- PTAB · Jan 15, 2026 · IPR2025-01231 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“petition identifies all real parties in interest. 35 U.S.C. § 312(a)(2). Whether an unnamed party is a real party in interest “is a highly fact-dependent question.” See Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351, 1360 (Fed. Cir. 2018) (“AIT”); Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 at 4–5 (PTAB Jan. 24, 2019) (precedential) (citing Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018)); Consolidated Trial Practice Guide, 13 (2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (CTPG). “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” CTPG at 16. Other considerations include whether the non-party is funding or directing the proceeding; the non-party’s relationship with the petitioner; the non-party’s relationship to the petition itself, including the nature and/or degree of involvement in the filing; and the nature of the entity filing the petition. Id. at 17–18.” slip op. at 8
- Skill levelSkill level board ownOther
“person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in electrical engineering or a related field and at least two years of experience with lighting technology.” Pet. 2 (citing Ex. 1017 ¶ 35). Petitioner makes additional contentions about what a POSITA would have understood. Id. (“A POSITA would understand that all types of cameras (e.g., analog and digital, photo and video) generally involve the same lighting considerations . . . . [and] that it is important to provide light that evenly illuminates the target subject or object to minimize reflected glare and shadows.”). Patent Owner contends that a POSITA would have at least: (a) a bachelor’s degree in electrical engineering, optical engineering, or a related field; (b) two years of practical experience in designing and developing lighting systems, particularly those integrated with electronic devices such as webcams or computer monitors; and (c) knowledge of user-interface considerations for consumer electronics . . . . Additional experience can substitute for education and vice versa. Prelim. Resp. 12 (citing Ex. 2036 ¶ 48). Patent Owner disputes Petitioner’s contentions regarding what a POSITA would have understood. Prelim. Resp. 12–13 (“[O]ne of ordinary skill in the art would have understood that analog and digital cameras have different operating principles and lighting requirements [and] Petitioner’s lack of appreciation for the suitability and unsuitability of different lights for different applications infects and dooms its invalidity analysis.” (citing Ex. 2036 ¶¶ 36–47)). and years of experience required for a POSITA. Pet. 2; Prelim. Resp. 12. For purposes of this Decision, we consider a person of ordinary skill in the art to have a bachelor’s degree in electrical engineering or related field and two years of practical experience in lighting technology, and that additional experience may substitute for education and vice versa, which is consistent with the level of skill reflected in the ’729 patent and prior art of record. See Exs. 1001, 1005–1010, 1012–1015; see also 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 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner agrees that the Board need not formally construe any claim terms in order to adjudicate the merits of the Petition and argues Petitioner fails to show unpatentability of any claim under any reasonable construction of the claims. Prelim. Resp. 13 (citing Ex. 2036 ¶ 51). We determine that no express claim construction is necessary to determine whether institution is warranted in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We base our obviousness inquiry on factual considerations 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 skill in the art, and (4) any objective indicia of obviousness or non-obviousness that may be in evidence.14 See Graham, 383 U.S. at 17–18.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,841,729 - 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 - PTAB · Sep 9, 2025 · IPR2025-00440 · APJ Tawen Chang · IPR · Institution
The Board instituted IPR of claim 21 on both asserted § 103 grounds, finding a reasonable likelihood that claim 21 is obvious over Mizumura with the ’498 PCT and over Mizumura with McClymont.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons discussed below, we determine Petitioner has demonstrated a reasonable likelihood that the challenged claim of the ’318 patent is unpatentable. Accordingly, we institute an inter partes review of the challenged claim on each of the Grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“Nevertheless, we determine that the contrary evidence Petitioner has cited suffices to establish a reasonable likelihood of success at this preliminary stage of the proceeding. In this regard, we also note Dr. Jain’s testimony — currently unrebutted — that an ordinarily skilled artisan would have known, based on Tokunaga’s sequence comparisons of Factor C proteins, that “certain sequence differences between [Limulus polyphemus] and Tachypleus tridentatus were non-conservative (i.e., potentially giving rise to changes in function in terms of enzymatic activity of Factor C).” Ex. 1002 ¶ 94 (citing Ex. 1022, 157). We likewise note Dr. Jain’s testimony that such artisan would have recognized Tokunaga’s conclusion, regarding “immunological and biochemical properties” of Factor C proteins of the two different horseshoe crab species, to be “based on only gross biophysical-biochemical properties” that are not “granular enough” to predict functional properties such as residual activity in presence of specific ions. Ex. 1002 ¶ 100.” slip op. at 22
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledOther
“submitted in a different proceeding and in a different forum, and our rules contemplate objections to admissibility only after institution. See 37 C.F.R. § 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”); also compare Fed. R. Evid. 801(c) (defining hearsay as a statement, not made at the current trial or hearing, “offer[ed] in evidence to prove the truth of the matter asserted”), with Fed. R. Evid. 801(d)(2) (excluding from hearsay statement offered against an opposing party where statement was made by “a person whom the party authorized to make a statement on the subject” or by a “party’s agent or employee on a matter within the scope of that relationship and while it existed”). Nevertheless, as discussed above, Petitioner has provided contrary evidence, including statements from Patent Owner’s patent application, suggesting that, “due to the various differences and diversity of biomolecules depending on the genus and species of the horseshoe crab,” it had not been possible “to accurately determine the full-length sequence structure, expression, and function of [Limulus] proteins and genes using conventional methods” more than 20 years after complete gene and amino sequences from two Tachypleus horseshoe crab species had been reported. Pet. 35 (citing, e.g., Ex. 1005 ¶¶ 12–17). Thus, even if we were to take the Frohman Declaration into account, we find that Petitioner has established a reasonable likelihood 28 of success that the ’767 application disclosures did not enable an ordinarily skilled artisan to make and use the invention of the challenged claim without undue experimentation. Furthermore, assuming that the disclosures in ’767 application would have enabled an ordinarily skilled artisan to express recombinant Limulus polyphemus Factor C protein in HEK293, we find Petitioner has established, sufficient for purposes of institution, that the disclosures do not enable an ordinarily skilled artisan to make such a protein exhibiting the “full scope” of the claimed residual activity, without undue experimentation. Patent Owner cites to disclosures in the ’767 application that (1) describe how to produce recombinant Factor C in HEK293 cells and measure residual activity, (2) suggest “Factor C expressed in mammalian cells can have low susceptibility to activity inhibition by ions,” and (3) provide examples where residual activity met the required minimum. Prelim. Resp. 26–27, 32–34. Nevertheless, whether an ordinarily skilled artisan would have been able to make, based on these disclosures and without undue experimentation, a recombinant Factor C protein having residual activity encompassed by claim 21 but higher — even significantly higher — than that achieved in the example, is a fact intensive issue that would benefit from further development during trial.15 See, e.g., In re” slip op. at 28
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther
“the proceeding, and for the reasons set forth below, we are persuaded that Petitioner has shown sufficiently, for purposes of institution, that the ’767 application does not provide adequate written description support for claim 21 of the ’318 patent and that, accordingly, Mizumura, the ’498 PCT, and McClymont qualify as prior art to the challenged claim.” slip op. at 19
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,236,318 - PTAB · Jul 22, 2025 · IPR2025-00255 · APJ Charles J Boudreau · IPR · Institution
The Board instituted IPR on claims 1–27 and all petition grounds, finding a reasonable likelihood that claims 1, 23, and 27 are obvious over Wilcox, Londergan, Raskin, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Summary For the reasons discussed above, Petitioner has made sufficient showings at this stage of the proceeding that the Wilcox-Londergan-Raskin- Wu combination teaches or suggests every limitation in claims 1, 23, and 27 of the ’139 patent, that one of ordinary skill in the art would have had reason to combine those teachings and suggestions to arrive at the inventions recited in claims 1, 23, and 27, and that one of ordinary skill in the art would have had a reasonable expectation of success. Accordingly, Petitioner has demonstrated a reasonable likelihood of prevailing on its challenges to claims 1, 23, and 27 based on the combination of Wilcox, Londergan, Raskin, and Wu. Accordingly, institution of an inter partes review is appropriate under 35 U.S.C. § 314(a).” slip op. at 33
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Dr. Terveen has provided its own definition . . . . 31. I believe Dr. Terveen’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’139 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“missing in the prior art. Prelim. Resp. 29–34. Limitations [1.4], [23.5], and [27.4] each recite: “wherein the first and second partial search strings are separated by a string separator character in the first search field.” Ex. 1001, 29:47–49, 31:33–35, 32:29–31. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a Boolean AND operator and/or a comma).” Pet. 25–26 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.17 Consequently, based on the 17 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’139 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 31; compare Ex. 1001, 30:19–22 (claim 6, “string separator character”), with id. at 31:22–26 (claim 22, Boolean “modifiers”). Moreover, Patent Owner persuasively argues that “a POSITA would not understand Boolean operators such as ‘AND’ to function as string separator characters” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 31 (citing Ex. 1059, 162; Ex. 2001 ¶ 110). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues:” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“one of ordinary skill in the art would have considered “reverting some of the changes that had been made to Lotus Notes R5’s ‘Search Builder’ to make it more similar to Lotus Notes earlier 3.0’s ‘Query Builder.’” Prelim. Resp. 16. The issue, however, is not whether “over the years Lotus Notes moved away from a unified search field[,]” as Patent Owner suggests. Id. at 14. The issue is what “inferences and creative steps” a person of ordinary skill in the art would have employed, based on Wilcox and Londergan, when designing a new method and system for search indexing. KSR, 550 U.S. at 418. Petitioner’s argument is that one of ordinary skill in the art would have been motivated to consider Wilcox and Londergan together in order to “obtain a more complete and comprehensive understanding of the Lotus Notes system,” which in turn would have inspired certain inferences and creative steps that would have resulted in the portions of the claimed invention allegedly disclosed in Wilcox and/or Londergan. Pet. 22. We do not agree with Patent Owner that this argument can only be the result of improper hindsight bias. See Prelim. Resp. 16–17. At this stage of the proceedings and based on the current record, we determine that Petitioner has sufficiently shown that a POSITA would have been motivated to combine Wilcox and Londergan.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,633,139 - PTAB · Jul 22, 2025 · IPR2025-00254 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that claims 1–20 are unpatentable under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “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(a) (2018). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“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.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of all challenged claims. We, therefore, institute an inter partes review of claims 1–20 on the grounds asserted in the Petition. B.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’490 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“art. Prelim. Resp. 30–34. Limitation [1.10] reads, “wherein the first and second partial search strings are separated by a string separator character in the first search field.” Ex. 1001, 30:8–10. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 23–24 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.16 Consequently, based on the current record, for the purposes of this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing. If Boolean modifiers are excluded from the definition of a “string separator character,” then the Londergan Search Bar and Search Builder features, which accept only Boolean operators, do not teach or suggest 16 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’490 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 32; compare Ex. 1001, 31:14–17 (claim 12, “string separator character”), with id. at 32:19–23 (claim 20, Boolean “modifiers”). Moreover, Patent Owner persuasively argues that “a POSITA would not understand Boolean operators such as ‘AND’ to function as string separator characters” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 32 (citing Ex. 1059, 162; Ex. 2001 ¶ 110). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the search incrementally to use a single-character string separator character, such as a plus sign, as was known in the art (e.g., EX1057, 60, 109, 129, 151), or a comma, as described by the Lotus Notes references (EX1059, 159-165), at least because a POSITA knew that a goal of the incremental search is to minimize the number of characters the user has to enter before obtaining the desired search results. Pet. 24 n.7. limitation [1.10].17 See Ex. 1061, 140–42. The Wilcox Search Bar similarly is limited to strings separated by a Boolean operator. See Ex. 1059, 160–62. The Wilcox Query Builder, however, does teach multiple search strings separated by a string separator character, specifically a comma. Id. at 163 (“If you want to search for documents that contain all of several words, type them in this box, separated by commas.”). Thus, while we do not accept all of Petitioner’s reasoning, there is evidence to support Petitioner’s overall argument that the proposed combination discloses multiple search strings separated by a string separator character, as we have preliminarily construed the term.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“extreme technical difficulties with even using incremental searches.” Prelim. Resp. 21, 25 (citing Ex. 1021, 126). Patent Owner argues that “[a] POSITA is not motivated to undertake a modification of the prior art with something that the art teaches would be difficult or impossible to do.” Id. at 21 (citing Natera, Inc. v. NeoGenomics Labs., Inc., 106 F.4th 1369, 1377–78 (Fed. Cir. 2024)). We do not interpret Raskin in this manner. Patent Owner points to a passage in Raskin stating, “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.” Ex. 1021, 126. There is a difference, however, between “difficult to implement” and “difficult to use.” For the end-user, Raskin concludes that “[f]rom the point of view of interface engineering, the advantages of incremental searching are so numerous and the advantages of delimited searches so few that I can see almost no occasions when a delimited search would be preferred.” Id. at 126 & n.7 (“A search is either incremental or excremental.”). It is reasonable to conclude that one of ordinary skill would have been motivated to choose a search method that offered numerous advantages to end-users. Finally, Patent Owner argues that “Raskin’s entire philosophy to user interfaces was incompatible with Lotus Notes.” Prelim. Resp. 22–25. According to Patent Owner, “Lotus Notes is all about centralized collaboration around documents, files, and file structures[,]” while Raskin “goes in a completely different direction, espousing the elimination of filenames and ‘hierarchical file structures’ including directories and folders.” Id. at 23 (citing Ex. 1021, 119). Patent Owner claims that modifying the Lotus Notes references with Raskin would “effectively render[] Lotus Notes’ functionality of hierarchical viewing of and responding to documents unusable.” Id. Petitioner, however, does not propose to incorporate Raskin’s views on hierarchical file structures into the combination of Wilcox and Londergan. It is not necessary for the entirety of Raskin’s teachings to be physically compatible with the Lotus Notes systems described in Wilcox and Londergan. Orthopedic Equip., 702 F.2d at 1013 (“Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference.”); In re Sneed, 710 F.2d at 1550. Raskin is cited for one purpose: its teachings regarding incremental search. On the current record, we find Petitioner has demonstrated that one of ordinary skill would have been motivated to modify the combination of Lotus Notes references according to those teachings in Raskin. slip op. at 23
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,552,490 - PTAB · Jul 22, 2025 · IPR2025-00253 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR on claims 1–10 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 10 are obvious over Wilcox, Londergan, Raskin, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “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(a) (2018). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“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
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’035 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“in the prior art. Prelim. Resp. 30–34. Limitations [1.4] and [10.4] both recite: “wherein the first and second strings are separated by a string separator character in the first search field.” Ex. 1001, 29:44–46, 30:41–43. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 26–27 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.17 Consequently, based on the current record, for the purposes of 17 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’035 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 31 (citing Ex. 1001, 8:45–59, 22:34–46). Moreover, Patent Owner persuasively argues that “a POSITA would not have understood Boolean operators like AND to be a string separator as used in the claims” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 31 (citing Ex. 1059, 162; Ex. 2001 ¶ 109). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“based on the fact that all three references “generally relate to searching.” See Prelim. Resp. 20. The fact that Raskin does not explicitly discuss searching across multiple files does not mean that there would be no motivation to combine Raskin with the Lotus Notes references. Although a conclusion of obviousness must be supported by findings and analysis establishing a reason to combine or modify the known elements in the manner proposed, the analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, [but] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. We conclude on the current record that Petitioner’s rationale for combining Raskin with the Lotus Notes references is not over-broad.” slip op. at 22
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,370,035 - PTAB · Jul 16, 2025 · PGR2025-00012 · APJ Debra L Dennett · PGR · Institution
Instituted PGR on claims 1–3 based on five grounds; the Board found each ground met the institution threshold on the preliminary record.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review under 35 U.S.C. § 324. 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). A post-grant review may also be instituted when “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” See id. § 324(b). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)) and in consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of claims 1–3 of the ’201 patent.” slip op. at 2
- Skill levelSkill level board ownOther
“At this stage of the proceedings, neither Petitioner’s nor Patent Owner’s proffered definitions of the level of skill appear appropriate. Petitioner’s proposal requires as little as a bachelor’s degree in organic chemistry and two years of experience as a laboratory technician working on development of molecules with targeted biological activity, and an ambiguous “understanding” of certain processes. Patent Owner’s proposal, other the other hand, requires multiple years of both formal training and actual, practical experience in highly specialized fields that involve detection of optical or radiolabeled compounds and use of molecular imaging techniques such as PET and SPECT. For the purposes of this decision, on the record at this time, we find that a POSA would have had a Ph.D. in chemistry, biochemistry, or a comparable field or an M.D., and at least four years of experience in chemical synthesis of compounds that may be used to target biologically-significant tissues. This definition appears consistent with the level of skill shown in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). The parties will have the opportunity to cross-examine Dr. Martin and Dr. VanBrocklin in this proceeding to develop a full record for us to determine the weight that each expert’s testimony should be given. We invite the parties to further brief the definition of a POSA here, and whether we should discount either experts’ testimony due to lack of qualifications.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“c) Analysis On the present record, we find that “low molecular weight” is not limited to Patent Owner’s proposed “from about 50 Daltons to about 1,500 Daltons.” The cited evidence relied on in the Pomper Declaration all concerns metabolomics and metabolites, and we find no reason that even a vague definition of metabolites applies to the claimed compounds. See Ex. 1002, ¶ 102. Moreover, the uncontested fact that several of the B moieties alone—without the A moiety or L linker—specifically identified in the ’201 patent fall outside of Patent Owner’s proposed definition is persuasive (see id., ¶ 103), as we normally do not interpret claim terms in a way that excludes examples disclosed in the specification. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would exclude disclosed examples in the specification). In addition, the opinion stated in the Pomper Declaration that “the term of ‘low molecular weight’ is well accepted in the chemical arts’” and the declarant “recognize[s] that low molecular weight compounds would have a molecular weight of typically form about 50 Daltons to about 1,500 Daltons” is offered by a co-inventor. We, as factfinder, have discretion to weigh the credibility of expert witnesses and to give each item of evidence such weight as appropriate. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). In this case, we find that the published references on metabolites do not support the opinion. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”) The Pomper reference (Ex. 1006) also uses the term “low molecular weight”—without further characterization of the term—and is uninformative as to the meaning of the term. See Ex. 2002, ¶ 60; Ex. 1006, ¶ 12. The table giving the molecular weight of a “selection of compounds disclosed by Pomper” (see Ex. 2002, ¶ 62) is not persuasive in defining “low molecular weight,” as it does not explain how those included were “selected” and does not include molecular weights for all of the examples.7 In addition, Patent Owner’s definition does not appear to apply to all claimed compounds.8 7 At least one of the examples (SRV73) not included in the table appears to have a molecular weight well over “about 1,500 Daltons.” 8 See, e.g., claim 113 of Ex. 1006. Patent Owner’s arguments distinguishing “low molecular weight” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“The ’201 patent defines “alkyl” as “a straight (i.e., unbranched) or branched chain, acyclic or cyclic hydrocarbon group, or combination thereof” “ that has “the number of carbon atoms designated (i.e., C1–C10 means one to ten carbons, including 1, 2, 3, 4, 5, 6, 7, 8, 9, and 10 carbons)” and “[i]n particular embodiments, the term ‘alkyl’ refers to C1-20 inclusive, including 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20 carbons” “unless otherwise stated.” Ex. 1001, 39:44–58. Although substituents at the R1x position in the claims are limited to “C1-6alkyl,” those at position R3x are not. Ex. 1001, Certif. Corr. Patent Owner’s representation that “Jansen I provides ‘the following definitions’ stating that ‘alkyls groups of this invention comprise from 1 to 6 carbon atoms’” is inaccurate. See Prelim. Resp. 19. In fact, Jansen I states: The term “alkyl” by itself or as part of another substituent refers to a fully saturated hydrocarbon of Formula CxH2x+1 wherein x is a number greater than or equal to 1. Generally, alkyl groups of this invention comprise from 1 to 6 carbon atoms. Alkyl groups may be linear or branched and may be substituted as indicated herein. When a subscript is used herein following a carbon atom, the subscript refers to the number of carbon atoms that the named group may contain. Ex. 1007, 22:16–23 (emphasis added). Neither the ’201 patent nor its incorporation by reference of Jansen I would have conveyed to a POSA that the “(CO)alkyl” of the substituent in the R3x position in the claims is intended to comprise from one to six carbon atoms or is limited to any particular length and size. “(C(O)alkyl,” having no number of carbon atoms designated, means” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,938,201 - PTAB · Jun 6, 2025 · IPR2025-00140 · APJ James A Worth · IPR · Institution
The Board instituted IPR of claims 1–18 on all petitioned challenges, finding a reasonable likelihood that at least claim 1 is obvious over Nakajima and the knowledge of a person of ordinary skill.
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 filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 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) (2018). For the reasons set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of claims 1–18 of the ’250 patent is unpatentable, and we institute an inter partes review of claims 1–18 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products. Pet. 15 (citing Ex. 1002 ¶ 25). Petitioner asserts that more work experience may substitute for a lower level of education, and vice versa. Id. Patent Owner admittedly sets forth “a similar, though slightly different, level of ordinary skill”: a bachelor’s degree in mechanical experience with liquid-containing devices, with more work experience substituting for less education and vice versa. Prelim. Resp. 28 (citing Ex. 2001 ¶ 50). Patent Owner discerns no material difference between the definitions provided by the parties for purposes of the Board’s decision on whether to institute this proceeding. Id. For purposes of this decision, we adopt Petitioner’s proposed level of skill as being consistent with the prior art, although our conclusion on whether to institute would be unchanged under either definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“For purposes of this decision on institution, we adopt the proffered dictionary definition of “mouthpiece” as “a part (as of an instrument) that goes in the mouth or to which the mouth is applied” (see Ex. 2005), and we construe this as an intended use of this component of the apparatus, because this definition is consistent with the plain and ordinary meaning of the term which is a compound of “mouth” and “piece” and also because this definition is consistent with the Specification. For example, the Specification describes the use of the mouthpiece as follows: “In use, the mouthpiece is adapted to be configured to the dispensing configuration by a user placing the mouthpiece in the user’s mouth and biting upon or otherwise compressing the appropriate portions of sidewalls 92 of the mouthpiece.” Ex. 1001, 8:45–49. We note that, although the Specification refers to bite-actuation of the mouthpiece, for example in the field of the disclosure and certain embodiments (e.g., Ex. 1001, 1:25–27), the independent claims do not require bite-actuation. The Specification identifies the mouthpiece as item 72 (which is depicted, for example, in Figure 25, reproduced supra). Ex. 1001, 3:7‒8. 7 Exhibit 2005 appears to be from an online Merriam-Webster dictionary accessed March 13, 2025. Ex. 2005, 4. At this time, there is no argument in the preliminary record that this definition would have been different before the critical date of the patent.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although the construction of this limitation may be helpful in deciding the issues of unpatentability, we determine that the construction of this term would benefit from further briefing during the trial phase of this proceeding, and we invite the parties to continue to brief this issue. Therefore, we do not provide a preliminary construction of the term at this time.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,851,250 - PTAB · May 2, 2025 · IPR2024-01450 · APJ Justin T Arbes · IPR · Institution
Instituted inter partes review of claims 1–4, 6–11, and 13–20 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Dziong and Sathyanath.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’088 patent (January 2006), a person of ordinary skill in the art would have had “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately four years of experience working in the field of network communications, including experience with [Multiprotocol Label Switching (MPLS)] tunnels and bandwidth allocation,” where “[a]dditional work experience can substitute for specific educational background, and vice versa.” Pet. 12 (citing Ex. 1003 ¶¶ 20–21). Petitioner further contends that a person of ordinary skill in the art would have been knowledgeable and familiar with the network communications technologies discussed in [the Specification of the ’088 patent], including bandwidth reservations, quality of service techniques, routing protocols (including Open Shortest Path First (OSPF)), tunneling protocols (including [MPLS]), resource reservations (including Resource ReSerVation Protocol (RSVP)), traffic engineering (including relevant extensions to OSPF, IS-IS, and RSVP), and ring networking standards (e.g., Synchronous Optical Network (SONET) and resilient packet ring (RPR) defined by IEEE 802.17). Id. Patent Owner states that “Petitioner’s definition . . . is acceptable for” purposes of its Preliminary Response. Prelim. Resp. 8 n.3. Based on the record presented, including our review of the ’088 patent and the types of problems and solutions described in the ’088 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art 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 neededNot reached
“37 C.F.R. § 42.100(b). Petitioner argues that “no claim term requires express construction.” Pet. 12–13. Patent Owner does not propose interpretations of any claim terms in its Preliminary Response. We conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Patent Owner, however, does not explain sufficiently why any of these issues demonstrate a failure to teach limitation [1.1]. We understand Petitioner’s position to be that Dziong identifies “two or more candidate routes” (i.e., A-B-C-D and A-C-D) for a “new connection” (i.e., a new recovery path to protect primary path SRLG 4 in the event of failure) with a “requested bandwidth” (i.e., 15 units) sufficient to protect against failure. See Pet. 27–31 (citing Ex. 1005 ¶¶ 36, 70, 89, 90, 104, 105). The 15 units are the “units of demand” on SRLG 4 that must be protected. Ex. 1005 ¶¶ 89 (“[E]ach solid line represents all of the demands that have the same link-detour path, which is represented by a corresponding broken line. For example, solid line 606 in SRLG 4 corresponds to one or more demands totaling 15 units of bandwidth between nodes A and D.”), 90. A link in a potential recovery path for that demand on SRLG 4, therefore, would need to have “sufficient recovery bandwidth” to protect against failure (i.e., at least 15 units). Id. ¶¶ 36, 104. That is reflected in the “SRLG 4 failure” column of Figure 6(b) for link A-B (part of the A-B-C-D recovery path shown in blue in Figure 6(a) above). On this record, we do not see why the fact that link A-B also protects against failures of SRLG 3 and 5 and has its own 12 units of demand, or the fact that SRLG 4 also has another 24 units of demand (which link A-B does not protect against), contradicts Petitioner’s position regarding Dziong and limitation [1.1]. See id. ¶¶ 89–90 (“link A-B is not part of the link-detour path for the other 24 XC units of demand on SRLG 4”). At this stage, we find that Petitioner has made a sufficient showing that Dziong teaches limitation [1.1]. Therefore, we need not evaluate any additional arguments regarding Sathyanath at this time. See Pet. 31–32; Prelim. Resp. 14–16.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We disagree based on the current record. Dziong refers to both “link-based” and “path-based” recovery. Ex. 1005 ¶¶ 6–8. And the two methods are similar in various ways, as Dziong recognizes. See, e.g., id. ¶¶ 69 (“While some of the algorithms utilized in a link-based scheme are related to path-based recovery algorithms, there are significant modifications and special considerations that are made in the case of link-based recovery.”), 103 (“In some areas, the issues associated with recovery path calculation for link-based recovery [are] analogous to recovery path calculations for path-based restoration . . . .”). Dziong also purports to incorporate Sathyanath’s application by reference. Id. ¶ 1. And, as Petitioner points out, the references have similar disclosures and similar discussions of bandwidth sharing. See Pet. 1, 20–22; Ex. 1005 ¶¶ 10–12, 36–39, 60, 65, 88; Ex. 1006 ¶¶ 4, 12–13, 41–45, 200. Thus, on this record, we disagree with Patent Owner that a person of ordinary skill in the art would not consider combining the teachings of Dziong and Sathyanath. See In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012) (“A reference must be considered for everything that it teaches, not simply the described invention or a preferred embodiment.”); In re Hyon, 679 F.3d 1363, 1366 (Fed. Cir. 2012) (affirming an obviousness determination where two “references both teach processes directed to making the same class of products” and minor differences between the disclosures did not “negate the motivation to combine”). Second, Patent Owner argues that Petitioner “fails to identify specific teachings in Sathyanath that a [person of ordinary skill in the art] would have been motivated to implement in Dziong with a reasonable expectation of success” and “does not explain how the features would have been combined or why there would have been a reasonable expectation of success in doing so.” Prelim. Resp. 11. Patent Owner, however, only mentions Petitioner’s introductory statement regarding reasons to combine and does not address the substance of Petitioner’s arguments for claim 1, where Petitioner explains how it is relying on Sathyanath as a secondary reference. See Prelim. Resp. 10–11 (citing Pet. 22–23). For example, regarding the “sharing definition” of limitation [1.2], Petitioner argues that because Dziong only gives “limited details about the data format used for sharing” reserved bandwidth information, “it would have been obvious to consider . . . Sathyanath’s examples,” relying on two particular alleged “sharing definition[s]” in Sathyanath (i.e., the “aggregate node-link vector” and “TE/Share database”). Pet. 36–39. Based on the current record, we preliminarily find that Petitioner has made a sufficient showing, supported by the testimony of Dr. Mir, that a person of ordinary skill in the art would have been motivated to use such data formats to share reserved bandwidth information in the system of Dziong, with a reasonable expectation of success. See id.; Ex. 1003 ¶¶ 38–39, 72–79.” slip op. at 38
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,596,088 - PTAB · Apr 21, 2025 · IPR2024-01504 · APJ James A Worth · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 7, 9, and 10 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Iafrate and Kivioja.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“On this preliminary record, we agree with Patent Owner that Petitioner’s asserted level of ordinary skill in the art is higher than warranted when Petitioner argues that a person of ordinary skill “further would have had specific experience with implementing and designing library preparation methods.” Pet. 21–22. However, we disagree with Patent Owner that a POSA only need to “have had experience with DNA sequencing methods” (Prelim. Resp. 8) because an artisan with experience with only pre-NGS sequencing methods would not qualify as a person of ordinary skill. Instead, for purposes of this Decision, we find a person of ordinary skill would have had a Ph.D. in the field of chemistry, molecular biology, or biochemistry. Alternatively, a POSA would have had a B.S. or M.S. degree with three to five years of experience working in any of those fields. The person of ordinary skill would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. This definition of a person of ordinary skill is consistent with the skill level reflected in the disclosures of the ’357 patent and prior art. We further note that neither aspect of the dispute over the skill level affects our decision to institute review.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“1. “indexing site” Petitioner argues that the ’357 patent defines “indexing site” as a sample index, specifically, “a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing.” Pet. 23 (citing Ex. 1004, 4:40–44). Patent Owner does not disagree other than to argue that no claim requires construction. The ’357 patent states: An indexing site is a nucleic acid sequence that acts as an index for multiple polynucleotide samples, thus allowing for the samples to be pooled together into a single sequencing run, which is known as multiplexing. provide a definition for “indexing site,” and we construe the term in accordance therewith.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. “identifying sequence reads with identical identifier and target sequences as duplicates” Although the parties do not request construction of this limitation, we note that the parties may wish to address the construction of this limitation after institution. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (claims are construed only to the extent necessary the term “duplicates” means that the sequences are identical. We observe that the ’357 patent states: “A duplicate sequencing read can be a sequencing read with the same identifier site and target sequence as another sequencing read in the population of sequencing reads.” Ex. 1004, 4:12–15. The claim does not use the exact wording as the Specification.4” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“4. “comprising” The parties may address the meaning of the transitional phrase “comprising” and whether the prior art meets the claim if the prior art discloses a method of identifying as duplicates those sequence reads with identical labels and target fragments and, in addition also identifies other sequence reads as duplicates, including sequence reads with some mutations resulting from PCR or SBS error. See Ex. 1079 ¶ 117. On this preliminary record, we construe “comprising” as an open-ended transition that is not limited to the listed steps. See Vivid Techs., Inc., 200 F.3d at 811.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,098,357
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.