. at 9

  • Strike new argumentNew argument disregardedDecided for patent owner

    “We find that paragraph 75 of Dr. Bederson’s original Declaration that his testimony “show[s] how Keely’s touch-sensitive plane can be used as Geva’s planar element” (Ex. 1002 ¶ 75 (emphasis added)) is consistent with Patent Owner’s position that the proposed combination in the Petition does not include Geva’s planar element 14. We find that Dr. Bederson’s testimony that “[p]erhaps I could have been more precise by using the word ‘with’ in place of ‘as’ in this sentence, since that is what Geva itself teaches and what I relied on in forming my opinions” (Ex. 1044 ¶ 13) is not a clarification of his initial testimony, but, instead, is a clear revision of his testimony and his opinion. Dr. Bederson’s testimony regarding “using the word ‘with’ in place of ‘as’” (id.) is improper new testimony in his Reply Declaration. Furthermore, Dr. Bederson’s testimony that his new opinion is supported by “what Geva itself teaches” (id.) is not consistent with Geva’s teachings. Geva does not refer to Keely’s LCD or any LCD similar to that in Keely with a digitizer grid, but instead, Geva describes “[a]dvantageously, the position-determining input device does not require a specific, active board with in-built sensors for determining positions.” Ex. 1011, 3:7–9. which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Here, Dr. Bederson’s original Declaration (Ex. 1002) does not disclose facts or data showing a reliance on Geva’s planar element 14 or any LCD other than the LCD described in Keely, which incorporates by reference the hardware of Keely II.” slip op. at 28

  • BurdenFwd all claims patentableNot shown unpatentable

    “After consideration of the assertions and the evidence of record based on the complete record now before us, we determine that Petitioner has not shown that the combination of Keely and Geva teaches element 1[B]. Accordingly, we conclude that Petitioner has not demonstrated by a preponderance of the evidence that it would prevail in showing that claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over the combination of Keely and Geva.” slip op. at 40

  Patent outcomesUS 10,664,070 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,664,070
• Apple Inc. v. MPH Technologies OYNo claims unpatentable
  PTAB · May 11, 2023 · IPR2019-00819 · APJ John D Hamann · IPR · Remand

  On remand, claims 4–6 were not shown unpatentable because the asserted grounds did not address claim 3’s reply-message limitation, and the alternative ACK theory lacked persuasive support.

  RulingsRemand decision

  • Adverse judgmentAdverse judgmentOther

    “Patent Owner filed a statutory disclaimer under 37 C.F.R. § 1.321, which states that Patent Owner “hereby disclaims and dedicates to the public the entirety of claims 1–3 of the ’810 Patent.” Ex. 3003, 1; Paper 50. Accordingly, claims 1–3 are no longer part of this proceeding. And for the reasons that follow, we determine that Petitioner does not show by a preponderance of the evidence that claims 4–6 are unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted Petitioner’s proposed definition for one having ordinary skill in the art at the time of the invention of the ’810 patent as one who “would have had a B.S. degree in Computer Engineering, Electrical Engineering, or an equivalent field, as well as at least 3–5 years of academic or industry experience in the Internet security industry.” Pet. 12 (citing Ex. 1002 ¶¶ 20–21). We maintained this definition in our prior Final Written Decision. FWD 9. Patent Owner did not dispute our adoption of Petitioner’s definition, nor otherwise address the level of ordinary skill at the time of the invention of the ’810 patent. See generally PO Resp. Petitioner’s definition of the level of skill in the art is consistent with the ’810 patent and the asserted prior art, and we maintain Petitioner’s definition for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). We apply Petitioner’s definition in our analysis below.” slip op. at 12

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

    “Petitioner does not submit any terms for construction. Pet. 12 (arguing that “[a]ll claim terms of the ’810 patent should receive their ordinary and customary meaning”). Patent Owner submits the term “security gateway” for construction, and argues that its meaning is in dispute. PO Resp. 11–24. Our below analysis of Petitioner’s unpatentability arguments for claims 4–6, however, does not implicate this claim term. See supra Section V.C. Thus, we do not provide an express construction for “security gateway.” See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). In addition, we note that the Federal Circuit corrected our construction of “the request message and/or a reply message being encrypted,” as recited in claim 1 of the ’810 patent. Apple, 2022 WL 4103286, at *4–6; see supra Section I.G. This limitation, however, is not implicated in our analysis of the parties’ arguments concerning unpatentability of claims 4–6—the claims on remand that remain after Patent Owner’s statutory disclaimer.” slip op. at 13

  • BurdenNot shown unpatentable

    “The Petition guides the proceeding. See Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330, 1335–36 (Fed. Cir. 2020). The Federal Circuit explained that “Congress chose to structure a process in which it’s the petitioner . . . who gets to define the contours of the proceeding,” and that “the statute envisions that a petitioner will seek an inter partes review of a particular kind—one guided by a petition describing ‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based.’” Id. at 1335 (quoting SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (quoting 35 U.S.C. § 312(a)(3))) (emphasis added). “Although the Board is not limited by the exact language of the petition, . . . the Board does not ‘enjoy[] a license to depart from the petition and institute a different inter partes review of his own design.’” Id. at 1336 (quoting SAS, 138 S. Ct. at 1356) (citing Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018)). Here, the Petition alleges that claims 4 and 5 are obvious in view of Ishiyama and Murakawa, and claim 6 is obvious in view of Ishiyama, Murakawa, and Forslöw. Pet. 4, 54–59, 66–69. In other words, these combinations are “the grounds on which the challenge to [these] . . . claim[s] is based.’” Koninklijke Philips, 948 F.3d at 1335. In view of how the Petition is worded and the analysis provided for claims 4–6, we do not consider one of the challenged grounds to be whether claims 4 and 5 would have been obvious in view of Ishiyama, Murakawa, and Ahonen, and likewise Ishiyama, Murakawa, Forslöw, and Ahonen for claim 6.” slip op. at 20

  Patent outcomesUS 7,620,810 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,620,810
• Streck, Inc. / Streck LLC v. Ravgen, Inc.No claims unpatentable
  PTAB · Apr 18, 2023 · IPR2021-01577 · APJ Timothy G Majors · IPR · Final written decision

  Claims 55–61, 68, 69, 80–86, 89–92, 94, 126–130, 132, and 133 were not shown unpatentable under the asserted anticipation and obviousness grounds.

  RulingsFinal written decision

  • Strike new argumentNew argument consideredDenied

    “III. MOTIONS Motion to Strike (Paper 50) Petitioner filed a motion to strike portions of Patent Owner’s Sur- Reply. Paper 50. Patent Owner opposes the motion. Paper 53. Petitioner contends Patent Owner raised new argument about Exhibit 1014 (a paper authored by Dr. Patterson), which was submitted with the filing of the Petition but only cited by Patent Owner for the first time in its Sur-Reply. Paper 50, 1–3; PO Sur-Reply 14 (citing Ex. 1014). According to Petitioner, Patent Owner presents new argument about the reversibility of certain crosslinks caused by formaldehyde, cites new experimental data (in Ex. 1014, Fig. 2.1), and argues such matters would have been known before any possible priority date of the ’277 patent. Paper 50, 1–3. Moreover, Petitioner argues, the untimeliness of Patent Owner’s arguments about Exhibit 1014 prevented the exhibit’s author, Dr. Patterson, from addressing them to provide explanation or context. Id. at 2–3. For the reasons given below, we deny Petitioner’s motion to strike. First, we find that Patent Owner’s arguments on Exhibit 1014 are, on balance, responsive to issues raised by Petitioner in its Reply. It is true that Petitioner submitted Exhibit 1014 with its Petition and that Patent Owner did not cite it until its Sur-Reply. However, the points raised by Patent Owner about Exhibit 1014 respond to certain of Petitioner’s arguments raised for the first time in its Reply. For example, Petitioner argued a POSA would not have been concerned about formaldehyde’s use (such as cross-linking disclosed in Heinmoller that Patent Owner cited in its Response) and that those concerns arose only after the supposed priority date of the ’277 patent. 88 Pet. Reply 8–9. Patent Owner’s citation of Exhibit 1014 is responsive on such points (e.g., it discusses cross-linking with formaldehyde’s use), it published in 2000 and is thus earlier than some references Petitioner argued were too late to evidence a POSA’s knowledge, and, lastly, it was authored by Dr. Patterson and arguably called into question the credibility of rebuttal opinions he offered about the state of a POSA’s knowledge on such issues. Second, Exhibit 1014 does not, ultimately, help Patent Owner as we do not rely on the portions of Exhibit 1014 cited by Patent Owner or Patent Owner’s argument about them. As discussed in our analysis, if cross-linking (as reported in Heinmoller or, for that matter, Exhibit 1014) was a perceived problem, Dr. Patterson provides a credible explanation how it could be and likely was addressed by Pertl.54 Supra Section II(G)(3) (citing Ex. 1047).” slip op. at 88

  • ExcludeDenied

    “by the non-designating party. See generally Paper 60. We nevertheless reviewed the designated testimony. The objections are overruled, but were also considered during review.” slip op. at 90

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “evidence that any of the challenged claims are unpatentable based on grounds advanced in the Petition.” slip op. at 93

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable

    “3. Conclusion For the reasons above, we find Petitioner has not established by a preponderance of the evidence that the combination of Chiu/Lee discloses “an agent that inhibits cell lysis, if cells are present” as recited in independent claims 55 and 81, and the claims depending therefrom. Accordingly, Petitioner has not established that claims 55–59, 61, 68, 69, 80–86, 89, 94, and 126–130 would have been obvious over Chiu and Lee.” slip op. at 52

  Patent outcomesUS 7,332,277 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,332,277

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.