- Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, LtdNo claims unpatentablePTAB · May 27, 2026 · IPR2022-01093 · APJ Scott A Daniels · IPR · Remand
Claims 13 and 14 were not shown unpatentable because the evidence did not establish that the received card information defines the memory location for the biometric signature.
RulingsRemand decision- RemandOther
“On appeal, the U.S. Court of Appeals for the Federal Circuit reversed our Original Decision and remanded the case for further proceedings. CPC Pat. Techs. Pty Ltd. v. ASSA Abloy AB, No. 2024-1492, 2025 WL 3134960, at *1 (Fed. Cir. Nov. 10, 2025), Paper 43. The Federal Circuit also noted that in light of the affirmance of our decision in another proceeding, IPR2022- 00600, challenging the same patent, the “errors the Board made in this appeal only extends to claims 3–18, which were not at issue in the other appeal.” Id. at *3 n 1. Therefore, in this proceeding, only challenged claims 13 and 14 remain. At the request of the parties, we permitted additional briefing addressing the issues on remand from the Federal Circuit. Paper 44. Petitioner filed an opening brief (Paper 51 (“Pet. Remand Br.”)), and Patent Owner filed an opening brief (Paper 52 (“PO Remand Br.”)). Both parties also filed responsive briefs. Paper 54 (“Pet. Responsive Br.”); Paper 55 (“PO Responsive Br.”). This is a Final Written Decision on Remand addressing the patentability of the remaining challenged claims 13 and 14. To prevail, Petitioner must prove unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). This Final Written Decision on Remand is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.” slip op. at 3
- BurdenNot shown unpatentable
“offers nothing to suggest that its card information ‘tells you’ where to store the fingerprint data.” ASSA ABLOY AB, 2025 WL 3134960 at *3. Reversing our determinations as to Hsu, the Court found that the testimony of Petitioner’s declarant, Mr. Lipoff, “merely confirms the associative link between the card information and the biometric data. Still missing is any non-conclusory testimony that Hsu’s card information determines the memory location of the biometric data.” Id. at 8. Therefore, on remand, a central question is whether Petitioner has shown sufficiently that Tsukamura cures this deficiency. Petitioner has not done so. In the Petition, Petitioner relies on Tsukamura for teaching a specific location for storing fingerprint data. See Pet. 75 (stating that “Tsukamura’s index number specifies the physical memory location in the memory”). Petitioner argues that “[t]hus, Tsukamura discloses defining, dependent upon the “index number N index,” a memory location for storing a biometric signature (e.g., a fingerprint template), i.e., ‘a memory location is specified by the card information.’” Id. at 75–76 (citing Ex. 1006 ¶ 215). In support, Petitioner’s declarant, Mr. Lipoff, testifies that “[i]f the Tsukamura implementation were used for Sanford-Hsu database, each user/account number would specify a different entry (index number) in the database.” Ex. 1006 ¶ 394. Tsukamura’s index number N index does not teach or suggest much more than Hsu’s using “an account number or employee number, to access a stored there during an enrollment procedure.” Compare Ex. 1004, code (57), with Ex. 1005, 4:7–11. That is, both references arguably teach defining, i.e., setting or establishing, a certain location in a database for biometric data. For example, as described above, Tsukamura’s fingerprint template Temp is stored in flash ROM 35 at a defined index number N index in the database. Id. 4:7–11, 50–54. However, neither Petitioner, nor Mr. Lipoff, persuasively explain how or why Tsukamura’s fingerprint template Temp, stored at index number N index, is commensurate with “means for defining, dependent upon the received card information, a memory location in a local memory external to the card” as recited in claim limitation 13[C]. Ex. 1001, 14:3–5 (emphasis added).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Tsukamura’s index number N index does not teach or suggest much more than Hsu’s using “an account number or employee number, to access a stored there during an enrollment procedure.” Compare Ex. 1004, code (57), with Ex. 1005, 4:7–11. That is, both references arguably teach defining, i.e., setting or establishing, a certain location in a database for biometric data. For example, as described above, Tsukamura’s fingerprint template Temp is stored in flash ROM 35 at a defined index number N index in the database. Id. 4:7–11, 50–54. However, neither Petitioner, nor Mr. Lipoff, persuasively explain how or why Tsukamura’s fingerprint template Temp, stored at index number N index, is commensurate with “means for defining, dependent upon the received card information, a memory location in a local memory external to the card” as recited in claim limitation 13[C]. Ex. 1001, 14:3–5 (emphasis added).” slip op. at 22
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Tsukamura’s index number specifies the physical memory location in the memory. Thus, Tsukamura discloses defining, dependent upon the “index number N index,” a memory location for storing a biometric signature (e.g., a fingerprint template), i.e., the memory location is specified by the index number, under the Second Construction. In my opinion, if the Tsukamura implementation were used for Sanford-Hsu database, each user/account number would specify a different entry (index number) in the database. Ex. 1006 ¶ 394. This is consistent with our understanding of Tsukamura, and we can agree that Tsukamura teaches defining—that is, setting or establishing—a location for storing the biometric signature at “index number N index.” See Ex. 1005, 4:7–11. However, considering the Federal Circuit’s decision, we determine such an associative link does not sufficiently explain how one of ordinary skill in the art would have understood Tsukamura’s IC” slip op. at 23
Patent outcomesUS 8,620,039 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,620,039 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, LtdNo claims unpatentablePTAB · May 8, 2026 · IPR2022-01094 · APJ Scott A Daniels · IPR · Remand
Claims 3–12 and 15–18 were not shown unpatentable because the asserted combinations did not establish that card information defined the memory location for storing the biometric signature.
RulingsRemand decision- BurdenNot shown unpatentable
“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) as “requiring [inter partes review] petitions to identify ‘with particularity . . . the evidence that supports the grounds for the challenge to each claim’”); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). That burden never shifts to the patentee. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Furthermore, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 10
- Skill levelOther
“B. Level of Ordinary Skill in the Art Consistent with our Original Decision, a person of ordinary skill in the art at the time of the ’039 Patent would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of human-machine interfaces and device access security. Additional education or experience might substitute for the above requirements.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“1. Limitation 3(da) The issues on remand revolve essentially around limitation 3(da): Limitation 3(da) – storing the inputted biometric signature in a memory at a memory location defined by the provided card information; Ex. 1001, 12:61–63. Considering limitation 3(da) in our Original Decision, we explained that during an enrollment process the claimed “biometric signature,” e.g., a fingerprint, is not yet stored in the memory, and no memory location or address has been “defined,” as in “set” or “established,” in the memory for storing the fingerprint, until card information is received. Once the card information and fingerprint are received during enrollment, the card information provides data that establishes where, i.e., at what memory location or address, the system will store the fingerprint data. Original Decision 16.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Tsukamura’s index number N index does not teach or suggest much more than Hsu’s using “an account number or employee number, to access a fingerprint database (44) and retrieve reference fingerprint data previously stored there during an enrollment procedure.” Compare Ex. 1004, code (57), with Ex. 1005, 4:7–11. That is, both references arguably teach defining, i.e., setting or establishing, a certain location in a database for biometric data. For example, as described above, Tsukamura’s fingerprint template Temp is Id. 4:7–11, 50–54. However, neither Petitioner, nor Mr. Lipoff, persuasively explain how or why Tsukamura’s fingerprint template Temp is set or established “at a memory location defined by the provided card information” as recited in claim limitation 3(da). Taking a close look at Petitioner’s testimonial evidence as to claim 3, we first note Mr. Lipoff testifies that Tsukamura’s index number specifies the physical memory location in the memory. Thus, Tsukamura discloses defining, dependent upon the “index number N index,” a memory location for storing a biometric signature (e.g., a fingerprint template), i.e., the memory location is specified by the index number, under the Second Construction. In my opinion, if the Tsukamura implementation were used for Sanford-Hsu database, each user/account number would specify a different entry (index number) in the database. Ex. 1006 ¶ 394. This is consistent with our understanding of Tsukamura, and we can agree that Tsukamura teaches defining—that is, setting or establishing—a location for storing the biometric signature at “index number N index.” See Ex. 1005, 4:7–11. But, concomitant with the Federal Circuit’s point, such an associative link does not sufficiently explain how one of ordinary skill in the art would have understood Tsukamura’s IC card information to define “as in ‘set’ or ‘establish[]’” a memory location, as our claim construction requires. See Section II.C.3.” slip op. at 22
Patent outcomesUS 8,620,039 not shown unpatentableClaim construction§ 103 obviousnessPatents in suitUS 8,620,039 - PTAB · Oct 21, 2025 · IPR2025-00057 · APJ Hung H Bui · IPR · Remand
The Board denied institution on all challenged claims because the conjunctive construction required a hardware action, which the asserted grounds did not show.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). A patent claim is unpatentable under 35 U.S.C. § 103(a) when the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“(1) The Claim Language Supports a Conjunctive Construction There is a “heavy presumption” that the terms used in claims “mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” SuperGuide, at 875 (citing Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002)).” slip op. at 21
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. First, the construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is conjunctive in light of the language of the claims and the specification of the ’887 patent. As such, Petitioner has the burden, but fails to show all three (3) components to be reproduced at Yun’s mobile device, including: [A] the display, [B] the audio and [C] the hardware (HW) action by the HW component of the mobile device. Second, as Patent Owner observes, and we agree, “Petitioner ignores the requirement for ‘the hardware (HW) action’ entirely” and does not even mention any “hardware (HW) action.” Prelim. Resp. 14 (Paper 10).” slip op. at 34
- Strike new argumentNew argument disregardedDecided for patent owner
“6 In the Petitioner’s Reply to the Patent Owner’s Preliminary Response, Petitioner presents several arguments to address the Fintiv factors, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). In support of Factor 6, Petitioner argues for the first time that Overton (not Yun or Lu) is allegedly teaching “the hardware (HW) action” aspect of the claims. Prelim. Reply 5 (citing Ex. 1006, 11:13–24 “force feedback . . . to the input devices 142 [shown in Figure 1]”). However, we decline to consider this belated argument raised for the first time in the context of a Fintiv analysis instead of the Petition.” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,934,887 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Aug 13, 2024 · IPR2022-01006 · APJ Barry L Grossman · IPR · Remand
The Board revised the construction of “biometric signal” on remand, then held that Petitioner did not prove claims 1–17 unpatentable under the asserted obviousness grounds.
RulingsRemand decision- RemandOther
“vacated following review by the Director and remanded to us: (1) for additional briefing by the parties on the construction of the claim term “biometric signal;” and (2) our further consideration of the construction of this claim term. Paper 49 (“Director’s Decision” or “Dir. Dec.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 56
- Expert testimonyPetitioner expert discountedOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 56
Patent outcomesUS 9,665,705 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,665,705 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Aug 13, 2024 · IPR2022-01089 · APJ Barry L Grossman · IPR · Remand
On remand, the Board held claims 1–13 not shown unpatentable because the cited combinations did not teach or suggest limitations D(1), D(2), and D(3).
RulingsRemand decision- RemandOther
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Sturgell, 553 U.S. at 894–95 to determine whether Apple is a privy of Petitioner. After doing so, we reach the conclusion that there is no persuasive evidence that Apple is a privy of Petitioner because:” slip op. at 50
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art The Graham analysis includes a factual determination of the level of ordinary skill in the art. Without that information, a court, or this Board, cannot properly assess obviousness “because the critical question is whether a claimed invention would have been obvious at the time it was made to one with ordinary skill in the art.” Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Thus, the level of skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). “This reference point prevents . . . factfinders from using their own insight or, worse yet, hindsight, to gauge obviousness.” Id. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–697 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima, 261 F.3d at 1355. Additionally, the Supreme Court informs us that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Petitioner states “[a] person having ordinary skill in the art” slip op. at 55
- Expert testimonyPetitioner expert discountedOther
“access-control.” Pet. 8 (citing Ex. 1005 ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 57
Patent outcomesUS 9,269,208 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Aug 13, 2024 · IPR2022-01045 · APJ Barry L Grossman · IPR · Remand
The Board revised “biometric signal” to include physical or behavioral attributes and held claims 1–13 not shown unpatentable under the asserted obviousness grounds.
RulingsRemand decision- RemandOther
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric 2 We cite to the record in IPR2022-01045, unless a specific citation to each Petition is required for clarity. Similar documents, generally having the identical exhibit or “Paper” number, were filed in each of the two proceedings to which this Decision applies. signal, as disclosed and claimed in the ’705 patent, is limited only to physical attributes and thus excludes behavioral attributes. The revised claim construction deletes the functional phrase “that provides secure access to a controlled item” in our original claim construction. Paper 42, 70. This functional phrase is unnecessary, and in fact, is redundant of language already in the challenged claims. The Director’s Decision also noted that “[n]either party’s proposed construction includes a requirement of ‘provid[ing] secure access to a controlled item.’” Dir. Dec. 6.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric 2 We cite to the record in IPR2022-01045, unless a specific citation to each Petition is required for clarity. Similar documents, generally having the identical exhibit or “Paper” number, were filed in each of the two proceedings to which this Decision applies. signal, as disclosed and claimed in the ’705 patent, is limited only to physical attributes and thus excludes behavioral attributes. The revised claim construction deletes the functional phrase “that provides secure access to a controlled item” in our original claim construction. Paper 42, 70. This functional phrase is unnecessary, and in fact, is redundant of language already in the challenged claims. The Director’s Decision also noted that “[n]either party’s proposed construction includes a requirement of ‘provid[ing] secure access to a controlled item.’” Dir. Dec. 6.” slip op. at 2
- Skill levelSkill level board ownOther
- Expert testimonyPetitioner expert discountedOther
“access-control.” Pet. 8 (citing Ex. 1005 ¶ 26). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 26. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it contains an exact restatement of the petition’s arguments without any additional supporting evidence or reasoning).” slip op. at 57
Patent outcomesUS 9,269,208 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,269,208 - Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGAll claims unpatentablePTAB · Feb 3, 2023 · IPR2021-00044 · APJ Eric C Jeschke · IPR · Remand
Claims 1–24 are unpatentable under §103 based on AAPA, Petersen, and Zilberman, and on other grounds shown in the decision.
RulingsRemand decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner responds that (1) the phrase “closed case” should be construed as a “case that does not currently permit user passage or entry” and that (2) the term “permanently” need not be construed, but if it is, it means “in such a manner that one would not expect it to be removed in the normal course of use.” First Pet. Reply 5 (with emphasis to show differences from Patent Owner’s positions); Second Pet. Reply 6–7 (same except without “user” in (1)). For the reasons below, the record more strongly supports Petitioner’s construction of “closed case” and Patent Owner’s proposed construction of “permanently.”” slip op. at 23
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Resp. 41–42; First Pet. Reply 20. Dr. Young’s cited testimony does not remedy these deficiencies. See First Young Decl. ¶¶ 110–112, cited at First PO Resp. 41–43. Accordingly, without any nexus, we find Patent Owner’s arguments unconvincing. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1372 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 373 (2020).” slip op. at 65
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“motion to consolidate the two proceedings, each of which challenges claims 1–24 of the ’746 patent. See First IPR, Paper 25; Second IPR, Paper 17. Over Patent Owner’s oppositions (First IPR, Paper 26; Second IPR, Paper 18), we granted in part the motions to consolidate, maintaining the two proceedings as administratively separate proceedings. First IPR, Paper 30; Second IPR, Paper 23. In the motions to consolidate, Petitioner also requested a good-cause extension of the one-year statutory deadline for the final written decision in the First IPR, which was granted. First IPR, Papers 28 & 29.” slip op. at 3
Patent outcomesUS 8,155,746 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,155,746 - Med-El Elektromedizinische Geräte Ges.M.B.H. v. Advanced Bionics AGAll claims unpatentablePTAB · Feb 3, 2023 · IPR2020-01016 · APJ Eric C Jeschke · IPR · Remand
Claims 1–24 are unpatentable under § 103(a), based on the AAPA–Petersen–Zilberman and Crosby–Petersen grounds.
RulingsRemand decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner responds that (1) the phrase “closed case” should be construed as a “case that does not currently permit user passage or entry” and that (2) the term “permanently” need not be construed, but if it is, it means “in such a manner that one would not expect it to be removed in the normal course of use.” First Pet. Reply 5 (with emphasis to show differences from Patent Owner’s positions); Second Pet. Reply 6–7 (same except without “user” in (1)). For the reasons below, the record more strongly supports Petitioner’s construction of “closed case” and Patent Owner’s proposed construction of “permanently.”” slip op. at 23
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Resp. 41–42; First Pet. Reply 20. Dr. Young’s cited testimony does not remedy these deficiencies. See First Young Decl. ¶¶ 110–112, cited at First PO Resp. 41–43. Accordingly, without any nexus, we find Patent Owner’s arguments unconvincing. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1372 (Fed. Cir. 2019), cert. denied, 141 S. Ct. 373 (2020).” slip op. at 65
- RemandFwd all claims unpatentableUnpatentable
“challenges claims 1–24 of U.S. Patent No. 8,155,746 B2 (Ex. 10012, “the ’746 patent”), which is assigned to Patent Owner, Advanced Bionics AG. We have jurisdiction under 35 U.S.C. § 6, and we issue this Final Written Decision on Remand under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons below, we conclude that Petitioner has proven, by a preponderance of the evidence, the unpatentability of all of the challenged claims.” slip op. at 2
Patent outcomesUS 8,155,746 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,155,746
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.