- Google LLC v. Sandpiper CDN, LLCAll claims unpatentablePTAB · Oct 9, 2026 · IPR2025-00826 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–23 are unpatentable under § 103, including over Glines alone and the additional asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “additional education could substitute for work experience.” Pet. 3 (citing Ex. 1008 ¶¶ 51–53). Patent Owner provides substantially the same assessment. PO Resp. 16. We adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’112 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). 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 v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express claim construction. Pet. 3; PO Resp. 16. We address the parties’ interpretation of the scope of “causing said hostname to be resolved” in our discussion of Petitioner’s assertions for limitation [1.d]. Based on the record before us, we determine that no claim term requires express construction.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Strike new argumentNew argument consideredDecided for petitioner
“We do not agree. The Petition states that Glines discloses that the anycast is resolved by an ISP DNS server. Pet. 20. The Petition identifies Glines’s local ISP DNS resolver 18 as the claimed ISP DNS server. Id. The Petitioner further asserts that Glines’s ISP DNS resolver 18 sends the request to the DNS server 38, but states that “Glines’s local DNS resolver, an ISP DNS server, thus causes the hostname . . . to be resolved.” Id. at 21–22. The Petition also drew an analogy with the ’112 patent and the role of local DNS server 70a in the Petition. See Pet. 20–21. Because the Petition and the Reply both identify Glines’s local ISP DNS resolver 18 as causing the hostname to be resolved, Petitioner has not advanced a new theory of unpatentability in its Reply. 6 At oral argument, Patent Owner suggested a narrower claim reading, but admitted that this had not been briefed. Tr. 36:15–38:9, 44:9–16. We do not address this reading because it was not set forth in the briefing. In the briefing, Patent Owner took the broader reading discussed here. See Tr. 41:12–23; PO Sur-reply 7.” slip op. at 13
Patent outcomesUS 9,021,112 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,021,112 - Apple Inc. v. Ferid AllaniAll claims unpatentablePTAB · Aug 25, 2026 · IPR2025-00857 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–27 are unpatentable: claims 24 and 26 over Rossmann and Himmel; claims 1–2, 4–6, 10–23, 25, and 27 over Rossmann, Himmel, King, and Adar; claims 3 and 7–9 over those references and Boyle.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); see Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1011 (Fed. Cir. 1983).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“meaning of “icon” as claimed, including the dependent claims, the specification, the prosecution history, and the extrinsic evidence including expert testimony and dictionary definitions, we determine that the plain meaning of “icon” is readily apparent from the claims themselves. See Phillips, 415 F.3d at 1314 (“In some cases, the ordinary meaning of claim language as understood by a person of ordinary skill in the art may be readily apparent even to lay judges.”). We find that the plain meaning of “icon” as claimed encompasses at least “textual elements” because claim 20 recites “the icons comprise textual elements.” See id. (“Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term.”). We highlight that the additional intrinsic evidence cited by the parties is consistent with the plain meaning. For example, Figures 1 and 2 of the specification show icons comprising textual elements. As another example, during prosecution of the ’058 patent, the Examiner found that the claimed icons were taught by textual hyperlinks. Ex. 1002, 586, 592. In order to overcome the Examiner’s rejection and obtain an allowance (id. at 641–50), applicant subsequently amended the claims to recite “specifically designed,” thus implicitly conceding to the Examiner’s interpretation of icon as encompassing textual hyperlinks. Id. at 625–640; see PO Resp. 43–44 (citing Ex. 1002, 626–27, 645–46) (acknowledging that the Examiner allowed the claims because applicant amended the claims to recite “specifically designed for containing a set of icons.”).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed petitioner constructionDecided for petitioner
“Requiring an element to be "specifically designed" for another element narrows the claim because it requires more than the first element being merely capable of being used with the second element. The term "configured to" is generally construed narrowly to mean "made to" and "designed to" rather than broadly to require merely "capable of". See In re Giannelli, 739 F. 3d 1375, 1379-80 (Fed. Cir. 2014) (the phrase "configured to" requires more than "mere capability." Rather, that term is synonymous with "made to" and "designed to."). However, rather than use "configured to", in order to avoid any confusion as to the narrower scope of the claims as amended, Applicant herein directly and explicitly requires "designed to." In re Giannelli at 1379-80 (Fed. Cir. 2014) (reversing an obviousness rejection because (1) the claims were properly construed narrowly to mean "designed to" and not broadly to encompass merely "capable of", and (2) the USPTO had not explained the motivation for modifying the prior art to meet the "design to" requirement) See also MPEP 2111.04, citing to In re Giannelli, for the proposition that a claim can be narrowed to require that it be "designed and constructed to be used" in a specific manner (as a rowing machine in the case of In re Giannelli). Logan has not been specifically designed and constructed in the required manner, so it does not cure all deficiencies of the primary reference Iki (which lacks any tree menu structure). Logan describes only "remote web" pages 90, 95 that are merely pages retrieved from Web browsing and stored in a web computer 25. Iki as modified by Logan would result on in a tree menu structure wherein not all levels of the tree included the required selection pages specifically designed for containing the claimed set of icons. Ex. 1002, 626–27 (emphasis omitted).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner contends that a person of ordinary skill in the art would have modified Rossmann to include several advantages expressly taught by Himmel: Himmel’s consumer hot list bookmark set for the benefits of providing a user with a consistent user interface when accessing a website; to simplify navigation for the user by providing an additional navigation aid; to provide more immediate access to commonly used web actions; to reduce the network traffic required to navigate through webpages to arrive at a particular web function; and to reduce usage charges and data usage. Pet. 22–23 (citing Ex. 1003 ¶¶ 94–99; Ex. 1004, 2:38–56, 12:24–34, 14:35–44; Ex. 1005, 18:63–65, 20:11–16). Petitioner contends that modifying Rossmann’s Figures 4A through 4G to include Himmel’s consumer hot list bookmark set yields each selection page including both selection icons for navigating to other local pages along with direct access icons such as on sale today to directly navigate to a predetermined web site to perform a common web action. Id. at 23–25 (citing Ex. 1003 ¶¶ 96–100; Ex. 1004, Figs. 4D–F). Petitioner contends that the selection page of Rossmann as modified by the bookmark set of Himmel teaches a first locally stored page specifically designed to include a direct access icon because the selection page is “used to include” a direct access icon, such as on sale today, and that during use, this selection page is programmed to display the set of direct access icons for selection by the user. Pet. 25 (citing Ex. 1003 ¶¶ 96–100); see id. at 21–24. Petitioner contends that a person of ordinary skill in the art would have had a reasonable expectation of success because technology for bookmarking websites and web actions was known at the time of invention, modifying Rossmann to utilize known bookmark manager software would have been straight forward, Rossmann already includes hardware and programming instructions to access a web server, and Himmel teaches that known prior art methods utilized both selection and direct access icons on a single page. Id. at 25–26 (citing Ex. 1003 ¶¶ 101–103; Ex. 1004, 2:38–41, 14:21–44; Ex. 1005, Fig. 6A, 21:27–34).” slip op. at 19
Patent outcomesUS 10,943,058 unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,943,058 - Berkshire Hathaway Energy Company / Pacificorp v. Birchtech Corp.Institution deniedPTAB · May 18, 2026 · IPR2025-00278 · APJ David Cotta · IPR · Institution
The Board denied institution of Berkshire Hathaway Energy Company and PacifiCorp’s petition because it had instituted the earlier-filed IPR2025-00274 challenging the same patent.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“request from Patent Owner for Director Review, finding that Patent Owner introduced “evidence sufficient to put RPI and privity at issue” and remanding with instructions to “allow discovery, narrowly tailored to resolve the RPI and privity issues” including “at least materials sufficient to clarify the evidence the Board found to be ‘ambiguous’ and to avoid the need for the Board to ‘speculate as to the nature of the redacted material.’” Paper 57 (Decision on Request for Director Review). The Director instructed that after allowing such discovery, we “should then determine on the full record whether Petitioners have met their burden of demonstrating that the Petitions are not time-barred under § 315(b), applying the framework set forth in Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242–44 (Fed. Cir. 2018). Concurrently herewith, we issue a decision in IPR2025- 00278 finding that Petitioner has met its burden of demonstrating that its Petition is not time-barred under 35 U.S.C. § 315(b).” slip op. at 2
- Other 314aInstitution denied discretionary otherInstitution denied
“Review Decision instructing that “if the Board determines that Petitioners met their burden to identify all RPIs in the Petitions, then the Board should maintain at most one IPR challenging each of the ’114 patent, the ’517 patent, the ’430 patent, and the ’225 patent.” Paper 79, 3. Together with its Petition in this proceeding and the proceeding in IPR2025-00274, Petitioner filed an Explanation Regarding the Necessity of Multiple Petitions. Paper 2 (“Explanation”); IPR2025-00274, Paper 2. In the Explanation, Petitioner “request[s] that, if the Board uses its discretion to institute the Petitions, the Board consider the merits of IPR2025-00274 . . . before IPR2025-00278.” Explanation, 3. Further to Petitioner’s request, we first considered the merits of IPR2025-00274. For the reasons discussed in our concurrently issued decision in IPR2025-00274, we institute inter partes review on the grounds set forth in the Petition in IPR2025-00274. Further to the Director’s instruction that we “maintain at most one IPR challenging . . . the ’114 patent,” and the Petitioner’s request that we consider the merits of IPR2025-00274 before IPR2025-00278, we deny institution of the Petition in this proceeding.” slip op. at 3
Discretionary denialPatents in suitUS 10,343,114 - SAP America, Inc. v. Cyandia, Inc.All claims unpatentablePTAB · Mar 13, 2026 · IPR2024-01433 · APJ Jeffrey S Smith · IPR · Final written decision
Claims 1–7, 10, 11, 13, 18, 19, 23, 29, 35, and 36 are unpatentable as obvious over the PCT Publication and Austin-Lane.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill in the art at the time of filing “would have had a Bachelor’s degree in electrical engineering, computer science, or the like, and/or four or more years of experience in server-based applications” and that “[a]dditional experience may make up for a lack of education and vice versa.” PO Resp. 9. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the challenged patent and prior art, we adopt it and use “skilled artisans” to refer to people with such skill at the time the invention was filed. We do not perceive a substantive distinction between the parties’ definitions, but note that Petitioner’s definition provides more detail about the capabilities of skilled artisans. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“device indicated by the session data” encompasses “determining a notification method based on” session data indicating the current state of the external device, where the current state of the device encompasses an online state as well as an offline state. See Pet. 53–54; Tr. 55:3–10 (The Board: “Are there any other states of an external device other than online or offline?” Patent Owner: “As far as I know, Your Honor, those are the only two[.]”), Tr. 65:24–66:1 (The Board: “When the claim says current state, they mean it’s online or offline?” Petitioner: “Correct.”), Tr. 20:23–21:8. The specification is consistent with the plain language of the claim in disclosing two examples of the claimed “current state,” namely, online and offline. Ex. 1101, 21:1–4. The specification discloses that the notification manager “queries session manager 456 to determine the user’s connectedness.” Id. at 21:6–8. The specification discloses that if the user is “online, notify by, for example, the user’s active session. If offline, notify by, for example, a txt [sic] message, call the user’s landline, call a friend of the user, and the like.” Id. at 21:1–4, 23:28–31.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Patent Owner’s expert witness, Dr. Goodrich, show written description support for providing a notification to an active external device, Patent Owner has not cited any portion of the 2009 Parent, nor any portion of the testimony of Dr. Goodrich, to show that the 2009 Parent provides written description support for determining a notification method by which to provide an alert to an external device based on the current state of the external device as offline. We highlight that Paragraphs 130 and 131 of the 2011 CIP Application disclose offline notification preferences for determining a notification method by which to provide an alert to an external device based on the current state of the external device as offline. Ex. 1110 ¶¶ 130–131. Specifically, paragraphs 130 and 131 describe that: the notification manager of the eventing and alerting subsystem 452 queries the configuration server 454 for the user's notification preferences and correlates these notification preferences with session manager 456 to determine the best notification method. That is, the notification manager queries the configuration server 454 and determines, for example, that the user has certain online notification preferences and certain offline notification preferences. If online, notify by, for example, the user's active session. If offline, notify by, for example, a txt message. . . . The notification manager of the eventing and alerting subsystem 452 then queries session manager 456 to determine the user's connectedness. Id. That is, if the user’s connectedness, or “current state” of the claimed external device, is offline, and the user’s offline notification preferences are “notify by txt message,” the notification manager will determine that the notification method for the external device having a current state of offline is by txt message. See id. Thus, the 2011 CIP Application describes a notification manager that queries a session manager to determine whether an external device is offline, and if the external device is offline, determines a notification method for providing an alert on the external device based on the current status of the external device as offline and the user’s offline notification preferences. Although we find this written description support for the determining limitation in the 2011 CIP Application, we do not find this written description support in the 2009 Parent.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As to the “determining a notification method” limitation (1.10), Petitioner asserts that Austin-Lane teaches determining: (1) the user device(s) to send the notification to (e.g., phone, PDA, notebook computer, desktop computer); (2) the communication protocol to use to send the notification, i.e., how to send the notification (e.g., SMTP (for email), SMS (for texts), HTTP (for web browsers)); and (3) the type of alert to provide, i.e., how to present the notification, (e.g., text, an icon, a pop-up window, a video, an email, an audible or tactile alarm), based on the current state of the at least one external device indicated by the session data (“presence information”), which may include whether and on which device(s) the user is online and/or whether and on which applications the user has an active session. Id. at 53 (internal citations omitted) (citing Ex. 1105 ¶¶ 4, 5, 29, 32, 33, 39, 46, 48, 61, 79, Fig. 1). We highlight that paragraph 61 of Austin-Lane discloses that: The type preferences 650 may include preferences for various notification types. . . . [A]uction alert #1 660 defines the following delivery precedence 663: (1) a web browser (if the user is online), (2) an IM client (if the user is online), (3) a mobile phone #1, (4) a PDA, (5) a mobile phone #2, (6) a pager, and (7) an email inbox. Ex. 1105 ¶ 61; see id. ¶¶ 74–77 (Describing that one of several notification methods for delivering an alert to a user’s device is determined based on the current state of the user’s device as online or offline). Thus, Austin-Lane describes determining a notification method by which to provide an alert on an external device based on the current state of the external device as online as well as offline.” slip op. at 29
Patent outcomesUS 8,751,948 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 8,751,948 - Penumbra, Inc. v. Rapidpulse, Inc.No claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,406,402 - PTAB · Feb 10, 2026 · IPR2025-00687 · APJ Kristina M Kalan · IPR · Remand
On remand, the Board instituted IPR on claims 1–8 and 10–18 over all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRemand decision- RemandInstituted
“Paper 34, 1 (requesting “Director Review of the Director’s August 22, 2025 Decision Referring the Petition to the Board (‘Referral Decision’)”). Patent Owner argued that institution of IPR2025-00687 and IPR2025-00688 “should be discretionarily denied.” Id. at 5. Petitioner opposed. Paper 37. The Director granted review and found that “granting institution of two petitions that each challenge the same claims of the ’370 patent and ’218 patent 2” was an “abuse[] of discretion.” Paper 40, 1. The Director remanded the cases “to the Board panel to determine which of the two petitions challenging each of the ’370 and ’218 patents to institute.” Id. at 3. Pursuant to the Director’s instruction that we choose only one of the two petitions challenging the ’370 patent to institute, and for the reasons set forth below, we choose to institute review of the ’370 patent in this Petition, and not in IPR2025-00688.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Petitioner bears the burden of demonstrating compliance with 35 U.S.C. § 312(a)(2) and § 315(b). See, e.g., Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 (PTAB Jan. 24, 2019)” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “[does] not, at this time, contend that any term requires construction,” and instead, states that “[a]ll terms have been accorded their plain and ordinary meaning.” Pet. 11 (citing Ex. 1002 ¶¶ 212–215). Patent Owner asserts that it “does not presently propose any constructions,” but discusses the Board’s claim construction in IPR2020- 00834, Paper 18, 7–8. Prelim. Resp. 7. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,933,370 - PTAB · Feb 10, 2026 · IPR2025-00717 · APJ Zhenyu Yang · IPR · Remand
On remand, the Board instituted IPR of claims 1–4 and 6–26 on all six asserted obviousness grounds, finding a reasonable likelihood of prevailing.
RulingsRemand decision- Director reviewDirector review, grantedOther
“The Director granted Director Review, finding that the panel “abused its discretion in granting institution of two petitions that each challenge the same claims” of the ’218 patent. Paper 39, 2. The Director vacated the DI and remanded the case “to the Board panel to determine which of the two petitions” to institute. Id. at 4.” slip op. at 4
- Parallel petitionsDecided for petitioner
“On November 4, 2025, we instituted inter partes review of all challenged claims based on all the grounds raised in the Petition. Paper 35 (“DI”). In the DI, we noted that “Petitioner filed an explanation regarding the necessity of multiple petitions,” and “Patent Owner d[id] not challenge that multiple petitions are necessary” in the Preliminary Response. Paper 23, 3 n.3.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Therefore, we institute inter partes review of all challenged claims based on all the grounds raised in this Petition.3” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’218 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,926,218 - Geneoscopy, Inc. v. Exact Sciences CorporationAll claims unpatentablePTAB · Feb 5, 2026 · IPR2024-01330 · APJ Ryan H Flax · IPR · Final written decision
Claims 3, 4, and 12–19 are unpatentable as obvious under each asserted ground.
RulingsFinal written decision- Skill levelOther
- Expert testimonyOther
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“embody claims of the ’746 patent, the product has features not covered by the ’746 patent’s claims, some of which are critical unclaimed elements according to Patent Owner. Accordingly, Cologuard is not coextensive with the challenged claims, and no nexus between the product and the challenged claims is shown on this record.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“developed where the patient need not manipulate their fecal sample to portion it, but the law of obviousness does not require an option to be the best option to be obvious. For these reasons, bearing in mind that the ultimate burden here is always on Petitioner, we are not persuaded by Patent Owner’s argument. We also reject Patent Owner’s argument that only impermissible” slip op. at 60
Patent outcomesUS 11,970,746 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,970,746 - Axion Biosystems, Inc. v. Agilent Technologies, Inc.No claims unpatentablePTAB · 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 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,906,508 - Apple Inc. v. Smith Interface Technologies, LLCAll claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01083 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–3, 7, 9, 10, and 101 are unpatentable as obvious over Ahn, Chaudhri, and Hinckley.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We find that a person of ordinary skill in the art had knowledge that “linear menus are not easy to use on small devices, especially in mobile situations” because “[t]he limited screen space makes it difficult to display a large . . . linear menu while keeping items large enough to be easily selected” (Ex. 1028, 2) and that “[d]istance to and size of the target are important factors that give pie menus the advantage over traditional linear menus” (Ex. 2013, 2). See Ex. 1023 ¶¶ 31–33. Given that Hinckley explicitly describes using its radial menu in a mobile telephone, and given that a person of ordinary skill in the art had knowledge of the advantages and disadvantages of Hinckley’s radial menu, we find Dr. Terveen’s testimony that a person of ordinary skill in the art would have used Hinckley’s radial menu in Ahn’s mobile device more persuasive that Dr. Rosenberg’s testimony to the contrary, because Dr. Terveen’s testimony is consistent with the teachings of Hinckley and the knowledge of a person of ordinary skill in the art, whereas Dr. Rosenberg does not reconcile his testimony with Hinckley’s express disclosure of displaying a radial menu on the touch screen of a mobile telephone. See Ex. 1003 ¶¶ 56, 63–67; 1023 ¶¶ 31–33; Ex. 2006 ¶¶ 71–79; Ex. 1006 ¶¶ 43, 53, 56; Ex. 2009, 3; Ex. 2010, 2; Ex. 2013, 2. We find that a person of ordinary skill in the art had reason to conclude that implementing Hinckley’s radial menu in Ahn’s mobile device with limited screen space yields advantages such as distance to and size of the icons as well as associating a function with a direction that outweigh disadvantages such as having less icons than a linear menu. We find that combining the bezel gestures and associated bezel menu and radial menu of” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. We find that altering Ahn’s device by substituting Hinckley’s bezel gestures and associated bezel and radial menus for Ahn’s technique of displaying menus does no more than yield the predictable results of (a) conserving screen real estate, (b) distinguishing bezel gestures from normal gestures so that the bezel gestures do not interfere with normal gestures and vice versa, (c) providing a novice mode to help a user learn the expert way of accessing the functionality of the bezel and radial menus, and (d) providing a user user as taught by Hinckley. Ex. 1006 ¶¶ 1, 40, 46, 77–80, 110; Ex. 1003 ¶¶ 63–67.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Patent Owner’s contention that several of the icons shown in Ahn’s menus would not benefit from a radial menu because of their assigned locations and functions (PO Resp. 42–51) do not address the Petition’s contention that a person of ordinary skill in the art would have used Hinckley’s bezel menu with icon 1712 that includes radial menu icon 1714 in Ahn’s device. See Pet. 46–55. Even if some icons would not benefit from a radial menu, we agree with Petitioner that a person of ordinary skill in the art would have recognized that other icons would benefit, such as the icons that display sub-menus when selected, as shown by icon 830 in figure 8C and the answer options icon shown in figure 17 of Ahn as well as icon 1714 shown in figure 17 of Hinckley, and would have therefore provided such icons with a radial menu icon. See Reply 2 (quoting KSR, 550 U.S. at 418); see id. at 15–16 (quoting Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013)). With respect to the specific locations assigned to the bezel menu icons and the radial menu icons, we agree with Petitioner that a manner that improves efficiency and usability, such as locating the radial menu icon away from the end points of the bezel menu as taught by figure 17 of Hinckley.” slip op. at 29
Patent outcomesUS 10,642,413 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,642,413
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.