- Kubota North America Corporation v. Vermeer Manufacturing CompanySome claims unpatentablePTAB · Jun 30, 2026 · IPR2025-00167 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–13, 21, 22, 64, and 65 are unpatentable over the asserted grounds; claims 15, 17, 19, 20, 23–30, 66, and 67 were not shown unpatentable over KR996, JP705, and Beltrami.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“B. Analysis “The moving party has the burden of proof to establish that it is” slip op. at 9
- Skill levelOther
“B. Level of Ordinary Skill in the Art We review the grounds of unpatentability in view of the” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownPrior construction adoptedDecided for petitioner
“lexicographical, we agree with the parties that “mainframe” is not limited to a single weldment. Pet. Init. CC Br. 1; PO Init. CC Br. 1–2. Instead, a single-weldment “mainframe” is merely one disclosed embodiment. See Pet. Init. CC Br. 3 (stating that “by including the term ‘generally’ in a statement, the feature (i.e., single weldment) is expressly identified as merely included in some, but not all embodiments”); PO Init. CC Br. 3 (“This language is merely exemplary, using reference numerals to refer to the embodiment’s features and qualifying ‘single weldment’ as referring ‘generally’ to specific embodiments.”). The Iowa District Court reached the same conclusion. See Ex. 1020 at 4 (holding that “‘mainframe’ will be given its plain and ordinary meaning and does not require a single weldment” (emphasis added)), cited at Pet. Init. CC Br. 2; see also 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”).” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“probative and cogent evidence in the record” and “may often establish that an invention appearing to have been obvious in light of the prior art was not.” Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Thus, notwithstanding what the teachings of the prior art would have suggested to one skilled in the art, secondary considerations (objective evidence of non-obviousness) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Our obviousness analysis includes consideration and weighing of Patent Owner’s objective indicia of non-obviousness.” slip op. at 55
Patent outcomesUS 9,321,386 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00652 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’403 patent and the asserted prior art. 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). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 10; Prelim. Resp. 4 (citing Ex. 2009 ¶ 73); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses element [1.2] because the evidence cited does not disclose a “first computer system being configured to provide remote control of the first pump or first valve” (i.e., a fluid-handling device). Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but Petitioner has not identified any disclosure of the capability to remotely control fluid-handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, Kahn’s disclosures that Petitioner relies on for allegedly teaching remote control are deficient. We discuss each. First, Petitioner points to the following, “[f]or instance, as illustrated in FIG. 1C, a fluid control device such as a valve 15A is located on the input side of a sen[s]or unit 110.” Ex. 1005, 8:19–21, cited in Pet. 13. This portion of Kahn, however, does not disclose remote control. Second, Petitioner cites to the following: Finally, or in addition to, the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance. Pet. 13 (citing Ex. 1005, 10:62–67). We agree with Patent Owner that this portion of Kahn teaches on-site alerts and local control of the fluid-handling device. See Prelim. Resp. 7. This portion of Kahn does not disclose remote control.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,294,403 - Tanklogix, LLC v. Sitepro, Inc.Institution deniedPTAB · Oct 10, 2025 · IPR2025-00651 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6, 7, and 9–20 were unpatentable over any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’680 patent and the asserted prior art. 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). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“target value” is part of a command that is sent from a computing device to a server and then to a controller. The controller then receives a measurement of the fluid by a sensor and determines whether the measurement satisfies the “target value.” If the measurement does not satisfy the “target value,” further operations are undertaken. The recited operation sequence makes clear that the plain and ordinary meaning of “target value” is not as Dr. Wooley opines because the particular operating condition that a device is in at a particular time is represented by the measurement taken by the sensor, 11 Some claim language less relevant to construing “target value” was omitted for ease of reference. which the controller then uses to determine whether the measurement satisfies the “target value.” Additionally, claim 1 recites that the “target value” is sent as part of a command to the controller. The “target value” is not sent to the controller from the sensor, as might be expected if the plain and ordinary meaning of “target value” were as Dr. Wooley opines. Petitioner and Dr. Wooley’s construction would also result in “target value” meaning effectively the same thing as the measurement of the fluid by the sensor, a concept that is separately recited in claim 1 and to which the “target value” is compared. The Specification of the ’680 patent does not support Petitioner’s understanding of the plain and ordinary meaning of “target value.” Although the Specification does not recite “target value,” it recites “target state,” and describes “target state” sufficiently to understand the plain and ordinary meaning of “target” as used in “target value” and “target state.” In particular, the ’680 patent explains that “[i]n some embodiments, the process 104 includes receiving, via a network interface, from a remote user device, (e.g., via a command-center server) a command to change a state of a fluid-handling device to a target state.” Ex. 1001, 11:48–51. This portion reflects that the command is seeking to change a state of a fluid-handling device to a target state. In other words, the “target value” or “target state” is not generally “the particular operating condition that a device is in at a particular time”; rather, it is a value or state that the fluid-handling device is desired to be in, as Patent Owner and Dr. Durham explain. Additionally, just as claim 1 recites a directional component for the “target value” to be sent to the controller in a command, so too does the Specification describe a “target state” as being sent in a command from a remote user device. Thus, the Specification clearly supports the plain and ordinary meaning proposed by Patent Owner and Dr. Durham and not the plain and ordinary meaning proposed by Petitioner and Dr. Wooley. slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“time-stamped process data, report exception therein to the remote host, and extract and transmit time-stamped process data to the remote host.” Ex. 1005, Abst. (emphases added). Almadi explains that its remote field systems must include a plurality of controller units “to issue commands to, and gather and process data from a plurality of field devices, including remote systems and instruments, . . . [and] a database server for the storage of process data retrieved from the remote subsystems and instruments.” Id. at 2:22–30 (emphases added). Based on these disclosures, we agree with Patent Owner that Petitioner has not established that Almadi discloses element [1.4]. Specifically, the teachings from Almadi identified by Petitioner refer to process data, which is data retrieved from the remote subsystems/field devices. Thus, we understand that Almadi’s teaching—of using an Ethernet switch to transmit “process data”—describes transmitting data from the remote subsystems/field devices. See Ex. 1005, 3:13–17, cited in Pet. 15. But claim 1 and particularly element [1.4], recites “sending, with the server, the target value to the network address [which identifies a controller of the fluid-handling device13] via the network,” which is different than sending process data from the field devices to the remote host or database server for storage.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,175,680 - PTAB · Jun 11, 2025 · IPR2025-00139 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“d. Overlap of Issues “[I]f the petition includes the same or substantially the same claims, grounds, arguments, and evidence as presented in the parallel proceeding, this fact has favored denial.” Fintiv, Paper 11 at 12. “Conversely, if the petition includes materially different grounds, arguments, and/or evidence than those presented in the district court, this fact has tended to weigh against exercising discretion to deny institution under NHK.” Id. at 12–13. Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel district court litigation the grounds advanced in the petition. Sand Revolution II, LLC v. Cont’l Intermodal Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB June 16, 2020) (informative). The Board suggested that a broader stipulation such as one stipulating that the petitioner “would not pursue any ground raised or that could have been reasonably raised in an IPR, i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patents or printed publications” would better address concerns relating to overlapping issues. Id. at 12 n.5. Here, Petitioner’s stipulation is broader—Petitioner stipulates that, if the Board institutes IPR in this proceeding on the grounds presented in the Petition, Petitioners will not pursue an invalidity defense in the [Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the grounds that were raised or any grounds Petitioner[] reasonably could have raised in the IPR. Prelim. Reply 3. Petitioner’s stipulation is similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part), which was found to obviate much, if not all, of any potential overlap between the issues in the proceeding and the district court proceeding. See Prelim. Sur-reply 3 (acknowledging that “Petitioner[] offered a Sotera stipulation.”) Accordingly, the facts underlying this factor weigh strongly against exercising our discretion to deny institution.” slip op. at 13
- Other 314aDenied
“Patent Owner argues that the Petition improperly presents voluminous and excessive grounds challenging the claims of the ’878 patent. Prelim. Resp. 10–14. Patent Owner argues that the twenty distinct grounds set forth in the Petition alone is reason to deny institution. Id. at 11. Patent Owner argues that Petitioner’s showing regarding the VFD, switchgear, and enclosure recitations of claim 1 require us to “pick-and-choose” which “prior art evidence” is being applied. Id. at 14. We are not persuaded that the Petition sets forth such voluminous or excessive grounds asserting unpatentability that we should deny institution. Although Petitioner does set forth twenty grounds, sixteen of the grounds are directed to a single dependent claim. See Pet. 16–17. And of the four grounds challenging independent claim 1, Petitioner relies primarily on the combined teachings of Morris and Oehring IV to disclose or teach most of the claim recitations, relying on Premset Catalog and Premset Brochure to teach front-aligned, shielded cable connections and on Payne to provide an alternate teaching of using a common support structure. See Pet. 48–51, 70–74. The instant Petition is quite unlike those in the decisions cited by Patent Owner, which dealt with petitions asserting challenges containing multiple instances of “and/or” that resulted in hundreds of challenges or asserting multiple challenges grouped together in an indiscernible claim chart. See Prelim. Resp. 10 (citing Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 (PTAB Mar. 6, 2019) (informative); Uber Techs., Inc. v. Surgetech LLC, IPR2023-00738, Paper 8 (PTAB Oct. 23, 2023); EnergySouce Mins., LLC v. TerraLithium LLC, IPR2019-01607, Paper 10 (PTAB May 4, 2020)). And although we agree that the Petition is not the epitome of clarity, we are able to interpret Petitioner’s arguments as set forth below. Accordingly, we determine that the circumstances presented weigh against exercising discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the number of challenges presented in the Petition.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds. slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the effective filing date would have had either “a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field, as well as at least 2 years academic or industry 2 At this stage of the proceeding, the parties have not directed us to any such objective evidence. experience in the oil and gas industry, including well drilling, completion, or production” or “at least four years industry experience in the oil and gas industry including well drilling, completion, or production.” Pet. 17 (citing Ex. 1003 §§ V.A, VII). “Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 9. We find Petitioner’s uncontested definition to be consistent with the problems and solutions disclosed in the ’878 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,208,878 - PTAB · Jun 10, 2025 · IPR2025-00170 · APJ Eric C Jeschke · IPR · Institution
Instituted IPR on claims 1–36 on all asserted grounds; the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner and “notes that it substantially tracks” Patent Owner’s definition. Prelim. Resp. 20; see also id. at 20–21 n.7 (defining one of ordinary skill in the art as having “at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of machines, or have had equivalent knowledge and experience”). Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Patent Owner’s proposal is the same, except for use of the term “machines” instead of “vehicles.” Furthermore, Patent Owner does not argue at this stage of the proceeding that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the Texas District Court stayed the Texas Litigation pending the resolution of this inter partes review and the related inter partes reviews. See Ex. 1037 at 6; Prelim. Reply 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d), we use a two-part framework: (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 [the] 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”). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Specification. We first address the sentence highlighted in the Board’s request for additional briefing on claim construction: “As used herein, the term ‘mainframe’ generally refers to a single weldment to which the loader 8 is attached, optionally through one or more pivotal linkages.” Ex. 1001, 4:5–8, quoted at Paper 6 at 3. In the request, the Board sought briefing on whether this sentence is (1) a lexicographical definition of “mainframe” or, in the alternative, (2) merely a description of an embodiment. Paper 6 at 3. The parties both responded that this sentence is not lexicographical, but rather, merely describes an embodiment. See PO Init. CC Br. 1–5; Pet. Init. CC Br. 1–4; PO Reply CC Br. 1 (noting agreement); Pet. Reply CC Br. 1 (same). For the reasons below, we agree with the parties. “To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). As argued by both parties, the presence of “generally” in the sentence at issue shows a lack of clear intent to redefine “mainframe.” PO Init. CC. Br. 3; Pet. Init. CC Br. 2; cf. ParkerVision, Inc. v. Vidal, 88 F.4th 969, 976–77 (Fed. Cir. 2023) (finding definitional the sentence “[s]torage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal” (emphasis added)); Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (finding definitional the sentence “[a] ‘controlled amount’ of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when aniline is utilized as the solvent” (emphasis added)). Because the sentence at issue is not lexicographical, we also agree with the parties that “mainframe” is not limited to a single weldment. Pet. Init. CC Br. 1; PO Init. CC Br. 1–2. Instead, a single-weldment “mainframe” is merely one disclosed embodiment. See Pet. Init. CC Br. 3 (stating that “by including the term ‘generally’ in a statement, the feature (i.e., single weldment) is expressly identified as merely included in some, but not all embodiments”); PO Init. CC Br. 3 (“This language is merely exemplary, using reference numerals to refer to the embodiment’s features and qualifying ‘single weldment’ as referring ‘generally’ to specific embodiments.”). The Iowa District Court reached the same conclusion. See Ex. 1020 at 4 (holding that “‘mainframe’ will be given its plain and ordinary meaning and does not require a single weldment” (emphasis added)), cited” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,975,750 - PTAB · Jun 10, 2025 · IPR2025-00171 · APJ Eric C Jeschke · IPR · Institution
Instituted IPR on claims 1–16 and 19–28 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, 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.” Id. (internal quotation marks and citation omitted).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the Texas District Court stayed the Texas Litigation pending the resolution of this inter partes review and the related inter partes reviews. See Ex. 1037 at 6; Prelim. Reply 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework: (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 [the] 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”). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,202,266 - PTAB · Jun 10, 2025 · IPR2025-00169 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 50–63, 68, 69, and 80–85 under all asserted grounds after finding a reasonable likelihood of unpatentability for at least one claim.
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 “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.” After considering the Petition, the Preliminary Response, the additional briefing, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 50–63, 68, 69, and 80–85 of the ’386 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the District Court stayed the Parallel Litigation pending the resolution of this inter partes review and the related inter partes review. Ex. 1037, 6; Pet. DD Br. 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (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 [the] 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). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (“POSITA”) at the time of invention. Graham, 383 U.S. at 17. Petitioner proposes the following definition for a POSITA: [A] POSITA in February 2015 (the earliest effective filing date claimed) would have had at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of vehicles, or have had equivalent knowledge and experience. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 16–17 (citing Ex. 1003 ¶¶ 17–20). Patent Owner does dispute this definition in its Preliminary Response. Prelim. Resp. 21–22. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it is consistent with the ’386 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - PTAB · Jun 10, 2025 · IPR2025-00168 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 31–49, 70–79, 86, and 87 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the petition’s obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the District Court stayed the Parallel Litigation pending the resolution of this inter partes review and the related inter partes review. Ex. 1037, 6; Pet. DD Br. 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (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 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). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id. For part one of the Advanced Bionics framework, we evaluate the following factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination;” slip op. at 13
- 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 “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.” After considering the Petition, the Preliminary Response, the additional briefing, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 31–49, 70–79, 86, and 87 of the ’386 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A] POSITA in February 2015 (the earliest effective filing date claimed) would have had at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of vehicles, or have had equivalent knowledge and experience. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 18 (citing Ex. 1003 ¶¶ 17–20). Patent Owner does dispute this definition in its Preliminary Response. Prelim. Resp. 33. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it is consistent with the ’386 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - PTAB · Jun 10, 2025 · IPR2025-00167 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–13, 15, 17, 19–30, and 64–67 on all asserted grounds, finding a reasonable likelihood of unpatentability.
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 “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.” After considering the Petition, the Preliminary Response, the additional briefing, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1–13, 15, 17, 19–30, and 64–67 of the ’386 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“On March 19, 2025, however, the District Court stayed the Parallel Litigation pending the resolution of this inter partes review and the related inter partes review. Ex. 1037, 6; Pet. DD Br. 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (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 [the] 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). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (“POSITA”) at the time of invention. Graham, 383 U.S. at 17. Petitioner proposes the following definition for a POSITA: [A] POSITA in February 2015 (the earliest effective filing date claimed) would have had at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of vehicles, or have had equivalent knowledge and experience. Lack of professional experience can be remedied by additional education, and vice versa. definition in its Preliminary Response. Prelim. Resp. 21. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it is consistent with the ’386 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution deniedPTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution
The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13
- PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3
Discretionary denialPatents in suitUS 9,814,071
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.