- PTAB · Oct 31, 2025 · IPR2025-00873 · APJ David Cotta · IPR · Institution
The Board instituted review of claims 1–14 on all asserted grounds after finding a reasonable likelihood that claim 1 is obvious over Gilmour, Merriman, and Frauenhofer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on at least one challenged claim is unpatentable. Thus, for reasons explained below, we institute inter partes review of claims 1–14 of the ’445 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1002 ¶¶ 30–34). Petitioner asserts that the POSA’s education “could include a bachelor’s degree in business or economics, with an emphasis on the use of technology in marketing or advertising” or “similar knowledge gained through actual work experience.” Id. Alternatively, the POSA’s education could include “a bachelor’s degree in computer science or equivalent industry experience, and work with a team that includes software engineers.” Id. According to Petitioner, the POSA “could also have qualified with more formal education and less technical experience, or vice versa.” Id. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’445 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2020). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Petitioner “applies plain-and-ordinary meaning to all terms.” Pet. 20. We determine that no terms require express construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, 8 and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Petitioner recognizes that the combination of Gilmour and Merriman alone “does not disclose that the profile owner computer automatically 17 selects a media property entity of a plurality of media property entities based on a comparison of the profile information with a plurality of stored requests from the plurality of media property entities.” Id. at 42. To address this deficiency, Petitioner asserts that Frauenhofer “discloses automatically selecting a user of a plurality of users based on a comparison of content with the plurality of stored requests from the users.” Pet. 44 (citing Ex. 1014, 3:12–19). Petitioner argues that it would have been obvious to combine Frauenhofer’s teachings with those of Gilmour and Merriman to arrive at the claimed method. Id. According to Petitioner a POSA “would have been motivated to make this combination because it would conveniently allow Gilmour’s requesting entities (which are media property entities) to make initial requests to the profile service provider, and then automatically receive profiles matching the requests on an ongoing or periodic basis.” Id. at 45. (citing Ex. 1010, 41; Ex. 1011, 39–40, 51; Ex. 1012 ¶ 25; Ex. 1013, 3:20– 23; Ex. 1002 ¶ 155).” slip op. at 17
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,984,445 - PTAB · Oct 7, 2025 · IPR2025-00545 · APJ David Cotta · IPR · Institution
The Board instituted IPR of claims 1, 3–11, 13–21, and 23–30 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. Thus, for reasons explained below, we institute inter partes review of claims 1, 3–11, 13–21, and 23–30 of the ’904 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“F. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2024). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Id. at 18–19. Petitioner also notes that “[a] person could also have qualified with more formal education and less technical experience, or vice versa.” Id. at 19. Patent Owner does not offer a definition of the person of ordinary skill in the art. Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’904 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“1. Rationale for proposed combination Petitioner asserts Merriman061 teaches that it is “highly desirable to target advertisements to the appropriate potential customer base” and discloses “techniques for gathering profile information about users and 26 1:52–53, 1:64–2:3, 2:6–30, 4:44–5:7, 5:50–59, 7:46–8:30, 8:39–46; Ex. 1002 ¶ 123). According to Petitioner, Jaye “recognizes the importance of collecting profile information for targeted advertising” and discloses “techniques for combining profile information from multiple local websites visited by users into more comprehensive global profiles that may be shared with ‘interested outside parties, such as advertisers.’” Id. at 21 (citing Ex. 1005, code (57), 1:18–38, 2:6–10, 2:6–8, 2:15–3:40, 5:5–19, 6:1– 7:45, 8:40–10:41,14:22–25; Ex. 1002 ¶ 123). Petitioner contends that a person of ordinary skill in the art would have been motivated to “incorporate Jaye’s techniques for collecting and combining profile information to enhance and improve Meriman061’s ad targeting by providing more information about the users to whom the ads are targeted.” Id. (citing Ex. 1002 ¶ 123). Having reviewed the arguments and evidence included in the Petition, including the Houh Declaration, which are not substantively addressed by Patent Owner at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that it would have been obvious to combine Merriman061 and Jaye in the manner set forth in the Petition.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,494,904 - PTAB · May 15, 2025 · IPR2025-00029 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–12 and 14–19 on all asserted grounds, finding a reasonable likelihood that Shapero and Delseny render claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the art or arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of the art or arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 6
- Skill levelSkill level board ownOther
“We find Patent Owner’s proposed definition of the skill level insufficient. As Patent Owner recognizes, the challenged claims relate to sequencing methods using a next-generation sequencing (“NGS”) platform. See id. at 8; see also Ex. 1001, 35:49–51 (claim 1 reciting “sequencing the amplified products comprising the enriched nucleic acid sequence of interest on a massively parallel sequencing platform”). Also, as Patent Owner recognizes, [c]ompared to traditional, Pre-NGS sequencing methods, NGS sequencing utilized a new design that no longer relied upon disassembling and then piecing together a single original template DNA strand. Instead, NGS sequencing now allowed for hundreds of thousands of original template strands to be sequenced in the same reaction. With NGS, a user could perform massively parallel sequencing, allowing for elements of the genome to be sequenced in a fast, scalable manner. need to have education “in a field related to molecular biology” or experience “in a molecular biology lab,” because an artisan having only experience with pre-NGS sequencing methods would not qualify as a POSA. Instead, for purposes of this Decision, we find a POSA would have had a Ph.D. in molecular biology, molecular genetics, bioinformatics, biochemistry, or a related field. 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. Additionally, the POSA would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. This definition of a POSA is consistent with the skill level reflected in the disclosures of the ’108 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 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“It is true that Delseny recognizes the limitations and challenges of NGS. Ex. 1007, 411, 417. But the language in Delseny that Patent Owner identifies does not amount to teaching away, which requires that prior art references “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Instead, Delseny notes the limitations of hybridization technology in genotyping. Ex. 1007, 417. According to Delseny, “[t]he ultimate resolution is at the base-pair level and NGSTs now open the possibility to genotype a line by sequencing it.” Id. In fact, Delseny specifically teaches that NGS “can substitute for the genotyping microarray strategy because of its higher resolution.” Id.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,876,108 - PTAB · May 15, 2025 · IPR2025-00028 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–15 and 17–22 on all asserted obviousness grounds, finding a reasonable likelihood that Shapero and Delseny render claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“To accord substantial weight to evidence of secondary considerations, it “must have a nexus to the claims, i.e., there must be a legally and factually sufficient connection between the evidence and the patented invention.” Quanergy Sys., Inc. v. Velodyne Lidar USA, Inc., 24 F.4th 1406, 1417 (Fed. Cir. 2022) (internal quotation marks omitted); see also In re Kao, 639 F.3d 1057, 1069 (Fed. Cir. 2011) (instructing that “the Board, in considering the evidence of unexpected results, should determine whether there is a nexus between the unexpected [results] and aspects of the claimed invention not already present in the prior art”). Moreover, “when unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Laboratories, 952 F.2d 388, 392 (Fed. Cir. 1991). On this record, it is unclear what Dr. Brooks considered to be the closest prior art when he alleged unexpected results. See Ex. 1002, 2013–17. We also find no persuasive evidence in either Brooks Declaration or the Examiner’s analysis on the requisite nexus. See id., 2055–56. As a result, we agree with Petitioner that “the Examiner erred in exclusively relying on Dr. Brooks’ declaration” to withdraw the obviousness rejection based on Jones and Tucker. See Pet. 58.” slip op. at 16
- Skill levelSkill level board ownDecided for petitioner
“We find Patent Owner’s proposed definition of the skill level insufficient. As Patent Owner recognizes, the challenged claims relate to sequencing methods using a next-generation sequencing (“NGS”) platform. See id. at 8; see also Ex. 1001, 35:56–57 (claim 1 reciting “sequencing the enriched nucleic acid sequence of interest on a massively parallel sequencing platform”). Also, as Patent Owner recognizes, [c]ompared to traditional, Pre-NGS sequencing methods, NGS sequencing utilized a new design that no longer relied upon disassembling and then piecing together a single original template DNA strand. Instead, NGS now allowed for hundreds of thousands of original template strands to be sequenced in the same reaction. With NGS, a user could perform massively parallel sequencing, allowing for elements of the genome to be sequenced in a fast, scalable manner. Prelim. Resp. 5 (internal citations omitted). As such, we disagree with Patent Owner that a POSA only need to have education “in a field related to molecular biology” or experience “in a molecular biology lab,” because an artisan having only experience with pre-NGS sequencing methods would not qualify as a POSA. Instead, for purposes of this Decision, we find a POSA would have had a Ph.D. in molecular biology, molecular genetics, bioinformatics, biochemistry, or a related field. 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. Additionally, the POSA would have had experience with NGS sequencing methods and a working knowledge of how those methods functioned. This definition of a POSA is consistent with the skill level reflected in the disclosures of the ’012 patent and prior art. We further note” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b) (2020). Under that standard, the words of a claim “are generally given their ordinary and customary meaning,” which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“It is true that Delseny recognizes the limitations and challenges of NGS. Ex. 1007, 411, 417. But the language in Delseny that Patent Owner identifies does not amount to teaching away, which requires that prior art references “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Instead, Delseny notes the limitations of hybridization technology in genotyping. Ex. 1007, 417. According to Delseny, “[t]he ultimate resolution is at the base-pair level and NGSTs now open the possibility to genotype a line by sequencing it.” Id. In fact, Delseny specifically teaches that NGS “can substitute for the genotyping microarray strategy because of its higher resolution.” Id.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,036,012 - PTAB · May 14, 2025 · IPR2025-00027 · APJ Deborah Katz · IPR · Institution
The Board instituted IPR on claims 1–16 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“On this preliminary record, having considered Dr. Metzker’s testimony and Patent Owner’s reasoning, we agree that one of ordinary skill in the art would have had experience with next generation sequencing, but are not persuaded that this would only be possible in the field of molecular biology. For the 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 or 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 next generation 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 ’241 patent and prior art. We further note that neither aspect of the dispute over the skill level affects our decision to institute review. C. Claim Construction” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner argues that we should construe the claim term “adaptor” as “any oligonucleotide that is attached to the target sequence.” (See Pet. 10.) Petitioner cites the ’241 patent as referring to an “adaptor” as “an oligonucleotide sequence, the ligation of which to a target polynucleotide or a target polynucleotide strand of interest enables the generation of amplification-ready products of the target polynucleotide or the target polynucleotide strand of interest.” (Ex. 1001, 4:14–21; see Pet. 10.) According to Petitioner, this described function can be performed by any oligonucleotide. Petitioner also cites the Examiner’s reasoning during prosecution that “since any oligonucleotide can perform such function, any oligonucleotide is considered to anticipate this term.” (See Pet. 10 (citing Ex. 1013, 77).) Petitioner further cites the specification of the ’241 patent for its disclosure that “appending the adaptor to the nucleic acid fragments generated by methods described herein can be achieved using a ligation reaction or a priming reaction.” (Ex. 1001, 9:34–37; see Pet. 10.) Patent Owner does not dispute this construction at this stage, arguing only that the term need not be construed beyond its plain and ordinary meaning and reserving the right to propose constructions and identify terms needing construction later in the proceeding. (See Prelim. Resp. 9.) For the purposes of this decision, we adopt Petitioner’s construction of the term “adaptor,” although we note that it does not affect our decision to institute review. D. Ground I – Anticipation by McCloskey” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In summary, Petitioner presents evidence, which we find preliminarily persuasive, showing that McCloskey, Porreca, and Schmitt disclose aspects of the claims that were alleged in the prosecution to be missing in McCloskey 2007. For at least the reasons noted above, we determine that each of Porreca, McCloskey 2007, and Schmitt are not substantially the same as either McCloskey 2007 or Samuels. Accordingly, the first part of the framework of Advanced Bionics is not met and we are not persuaded there is a reason to exercise our discretion to deny institution of review at least on the basis of anticipation under 35 U.S.C. § 102(a) over Porreca, McCloskey, or Schmitt. Because we do not exercise discretion to deny institution of review on the basis of at least one ground of challenge raised by Petitioner, we institute trial on all claims and all grounds asserted in the Petition. See 35 U.S.C. § 314(a); SAS Inst., 584 U.S. at 362.” slip op. at 46
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We are not persuaded at this point in the proceeding by Patent Owner’s arguments because Dr. Metzker testifies that McCloskey refers to the redundant hypermethylated and hypomethylated sequences, which one of ordinary skill in the art would have understood to mean both the identical target sequence and the identical barcode to be used to identify duplicates. (See Ex. 1003 ¶ 90.) At this point in the proceeding, in the absence of contradictory evidence, we are persuaded that Petitioner has provided sufficient evidence that McCloskey teaches “identifying sequence reads with identical identifier and target sequences as duplicates.”” slip op. at 15
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,725,241 - PTAB · May 14, 2025 · IPR2025-00026 · APJ Deborah Katz · IPR · Institution
Instituted IPR of claims 1–10 on all asserted grounds after finding a reasonable likelihood that claim 1 is unpatentable over Porreca and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Director determines that the information presented in the petition filed under section 311 and any response filed under section 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). We determine whether to institute inter partes review on behalf of the Director. See 37 C.F.R. § 42.4(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 42
- Skill levelSkill level board ownOther
“Patent Owner asserts that Petitioner’s definition requiring a Ph.D. or a Master’s degree and several years of experience indicates higher than ordinary skill because by 2008 next generation sequencing was performed in laboratories according to published protocols and would have been accessible to experienced laboratory technicians and graduate students. (Prelim. Resp. 8.) Patent Owner proposes that, instead, the appropriate level of ordinary skill in the art was a Ph.D. in a field related to molecular biology, or a B.S. or M.S. degree with three to five years of experience working in a molecular biology lab. (See id.) On this preliminary record, having considered Dr. Metzker’s testimony and Patent Owner’s reasoning, we agree that one of ordinary skill in the art would have had experience with next generation sequencing, but are not persuaded that this would only be possible in the field of molecular biology. For the 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 or 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 next generation 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. C. Claim Construction” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner argues that we should construe the claim term “adaptor” as “any oligonucleotide that is attached to the target sequence.” (See Pet. 9.) Petitioner cites the ’357 patent as referring to an “adaptor” as “an oligonucleotide sequence, the ligation of which to a target polynucleotide or a target polynucleotide strand of interest enables the generation of amplification-ready products of the target polynucleotide or the target polynucleotide strand of interest.” (Ex. 1002, 4:20-25; see Pet. 9–10.) According to Petitioner, this described function can be performed by any oligonucleotide. (See Pet. 10.) Petitioner also cites the Examiner’s reasoning during prosecution that “since any oligonucleotide can perform such function, any oligonucleotide is considered to anticipate this term.” (See Pet. 10 (citing Ex. 1013, 77).) Petitioner further cites the specification of the ’357 patent and claims of the ’241 patent, which is a continuation of the ’357 patent, in support of this construction. (See Pet. 9–10 (citing Ex. 1002, 9:43–46 (“appending the adaptor to the nucleic acid fragments generated by methods described herein can be achieved using a ligation reaction or a priming reaction.”) (emphasis omitted); Ex. 1001, claim 10).) Patent Owner does not dispute this construction at this stage, arguing only that the term need not be construed beyond its plain and ordinary meaning and reserving the right to propose constructions and identify terms needing construction later in the proceeding. (See Prelim. Resp. 9.) For the purposes of this decision, we adopt Petitioner’s construction of the term “adaptor,” although we note that it does not affect our decision to institute review. D. Ground I – Anticipation by Porreca” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,098,357 - PTAB · Apr 25, 2025 · IPR2024-01463 · APJ David Cotta · IPR · Institution
The Board instituted inter partes review of claims 1–10 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative). We decline to speculate on how the court may rule on the pending motion to stay. Accordingly, this factor is neutral.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–10 of the ’706 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“TC(220), and ΔRz/Ra are result effective variables and that copper foils having ΔPD, TC(220), and ΔRz/Ra values that meet the values recited in claim 1 have advantageous properties. See, e.g., Ex. 1005 ¶ 45 (Kim ’761, disclosing that preferably the “difference in peak count roughness Rpc between the shiny surface . . . and the matte surface . . . of the electrolytic copper foil . . . is preferably 60 or less” because “when the difference in the peak count roughness Rpc exceeds 60 capacity maintenance of the secondary battery is deteriorated.”);15 Ex. 1007, 3:16–23, 4:14–23 (Cheng, disclosing that the foils of Cheng’s invention have (220) and (311) surfaces that provide increased elongation and that solve a high roughness problem that rendered traditional products unsuitable for use in a lithium ion secondary battery), 10:27–34 (Cheng, disclosing that in the foils of Cheng’s invention “the roughness difference between both sides was extremely small” and thus “it was . . . not easy for the electrolytic copper foil to break or fracture during the charging-discharging cycles and the life of a battery is thus increased”), Tables 3 & 4 (Cheng, disclosing embodiments and comparative examples with TC(220) values meeting the requirements of claim 1); Ex. 1008, 6:36–44 (Wolski, disclosing that “the surface roughness Rz at the matte side of the untreated copper foil of the present invention is the same or smaller than the surface roughness Rz at the shiny side . . . so that the surface treated copper foil . . . becomes more low-profiled . . . whereby it becomes a foil having a large etching factor”), 9:1–29 & Table 2 (Wolski, disclosing 15 Dr. Randall testifies that “Kim ’761’s peak count roughness Rpc corresponds to the peak density PD of the ’706 patent.” Ex. 1003 ¶ 52. At this stage in the proceeding, this testimony is unrebutted. 38 embodiments meeting the ΔRz/Ra of claim 1, describing them as having “matte side roughnesses” that are “sufficiently small,” and as having “excellent” “high temperature elongation characteristics”), 11:37–41 (Wolski, describing comparative examples as having “large” matte side roughnesses “whereby etching factors are not good”), 12:12–27 (Wolski, teaching that “as compared with a conventional untreated copper foil, both surfaces of the untreated copper foil obtained by [Wolski’s] invention are flat” resulting in a low profile foil that has “excellent elongations at room temperature and high temperature and also high tensile strength”). The teachings in the prior art support the presently unrebutted testimony of Dr. Randall explaining why the POSA would have been motivated to modify Kim ’761’s copper foil to have the claimed TC(220) and ΔRz/Ra. Ex. 1003 ¶¶ 66–68, 71–74; Pfizer Inc., v. Sanofi Pasteur Inc., 94 F.4th 1341, 1348 (Fed. Cir. 2024) (“Where [a gap in prior art] includes a parameter not necessarily disclosed in the prior art, it is not improper to consider whether or not it would have been recognized as result-effective. If so, then the optimization of that parameter is ‘normally obvious.’”). Accordingly, we are not persuaded by Patent Owner’s argument that Petitioner failed to articulate a sufficient motivation to combine the references. To the contrary, the preliminary record presents a strong showing that the POSA would have been motivated to combine the references in the manner described in the Petition.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not contest Petitioner’s definition of the level of skill in the art. Prelim. Resp. 4 (“For purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art”). Petitioner’s definition appears to be consistent with the field of the invention reflected in the prior art of record and the disclosure of the ’706 patent. Accordingly, for purposes of this Decision, we adopt Petitioner’s proposed definition of the person of ordinary skill in the art.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,591,706 - Viant Technology LLC v. Intent Iq, LLCInstitutedPTAB · Mar 25, 2025 · IPR2025-00129 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on all challenged claims based on a reasonable likelihood of success and granted Viant’s motion to join the FreeWheel IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 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) (2024). “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.” 37 C.F.R. § 42.108(a) (2024).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the FreeWheel IPR. See Mot. 1, 6. Specifically, Petitioner “challenges the validity of the ’260 patent on identical grounds to those in the FreeWheel IPR. See IPR2024-00422, Paper 2 (March 1, 2024). [Petitioner’s] supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are identical to those presented in the FreeWheel IPR.” Mot. 6. Thus, this inter partes review does not present any ground or matter not already at issue in the FreeWheel IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the FreeWheel IPR petitioner as a party. Mot. 2; see also id. at 7–9. Petitioner states that it “will act as an ‘understudy’ and will not assume an active role unless the FreeWheel IPR Petitioner ceases to participate in the instituted IPR.” Id. at 2. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “joinder will not add any new substantive issues, delay the schedule, burden deponents, or needlessly increase filings, any additional costs on Patent Owner will be minimal.” Id. Petitioner further indicates that the FreeWheel petitioner does not oppose the request joinder. Id. at 1. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the FreeWheel IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 7,861,260 - Viant Technology LLC v. Intent Iq, LLCInstitutedPTAB · Mar 25, 2025 · IPR2025-00128 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on all challenged claims based on a reasonable likelihood of unpatentability and granted Viant’s motion to join the FreeWheel IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 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) (2024). “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.” 37 C.F.R. § 42.108(a) (2024).” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition asserts the same unpatentability grounds on which we instituted review in the FreeWheel IPR. See Mot. 1, 6. Specifically, Petitioner “challenges the validity of the ’260 patent on identical grounds to those in the FreeWheel IPR. See IPR2024-00421, Paper 2 (March 1, 2024). [Petitioner’s] supporting materials―including its supporting expert declaration, exhibits, and exhibit numbering―are identical to those presented in the FreeWheel IPR.” Mot. 6. Thus, this inter partes review does not present any ground or matter not already at issue in the FreeWheel IPR. If joinder is granted, Petitioner anticipates participating in the proceeding in a limited capacity absent termination of the FreeWheel IPR petitioner as a party. Mot. 2; see also id. at 7–9. Petitioner states that it “will act as an ‘understudy’ and will not assume an active role unless the FreeWheel IPR Petitioner ceases to participate in the instituted IPR.” Id. at 2. Because Petitioner expects to participate only in a limited capacity, Petitioner submits that “joinder will not add any new substantive issues, delay the schedule, burden deponents, or needlessly increase filings, any additional costs on Patent Owner will be minimal.” Id. Petitioner further indicates that the FreeWheel petitioner does not oppose the request joinder. Id. at 1. Patent Owner did not file an opposition to the motion for joinder. We agree with Petitioner that joinder with the FreeWheel IPR is appropriate under the circumstances. Accordingly, we grant Petitioner’s Motion for Joinder.” slip op. at 7
NonePatents in suitUS 7,861,260 - PTAB · Mar 13, 2025 · IPR2024-01467 · APJ Michael A Valek · IPR · Institution
Instituted IPR on claims 1–8 and 11–22 based on the §103(a) challenge over Xu-752 and Jones, after finding a reasonable likelihood of success on claims 16–22.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reviewed Petitioner’s showing, we find that it demonstrates a reasonable likelihood that Petitioner will prevail in demonstrating that claim 16 is unpatenable over Xu-752 and Jones. Patent Owner’s arguments in the Preliminary Response are unavailing on the current record. We address those arguments below.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Having reviewed Petitioner’s showing, we find that it demonstrates a reasonable likelihood that Petitioner will prevail in demonstrating that claim 16 is unpatenable over Xu-752 and Jones. Patent Owner’s arguments in the Preliminary Response are unavailing on the current record. We address those arguments below.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We agree with Petitioner that Oka is not cumulative of Jones. Jones discloses an impedance measuring system for measuring the impedance of each well of a multiwell plate. Ex. 1006, code (57). Moreover, Jones clearly teaches that the daughter boards in its system “may be equipped with multiple analog-to-digital converters.” Id. ¶ 18. Oka, in contrast, does not. As Patent Owner acknowledges, “Oka is a planar multielectrode array that 11 Oka et al., “A new planar multielectrode array for extracellular recording: application to hippocampal acute slice,” 93 J. of Neuroscience Methods 61– 67 (1999) (Ex. 1026) (“Oka”). measures via extracellular recording instead of impedance.” Prelim. Resp. 51 n. 10 (emphases added). This is consistent with the applicants’ arguments during prosecution that Oka does not disclose a multiwell plate, plurality of wells, or even measuring cell-substrate impedance. See, e.g., Ex. 1002, 191–193. Moreover, as Petitioner points out, Oka appears to disclose only a single ADC connected to a switch. See Ex. 1026, 63 (Fig. 2); see also Ex. 1002, 188 (applicant urging that “Oka uses a switch to connect the AD-C to different electrodes at different times” and therefore is not performing measurements for individual electrode arrays). Thus, unlike Jones, Oka does not disclose a plurality of ADCs, much less multiple ADCs arranged and operated in parallel such that impedances for multiple wells are measured at a time.12” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of May 2009 “would have had a B.S. in electrical/mechanical/biomedical engineering or biological science, or a related field, and approximately 2 years of relevant experience or equivalent study in systems and methods for bioanalysis of cells.” Pet. 14 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,906,508
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.