- PTAB · Nov 19, 2025 · IPR2025-00947 · APJ Christopher G Paulraj · IPR · Institution
The Board instituted review of all challenged claims and grounds, finding a reasonable likelihood that claim 1 would have been obvious over Herrstedt and Bös.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denialDenied
“II. DISCUSSION A. Discretionary Denial Patent Owner filed a request for discretionary denial of institution. Paper 8. Petitioner opposed. Paper 9. The Acting Director denied the discretionary denial request. Paper 12 (September 19, 2025). Accordingly, we proceed with our analysis of the merits of Petitioner’s patentability” slip op. at 8
- Skill levelOther
“At this stage, we need not resolve the parties’ dispute with regard to the requisite level of skill in the art, as our analysis would be the same under either party’s definition of a POSA. We note, however, that Petitioner’s definition seems to be overly broad insofar as it would only require the POSA to be skilled in one of several broad fields, including “statistics” and “medical policy and decision making,” that do not directly relate to the claimed subject matter. At the same time, we do not agree with Patent Owner that the POSA needs specific clinical experience in the field of oncology. The claimed subject matter relates to the treatment of a side-effect associated with cancer therapy (CINV), and not the cancer itself. We also recognize that the prior art and the ’357 patent itself reflect the level of skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown.”).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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) (2019). This standard requires that we construe claims “in accordance with the ordinary and customary meaning of such claim[s] as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Petitioner contends no terms need to be construed to find the claims unpatentable in view of the prior art. Pet. 9. Patent Owner also contends that no claim construction is necessary to resolve the parties’ disputes. Prelim Resp. 14. At this stage, we do not perceive a need to construe expressly any claim terms of the ’357 patent for purposes of determining whether to institute trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Herrstedt taught the use of aprepitant as an NK1 receptor antagonist that could be combined with dexamethasone and palonosetron to treat emesis. Nonetheless, based on Bös’s identification of netupitant (compound Ib) as a “potent and selective” NK1 antagonist with “valuable therapeutic properties,” the present record supports Petitioner’s argument that the POSA would have been motivated to replace aprepitant with netupitant in the combination therapy. Ex, 1014, 14:31–34. Bös indicates that the compounds disclosed therein have utility in the treatment of emesis, and that neutpitant in particular “is a potent antagonist of NK1 induced behaviors in Gerbil and blocks emesis in Ferrets and suncus murinus with similar potency.” Id. at 19:26–30. Bös further indicates that netupitant has a high affinity for the NK1 receptor and a prolonged half-life. Id. at 18:44–48, 19:31–38. In view of these properties, we find a POSA would have had good reason to consider netupitant as a potential replacement for aprepitant in the treatment of CINV.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,186,357 - PTAB · Sep 9, 2025 · PGR2025-00023 · APJ Michael J Fitzpatrick · PGR · Institution
Instituted PGR on claims 1–9 because the Board found it more likely than not that at least one challenged claim is unpatentable over the ’629 publication.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review requires that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable” or that “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” 35 U.S.C. § 324(a)–(b). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Accordingly, we grant the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends a person of ordinary skill in the art (“POSITA”) would have a Ph.D. degree in biological, chemical or biochemical engineering, molecular biology, or biochemistry and at least two years of experience in the field of utilizing or assessing horseshoe crab zymogen proteins (lysate, purified native and/or recombinantly produced) for endotoxin detection and quantitation. More education could substitute for experience to a certain extent, and vice versa. Pet. 22 (citing Ex. 1003 ¶¶48–49). Patent Owner does not dispute Petitioner’s description of a POSITA in its Preliminary Response. Prelim. Resp. 10. 1 In addition to other changes to Title 35, the AIA introduced amendments to 35 U.S.C. § 102. Because Patent Owner concedes that the ’725 application “contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013” (Ex. 1022), the AIA version of § 102 applies to the ’109 patent. AIA § 3(n)(1)(B); Ex. 1001, 1:11–14 (claiming priority to the ’725 application). 2 US 2019/0241629 A1, published August 8, 2019 (“the ’629 publication” (Ex. 1015)). At this stage, we find Petitioner’s description of the level of ordinary skill in the art sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes an express construction of any claim term. See Pet. 22–23; Prelim. Resp. 10. We determine that no express claim construction is necessary based on the present record.” slip op. at 10
- Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable
“To show that the claims of the ’109 patent are unpatentable for lack of written description, Petitioner would have needed to show that the specification as filed (i.e., the ’420 application) fails to reasonably convey to those skilled in the art that Patent Owner had possession of the claimed subject matter as of the July 3, 2023, filing date. Petitioner did not. Pet. 23– 24. Nor does Petitioner’s declarant offer testimony that could support such a showing. See Ex. 1003 ¶50 (“I have been asked to provide my opinions as to the state of the art in this field for purposes of determining what the inventors disclosed as their invention as of December 10, 2013.”), ¶51 (“Whenever I offer an opinion in this declaration about the knowledge of a POSA, the manner in which a POSA would have understood the claims of the ’109 patent or its description, the manner in which a POSA would have understood the prior art, or what a POSA would have been led to do based on the prior art, I am referencing the December 10, 2013 timeframe.”). Although the ’420 application is essentially identical to the ’767 application, the person of ordinary skill in 2013 is not the same as in 2023. See Ariad, 598 F.3d at 1351 (“[T]he [written description] test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” (emphasis added)). Thus, the information presented in the Petition, which is limited to the perspective of a 2013 POSITA, does not demonstrate that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable for lack of written description.” slip op. at 12
Claim construction§ 102 anticipation§ 112 disclosurePatents in suitUS 11,959,109 - Uatp IP LLC v. Slick Slide LLCInstitutedPTAB · Apr 8, 2025 · PGR2024-00054 · APJ Julia Heaney · PGR · Institution
The Board instituted PGR on claims 1–17 and 22–28 and all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Upon consideration of the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one claim challenged in the Petition is unpatentable. Further, Patent Owner has not persuaded us that it is appropriate to exercise our discretion not to institute review. Accordingly, we institute a post-grant review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level patent owner adoptedOther
“On this record, we do not find Patent Owner’s proposed experience level of at least five years in measurement and analysis of coefficient of friction to be supported. As to the necessity of experience in textile engineering and fiber science, Patent Owner’s position, although not supported by declarant analysis of the factors listed above, is consistent with the disclosure of the ’854 patent, which describes features of a mesh layer in textile and fiber terms. See e.g., Ex. 1001, 10:17–11:14, 12:65–13:8, 14:20–24. On the whole, however, we do not discern on this record how specific experience in textile engineering and fiber science of a person of ordinary skill would materially alter the outcome at this stage of the proceeding. For purposes of this decision only, we apply Patent Owner’s proposed definition of a person of ordinary skill in the art, except for the requirement of five years of experience in measurement and analysis of coefficient of friction. The level of skill in the art remains an open issue in this proceeding. Further submissions by the parties may include argument and evidence that would assist in the resolution of this issue at the close of trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “no formal claim construction is necessary in this proceeding.” Pet. 10; Reply 1, 4. Patent Owner contends the terms “mesh layer” and “coefficient of friction” require construction. Prelim. Resp. 14–16; Sur-reply 2–5. We have considered the parties’ arguments and discuss them below with regard to each of the terms Patent Owner contends should be construed. Because our determination that Petitioner demonstrates at least one challenged claim meets the threshold for institution (see SAS Inst., 138 S. Ct. at 1359–60) is not based on construing the term “mesh layer” or “coefficient of friction,” we determine we need not construe either claim term at this stage of the proceeding. 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.”)). As further discussed below, we invite the parties to address claim construction at trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We agree with Petitioner that the ’854 patent specification does not include clear and explicit lexicography or a disclaimer that would support requiring “coefficient of friction” to be determined by a specific ASTM test method. The portion of the specification Patent Owner asserts as a definition of “coefficient of friction” (see Ex. 1001, 11:31–42) is a description of an embodiment; we find it does not express patentee intent to redefine the term. Further, the statement that “the coefficient of friction … may be determined using the … ASTM D1894 standard test method” (id. at 11:32–35) indicates that use of that specific test method is optional. Accordingly, in the absence of patentee lexicography or disavowal, we do not limit the scope of the term “coefficient of friction” to require that it be measured by a specific ASTM standard. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). We note that the ’854 patent specification sets forth a definition for the coefficient of friction between the surfaces of the mesh material and the slide surface. Ex. 1001, 4:38–46. As stated above, however, we do not expressly construe any claim term at this stage of the proceeding. Should the parties address the construction of “coefficient of friction” at trial, we will make a determination after the close of evidence and any hearing.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,998,854 - PTAB · Jul 9, 2024 · IPR2024-00117 · APJ Elizabeth M Roesel · IPR · Institution
Instituted IPR on claims 1–13 on all petitioned grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim, including anticipation of claim 1 by Nguyen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and any response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’836 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“A reference qualifies as a printed publication only if it was publicly accessible before the effective filing date of the challenged patent. 35 U.S.C. § 102(a)(1); M & K Holdings, Inc. v. Samsung Electronics Co., Ltd., 985 F.3d 1376, 1379 (Fed. Cir. 2021). Public accessibility “has been called the touch-stone” in determining whether a reference qualifies as a printed publication. M & K Holdings, 985 F.3d at 1379 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quotes and citations omitted).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“2. Independent Claim 1 a. Preamble Petitioner contends that Nguyen discloses the claim 1 preamble, which recites “an adapter for mating with optical fiber connectors.” Ex. 1001, 18:12. Pet. 32–33 (citing Ex. 1005 ¶¶ 26–30, Figs. 1, 2). We find that Petitioner’s contention for the claim 1 preamble is adequate for purposes of institution.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“2. Reasons to Combine Petitioner contends that it would have been obvious to modify Nguyen’s adapter in two ways. Pet. 54. First, Petitioner asserts it would have been obvious to include “optical-fiber connectors that employ handles configured to remotely release connectors from the adapter” by replacing Nguyen’s connectors with Lee’s connectors. Pet. 54–56 (citing Ex. 1003 ¶¶ 289–295). Second, Petitioner asserts it would have been obvious to include “a transverse wall that includes slots halfway between two ends of the adapter and sleeve holders that employ sockets to mate with cylindrically-shaped ferrules” by replacing Nguyen’s wall with Lee’s sleeve holders. Pet. 54, 56 (citing Ex. 1003 ¶¶ 296–302). Petitioner provides several reasons for the first modification, including a desire for convenience, tightly packed fiber optic ferrules, ease of maintenance, and scalability. Pet. 54 (citing Ex. 1003 ¶¶ 289–290). According to Petitioner, these goals would be served because “Lee’s handle allows a user to disengage the latch arm further from the adapter” whereas “[t]he latch arms of Nguyen require a user to be closer to the adapter.” Id. (citing Ex. 1003 ¶ 289). Petitioner also provides reasons for the second modification, asserting that “Lee’s sleeve holders are easy to maintain because they are removable, able to snap into place, and coordinate with dust caps to maintain cleanliness, as opposed to Nguyen’s immobile wall.” Pet. 56 (citing Ex. 1003 ¶ 297). According to Petitioner, “a POSITA would have been motivated to modify Nguyen’s adapter to incorporate Lee’s sleeve holders and slots to provide a system that is easier to maintain.” Id. (citing Ex. 1003 ¶¶ 298–299). We find that Petitioner’s asserted rationale for modifying Nguyen in view of Lee is adequate for purposes of institution.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,333,836 - Kinderfarms LLC v. Genexa Inc.InstitutedPTAB · Mar 25, 2024 · PGR2023-00051 · APJ Deborah Katz · PGR · Institution
Instituted PGR of claims 1–24 on all asserted grounds; the Board found the §103 challenges more likely than not to render claim 1 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” See 35 U.S.C. § 324(a).” slip op. at 6
- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Skill Each party puts forth a characterization of the ordinarily skilled artisan in the field of the claims of the ’795 patent. (See Pet. 13 (citing Crowley Decl., Ex. 1003, ¶¶ 90–91); see Prelim. Resp. 3–4.) The parties’ proposed characterizations of the ordinarily skilled artisan are sufficiently similar that adoption of either would lead to the same result, institution. Thus, for the purposes of this Decision only, we adopt Patent Owner’s characterization of the ordinarily skilled artisan as having a bachelor of science degree in a relevant life sciences field, such as, chemistry, biochemistry, or pharmacy, with at least two years of work or laboratory experience in pharmaceutical formulations, and access to one or more team members having experience in pharmaceutical formulation and pharmaceutical regulatory approvals, or, in the alternative, at least three to four years of work or laboratory experience in pharmaceutical formulations, and access to one or more team members having experience in pharmaceutical formulation and pharmaceutical regulatory approvals. (See Prelim. Resp. 3–4.) We also note that the level of skill of an ordinarily skilled artisan is revealed by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that the absence of specific findings on the level of skill in the art does not give rise to reversible error “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, 225 USPQ 34, 38 (Fed.Cir.1985)).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner puts forth constructions of certain terms used in the claims of the ’795 patent. (See Pet. 14–19.) Patent Owner does not dispute any of these constructions specifically, but at this point, argues that we need not construe any terms “to resolve the present controversy.” (Prelim. Resp. 2.) We agree that an express construction is not required at this point in the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Thus, at this point in the proceeding, Patent Owner’s argument is not persuasive because it does not address the teachings in the prior art that Petitioner asserts would render the formulations claimed in the ’795 patent obvious.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 11,617,795 - PTAB · Jun 20, 2023 · PGR2023-00008 · APJ Kristina M Kalan · PGR · Institution
The Board instituted post-grant review of claims 1–13 on all petitioned grounds, finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute post-grant review, we must determine that the information presented in the Petition, “if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims of the ’624 patent is unpatentable. Thus, we institute post-grant review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“evaluated the subject matter of Riis during examination of the ’624 patent, we agree that Riis was before the Office, as discussed in connection with our analysis of the first part of the Advanced Bionics framework, above. Examiner T presumably was aware of Riis by virtue of having initialed an IDS containing Riis in the ’624 patent’s application and also by virtue of having initialed an IDS containing Riis in the ’067 Application, but Examiner T did not apply Riis in connection with the examination of the ’624 patent. On this record, Patent Owner also fails to show that the claims of the child application leading to the ’624 patent are substantially similar to those of the parent ’814 patent in which Examiner S considered Riis, and, thus, consideration of Riis during the prosecution of the ’814 patent does not equate to consideration of Riis during the prosecution of the ’624 patent. Regarding Patent Owner’s argument (2) that Petitioner fails to sufficiently show how the Examiner erred in evaluating the prior art, we find Petitioner’s arguments demonstrate that Examiner T, the examiner of the ’624 patent, did not apply Riis (or Wypych or Tatarka) during the examination of the’624 patent. As Petitioner argues, the error lies in that “the Examiner failed to consider the relevance of Riis as it applied to the pending method claims,” because although “Riis was considered during examination of the parent ’999 application, Riis was not similarly considered during examination of the ’018 application which led to the ’624 patent.” Pet. 76–77. We determine that the circumstances here demonstrate that the Examiner erred in evaluating the prior art.” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityNot reached
“35 U.S.C. § 322(a)(2) to deny institution, arguing that the Petition fails to identify every RPI. Prelim. Resp. 10–11, 56–60. Patent Owner argues that the Petition “should also have identified its parent corporation, Huhtamäki Oyj . . . as well as the related corporation Huhtamaki, Inc. . . . as RPIs to comply with the statutory requirements for a PGR.” Id. at 10. On this record, we determine that we need not address whether Huhtamäki Oyj and Huhtamaki, Inc. are unnamed RPIs because, even if they were, it would not create a time bar or estoppel under 35 U.S.C. § 325. See SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (precedential); Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (Board’s jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11 at 10 (PTAB July 18, 2017) (“evidence [of failure to identify all RPIs] is, at best, suggestive regarding an issue that is not jurisdictional”); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest . . . the Director can, and does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). Here, notwithstanding the arguments devoted to the RPI issue in the Preliminary Response, Preliminary Reply, and Preliminary Sur-Reply, we are not persuaded that Petitioner is barred or estopped from this proceeding, or that Petitioner purposefully omitted Huhtamäki Oyj or Huhtamaki, Inc. to gain some advantage. As Petitioner argues, the “RPI analysis is not necessary at institution, because Patent Owner has not alleged Petitioner would be time barred or otherwise estopped based on unnamed RPIs.” Prelim. Reply 5 (quoting SharkNinja, IPR2020-00734, Paper 11 at 18). As SharkNinja states, certain Board decisions go through extensive analysis to determine whether parties should have been named as RPIs, whereas other Board decisions determine that “such a lengthy exercise is unnecessary for the purposes of rendering a decision on institution of trial.” SharkNinja, IPR2020-00734, Paper 11 at 19. Here, as in SharkNinja, we find the latter approach better serves the interest of cost and efficiency. Thus, at this time and on this record, we will not consider whether Huhtamäki Oyj or Huhtamaki, Inc. must be named as RPIs.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention “would have had a relevant technical degree in Chemical Engineering, Polymer Science, Materials Science, or the like, and 2–3 years of experience in laminate or film manufacture or similar packaging manufacture and that less experience may be necessary with additional education and vice versa.” Pet. 17 (citing Ex. 1003 ¶¶ 66–72). In its 4 Neither Patent Owner nor Petitioner appear to present any evidence directed to secondary considerations. See generally Pet.; Prelim. Resp.; Prelim. Reply; Prelim. Sur-Reply. Preliminary Response, Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See generally Prelim. Resp. We adopt Petitioner’s definition, which is consistent with the level of skill in the art at the time of the invention as reflected by the prior art and the ’624 patent. 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 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,260,624 - PTAB · Apr 11, 2023 · IPR2022-01473 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all asserted grounds, finding a reasonable likelihood of unpatentability on at least one claim based on Higuchi and Kobayashi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’904 patent, and we do not exercise discretion to deny the Petition. Accordingly, we institute an inter partes review of claims 1–25 of the ’904 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In determining whether to exercise discretion to deny institution under 35 U.S.C. § 314(a), the Board considers the trial date in related litigation as part of an assessment of all relevant circumstances of the case, including the merits, in an effort to balance considerations such as system efficiency, fairness, and patent quality. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv Order”); see also NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential) (denying institution relying, in part, on § 314(a) because the parallel district court proceeding was scheduled to finish before the Board reached a final decision). In particular, the Board evaluates the following factors (“Fintiv factors”): 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv Order, 5–6. In evaluating these factors, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson10 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; 10 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. Factors (a), (b), and (d), relate to whether the same or substantially the same art or arguments were previously presented to the Office, and factors (c), (e), and (f) relate to whether the petitioner demonstrates that the Office erred in a manner material to the patentability of the claims. Advanced Bionics, Paper 6 at 9–11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id. 2. Examination of the ’904 Patent Although Patent Owner argues that the Petition asserts references previously in the Patent Office’s records, Patent Owner does not argue that the Examiner previously considered the combinations of art that the Petition raises, namely, the combination of Brown, Higuchi, and Fujita or the combination of Higuchi and Kobayashi. Resp. 33–34. And, to the extent that Patent Owner argues that substantially the same art was previously presented, the record does not persuasively establish how the art is substantially the same or how the art is now relied upon in the same manner. Resp. 33–34. As such, the record does not establish that the ’904 examination previously considered the art in a similar or cumulative way or to the same extent. As such, at least Becton, Dickinson factors (a), (b), (c), and (d) weigh against denial of institution. 3.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a singlecell battery. Id. at 3:1– 18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other modifications to the casing. Id. at 3:13–16 (“The aperture was then sealed by means of a short #2-56 round-head machine screw and a 10-mil thick polytetrafluoroethylene polymer gasket.”). In Example III, Brown similarly teaches a battery with fifteen stacked cell casings wherein, after each casing member of each cell was threaded into the hollow member of the cover of the adjacent, the aperture on the last cover was “sealed with a threaded screw as in Example II.” Id. at 3:19–29. These teachings demonstrate that Brown contemplated using the casing with the stacking mechanism in a single cell battery and accounted for that by sealing the aperture in the cover. In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explain why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 19 (citing Ex. 1002 ¶ 57–59); see Ex. 1005, 1:11–18, 3:1–18. Mr. Juzkow’s testimony in this regard repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing significant reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). For these reasons, we are not persuaded that Petitioner makes a sufficient showing that a POSITA would have been motivated to modify Brown as proposed. Because Petitioner relies on its modified Brown with respect to Grounds 1A to 1E, we also conclude that that Petitioner does not, on this record, demonstrate a reasonable likelihood of prevailing in showing that any of claims 1–25 would have been obvious over the combined teachings of Brown, Higuchi, and Fujita. Pet. 18–31. Because of our determination regarding ground 2, however, this conclusion does not prevent institution. See SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018). We invite the parties to develop the issue further at trial to the extent permitted under our rules and applicable law.14” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,024,904
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.