- Smaxtec Inc. / Smaxtec Animal Care GmbH v. St Reproductive Technologies, LLCAll claims unpatentablePTAB · Jan 16, 2026 · IPR2024-01067 · APJ Andreas Baltatzis · IPR · Final written decision
Claims 5–7, 9, and 10 are unpatentable: claims 5 and 6 are anticipated by Harvey and Riskey, claim 7 is obvious over Harvey and Rettedal, and claims 9 and 10 are obvious over Harvey and …
RulingsFinal written decision- BurdenNot shown unpatentable
“Considering the entire record, we determine that Petitioner “did not make out its obviousness case in its petition” and its arguments on reply “effectively abandoned its petition in favor of a new argument.” Wasica at 1286. To the extent Petitioner asserts the claims would have been obvious over Harvey and Riskey in the Petition, it does so using a merely conclusory statement that “[t]o the extent Patent Owner alleges that either Harvey or Riskey fails to teach any claim element, that element is provided by the other reference.” See Pet. 42; Wasica at 1286. And, as discussed in our Institution Decision, the Petition at a minimum does not explain what reference is the primary versus second reference, and what elements should be combined to reach the claimed invention. See Sisvel, 82 F.4th at 1364. reference to be modified with Riskey’s bolus and data compression. See Pet. Reply 15–17. Rather than explaining how its original petition was correct, Petitioner’s subsequent arguments amount to an entirely new theory of prima facie obviousness absent from the Petition. See Wasica, 853 F.3d at 1286; see also Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute”). We decline to engage in this new argument. Accordingly, we determine that Petitioner has not met is burden to show that claims 5 and 6 would have been obvious over Harvey and Riskey. G. Asserted Obviousness of Claim 7 over Harvey and Rettedal” slip op. at 54
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Riskey discloses “said sensor signal varies based on a corresponding change in one or more physiological parameters of said ruminant animal” (limitation 5[B]). We find Riskey’s description of temperature sensors to be persuasive evidence on this issue. Riskey discloses sensors for measuring changing animal characteristics, e.g., temperature, over time. Ex. 1005 ¶¶ 35, 44; see also id. ¶¶ 75, 76 (detecting temperature changes). We further credit Dr. Young’s testimony that one skilled in the art would understand that generated sensor signals, e.g., temperature, would change over time, whereby the sensor signal varies based on any corresponding change in the ruminant physiological parameter that the signal represents. Ex. 1002 ¶¶ 84, 85; see Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“This modest flexibility in the rule that ‘anticipation’ requires that every element of the claims appear in a single reference accommodates the reference; that is, where technological facts are known to those in the field of the invention.”). We consider Dr. Kan’s testimony that Riskey is silent as to details about the sensor signal, but are not persuaded because the testimony appears to contradict Riskey’s disclosure of a bolus including sensors for monitoring changes in animal characteristics, generating animal characteristic messages, i.e., signals, and wirelessly transmitting data corresponding to the monitored characteristics. See Ex. 2006 ¶¶ 170–174; Ex. 1005 ¶¶ 25, 63, 67, 68, 75–78, 101. Given Riskey’s express description of monitoring animal characteristics over time, we agree with Petitioner’s argument that Riskey discloses that said sensor signal varies based on changes to the animal’s physiological parameters.” slip op. at 16
- Skill levelSkill level board ownOther
“Petitioner asserts that a person of ordinary skill in the art (“POSA”) as of the claimed priority date would have “had at least a bachelor’s degree in electrical engineering or a related or equivalent field, and three or more years of experience researching, developing, designing and/or evaluating sensor systems for humans or other animals.” Pet. 5 (citing Ex. 1002 ¶ 35) (emphasis added). Patent Owner does not contest Petitioner’s characterization of the level of skill in the art. See PO Resp. 12 (citing Ex. 2006 ¶¶ 19–20). On the entire record, we determine this level of skill, with the exception of the open-ended phrases “at least” and “or more,” which we remove from Petitioner’s proposal, comports with the qualifications a person 5 In the present record, neither party presents arguments or evidence relating to secondary considerations.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc), i.e., as construed in a civil action under 35 U.S.C. § 282(b). See 37 C.F.R. § 42.100(b). Under Phillips, claim terms are afforded “their ordinary and customary meaning.” Id. at 1312. “[T]he ordinary and customary meaning of a claim term 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.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id. Neither party expressly seeks a specific claim construction or definition for any claim term. See Pet. 10; PO Resp. 12. To the extent Patent Owner seeks to interpret claim 7 in view of the Specification, we address that argument in our discussion of claim 7, below. See infra, § III.G.3. For purposes of this Decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). D. Asserted Anticipation of Claims 5 and 6 by Riskey” slip op. at 11
Patent outcomesUS 10,231,644 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,231,644 - Silencerco Weapons Research, LLC v. Huxwrx Safety Co. LLCNo claims unpatentablePTAB · Dec 17, 2025 · IPR2024-01214 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 2, 3, 6, 9, 12–14, 18, and 20 were not shown unpatentable; the motion to amend was granted for substitute claims 23, 26, 27, 29, 30, 32, 33, 37–40, and 42, and denied for …
RulingsFinal written decision- Skill levelSkill level board ownOther
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The ’750 patent states that “the fluid pathway can be a radially serpentine fluid pathway which causes the fluids received in the off axis chamber to flow back and forth around a radius of the off axis chamber,” also using “radially serpentine fluid pathway” to refer to this rotation around the chamber radius “while also traversing a length of the off axis chamber.” Ex. 1001, 4:34–41 (emphasis added). This is the only description of “radially” serpentine flow in the ’750 patent. Notably, the ’750 patent does not use “radially” or “serpentine” to describe a fluid pathway “which causes the fluids to spiral around the central chamber within the off axis chamber along a length of the off axis chamber,” instead referring to such a fluid pathway as a “helical fluid pathway.” Id. at 4:41–44. See CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”); Bd. of Regents of the Univ. of Tex. Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008) (“Different claim terms are presumed to have different meanings.”). Inst. Dec. 11–12. We explained that the flow path depicted above, which is equivalent to that of Figure 14 of the ’750 patent, “flows circumferentially about the central chamber.” Id. at 14. We maintain this interpretation. Stated differently, the depicted flow is around a longitudinal axis of the chamber. See MTA PG 6 (describing the flow path depicted above as “a back and forth flow path around a longitudinal axis of the off axis chamber; that is, a circumferentially serpentine pathway”); see also Ex. 2003 ¶ 40 (Dr. Neitzel describing the flow path depicted above as “a back and forth flow path around a longitudinal axis of the off axis chamber”). The flow is not around a radius of the chamber, which Patent Owner recognizes is required for a flow path to be radially serpentine. See PO Resp. 10 (“Patent Owner agrees with the Board’s conclusion in the [Institution Decision] that ‘radially serpentine’ as recited in the claims of the ’750 patent means a back and forth flow around a radius of the off axis chamber.” (citation modified)); PO Sur-reply 2 (agreeing that “radially serpentine” requires “a back and forth flow around a radius of the off axis chamber”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We agree with Patent Owner that neither Petitioner nor its witness, Mr. Nixon, has explained adequately how Thurler’s disclosure of its tube e being perforated for two thirds of its length “contemplates other lengths of perforations.” See Pet. 48; Ex. 1013 ¶ 212. Such conclusory assertions fail to apprise us of why an ordinarily skilled artisan would have been motivated to modify Thurler’s device in contradiction to Thurler’s explicit disclosure. We are also not persuaded by Petitioner’s proffered reasoning for modifying Thurler’s device. First, the modification is not a matter of design choice because the perforations allow the gases generated by firing the projectile to pass into the space between tubes e and g where they partially expand. See Ex. 1015, 1:84–91. Thus, modifying the number of perforations necessarily affects the flow of gases through the device. Next, neither Petitioner nor Mr. Nixon explains adequately how reducing the amount of perforation in tube e results in an increased fluid length. See Pet. 49; Ex. 1013 ¶ 213. Rather, although less fluid may enter into tube e with Petitioner’s modification, it appears that that fluid would travel the same distance along tubes e and h as in Thurler’s unmodified device. Finally, neither Petitioner nor Mr. Nixon explains adequately how limiting the amount of gases generated by firing the projectile from entering the expansion zones of tubes g and h provides any benefit. To the contrary, limiting the amount of gases in the manner suggested by Petitioner would reduce the suppression of such gases, resulting in a less effective device. Moreover, Thurler discloses that “there is still a space of a few millimeters between [tubes] e and g which is necessary” to prevent the application of “pressure on the projectile causing the same to deviate.” Ex. 1015, 1:106–2:3. Thus, Petitioner’s modification would not result in the passage of gases occurring only at the first three of Thurler’s tubular sleeves as asserted by Petitioner. Additionally, in the Institution Decision, we explained that Petitioner did not provide adequate reasoning to support the proposed modification of Thurler’s device regarding parent claim 1 to have concentric tubes around the central tube e. See Inst. Dec. 29–31. This shortcoming, which we maintain, carries through to dependent claim 6. Accordingly, for the foregoing reasons, Petitioner has not shown, by a” slip op. at 26
- ScopeMotion to amend granted in partGranted in part
“We agree with Petitioner that the amendment is broadening. Petitioner’s witness testified that he “wouldn’t call a BB gun a high energy device or a high energy weapon.” Paper 33, 18:4–6. Thus, per Petitioner’s witness, use of a BB gun would not be covered by claim 22, no matter what is discharged from the BB gun. However, if high energy material is discharged from that same BB gun, that use would be covered by proposed substitute claim 43 (assuming the other claim recitations were met). See id. at 21:10–12 (Dr. Neitzel agreeing that “if something produces a high energy material, it automatically is a high energy weapon”). Thus, by deleting “high energy device” and replacing that language with “weapon,” proposed substitute claim 43 impermissibly broadens the scope of claim 22. See Sisvel Int'l S.A. v. Sierra Wireless, Inc., 81 F.4th 1231, 1241 (Fed. Cir. 2023) (“But if a substitute claim ‘is broader in any respect it is considered to be broader than the original claim even though it may be narrower in other respects.’” (citation modified) (quoting Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999))); see also Lectrosonics, Paper 15 at 6 (“A patent owner may not seek to broaden a challenged claim in any respect that enlarges the scope of the claims of the patent . . . . Likewise, a proposed substitute claim may not remove a feature of the claim in a manner that broadens the scope of the claims of the challenged patent.”).” slip op. at 45
Patent outcomesUS 8,286,750 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,286,750 - Smaxtec Inc. / Smaxtec Animal Care GmbH v. St Reproductive Technologies, LLCAll claims unpatentablePTAB · Nov 20, 2025 · IPR2024-00885 · APJ Jamie T Wisz · IPR · Final written decision
Claims 1–4 and 15–25 are unpatentable: claims 1–2 are anticipated by Trevarthen, and the challenged claims are also obvious over the listed combinations.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner”) filed a Petition requesting an inter partes review of claims 1–4 and 15–25 (the “challenged claims”) of U.S. Patent No. 8,823,515 B2 (Ex. 1001, “the ’515 patent”). Paper 1 (“Pet.”). ST Reproductive Technologies, LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 10, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-Reply (Paper 13, “Prelim. Sur-Reply”). Upon consideration of these filings and the preliminary evidence of record, we determined that Petitioner had demonstrated a reasonable likelihood that it would prevail with respect to at least one of the challenged claims of the ’515 patent (Paper 16, “Institution Decision” or “Inst. Dec.”). Thus, we instituted review with respect to all of the challenged claims. slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“statistics in the absence of evidence of unique downloads or individuals. Even if the download numbers do not exactly represent unique downloads by unique individuals, the evidence shows that Trevarthen was downloaded, and therefore distributed, prior to the filing date of the ’515 patent. Accordingly, we find this evidence weighs in favor of Trevarthen’s public accessibility.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“retrieves sensed animal temperature information from the RFID device” and “further teaches that these temperature measurements are analyzed to detect ‘fluctuations,’ ‘a rise,’ and/or ‘anomalies’ that might indicate illness or oestrus.” Id. at 16 (citing Ex. 1005, 121–122). Accordingly, Petitioner asserts that a “POSA would understand that to perform such analysis, the animal temperature information for each animal is necessarily stored in the” slip op. at 36
- ExcludeMotion to exclude, deniedOther
“Patent Owner moves to exclude Exhibits 1040, 1041, and 1044. Paper 36. We do not rely on any of Exhibits 1040, 1041, and 1044 to decide this matter. Thus we dismiss Patent Owner’s motion to exclude as moot.” slip op. at 82
Patent outcomesUS 8,823,515 unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,823,515 - PTAB · Sep 19, 2025 · PGR2025-00025 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–19 and all asserted grounds, finding it more likely than not that claim 1 is anticipated by the Gatorade Label.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’422 Patent is eligible for post-grant review and has shown it is more likely than not that at least one challenged claim of the ’422 Patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’422 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would possess at least (1) a Bachelor’s degree in chemistry or a related field, with (2) five years of experience in material identification and characterization using multiple analytical methods and field sampling, or equivalent research or professional experience.” Pet. 12 (citing Ex. 1014 ¶ 24). Patent Owner does not dispute Petitioner’s definition for one of ordinary skill in the art nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposal regarding the level of one of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“336. The applicant explained that not all combinations of shrink films and light blocking materials are recyclable. Id. at 335. The applicant explained that films can be compatible with PET recycling in two ways, (1) the film can float in water and be separated from PET that sinks in water or (2) the PET films crystallize and “can be recovered with the PET stream.” Id. at 336 (citing “A Resource Document by the Association of Plastic Recyclers (APR)”) (found at Ex. 1002, 323–332) (emphasis omitted). The applicant explained that “removing the label before or during the recycling process is not evidence of the recyclability of the label” and that “[r]emoving the label during the recycling process is not equivalent to actually recycling the label.” Id. at 335. As such, a POSITA reading the prosecution history would understand that a label is not recyclable with a PET container, as recited by the independent claims, by removing the label from the PET recycle stream before or during the recycling process.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“To determine how a person skill in the art would determine if a shrink label is “recyclable” as recited in the independent claims, we look to how the Specification of the ’422 Patent describes or defines recyclable shrink labels. For example, the ’422 Patent states that PET shrink films are generally considered recyclable if no inks are retained on the film after a caustic wash cycle typically used in PET reclaiming processes. Ex. 1001, 6:61–65. The ’422 Patent further states that labels are fully recyclable if the polymers used are clear, preferably clear PET, and the labels include inks that can be washed off in a “typical PET recycling wash (caustic wash).” Id. at 11:44– 49; see also id. at 11:49–54 (describing embodiments in which the labels are free or substantially free of inks that cannot be washed off in a caustic wash or where the labels are free or substantially free of color plastics that cannot be recycled). The ’422 Patent further discusses “industry standards” for determining whether various embodiments of shrink labels are recyclable. See, e.g., id. at 11:29–53. For example, the Specification states that the “Association for Plastic Recyclers (APR) Critical Guidance Protocol for Clear PET Articles with Labels and Closures (PET-CG-02)” (Ex. 1005) can certify that a film is fully recyclable with a container or bottle. Id. at 11:34– 38. Additionally, the Specification states that labels “are recyclable according to the Evaluation of the Near Infrared (NIR) Sorting Potential of a Whole Plastic Article (SORT-B-01)” (Ex. 1010) and/or the “Evaluation of Sorting Potential for Plastic Articles Utilizing Metal, Metalized, or Metallic Printed Components (SORT-B-03)” (Ex. 1011). Ex. 1001, 11:39–44. The ’422 Patent further states that embodiments of the labels “are fully recyclable. For example, the labels may include inks that can be washed off in a typical PET recycling wash (caustic wash) and the polymers” are preferably clear PET. Id. at 11:44–48. The ’422 Patent thus provides various descriptions or standards to determine the recyclability of shrink labels. For the purposes of addressing the anticipation and obviousness grounds, we determine that any of these standards can be used to determine if a shrink label is “recyclable.” We note that our construction is preliminary and is based on the present record. We invite the parties to further the address the construction of “wherein the recyclable shrink label is recyclable with a PET container” during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 11,961,422 - Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.All claims unpatentablePTAB · Apr 11, 2025 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1–5, 7, and 9–14 are unpatentable as obvious over Cohen and Legein or Francesch and Legein; Petitioner’s motion to strike is denied as moot.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“The parties agree that a person of ordinary skill in the art in the field of the ’087 patent in June 20154 “would have had at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29); PO Resp. 13 (Patent Owner stating that it “does not dispute this characterization of the level of ordinary skill in the art.”); see also PO Sur-reply 1–2 (noting both parties’ agreement on the education and experience level of the ordinarily skilled artisan).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the fully developed trial record, we determine that no claims need an express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to 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 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Because of Patent Owner’s shifting definitions of the education and experience level of the ordinarily skilled artisan, it is unclear on the complete record what precise definition Patent Owner and Dr. Senkevitch are applying when arguing the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13; Ex. 2007 ¶¶ 30, 31, 33, 34, 37, 40, 52–55, 60, 68, 74, 76, 77, 80–86, 89, 91, 94, 95, 100, 102–105, 108, 110, 111, 113–116, 118–120, 122, 124, 127–134. We, therefore, give Dr. Senkevitch’s testimony regarding the capabilities of a person of ordinary skill in the art minimal weight, which leaves us with Patent Owner’s insufficiently supported arguments regarding the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13. Moreover, as Petitioner correctly points out, the ʼ087 patent expressly teaches that the precise conditions for forming a protective polymeric coating “will vary depending upon factors such as, without limitation, the nature of the monomer compound, the crosslinking agent, the substrate, as well as the desired properties of the coating” and that such “conditions can be determined using routine methods.” Ex. 1001 15:1–15:5 (emphasis added); Pet. Reply 17. Where the patent itself leaves to the judgment of an ordinarily skilled artisan the assessment of these factors to ascertain suitable conditions for forming the protective coating, we find persuasive Petitioner’s view that it would have been well within the level of ordinary skill to ascertain such suitable conditions.” slip op. at 20
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We disagree with Patent Owner. Although the claims of the ʼ087 patent recite obtaining the protective cross-linked polymeric coating “by exposing the device or component to a plasma,” the field of endeavor analysis in an analogous art inquiry does not exclusively turn on the claims at issue, but rather takes account of the entirety of a patent’s disclosure. See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (explaining that “the PTO must show adequate support for its findings on the scope of the field of endeavor in the application’s written description and claims” (emphasis added)); In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (rejecting an argument that the field of endeavor was limited to a claimed “Internet terminal” when “the specification describes various communication media, including facsimile machines and email, as related to the invention.”). This is significant here because the ʼ087 patent discloses that “[t]he … invention relates to protective coatings” and specifically “relates to protective coatings for electronic or electrical devices and components thereof, and methods of forming such coatings.” Ex. 1001, 1:14–17. Based on this disclosure, we find that the ʼ087 patent’s field of endeavor relates to “protective coatings for electronic or electrical devices and components thereof” broadly, not just those formed on such devices or components via a plasma polymerization process as asserted by Patent Owner. Id. Although Cohen does not explicitly disclose that its crosslinked polymers constitute a “protective coating,” Cohen does disclose that its “copolymerizable mixture can be cast into films” (Ex. 1004, 2:61–62), that the polymerization can “effected in situ,” and that the polymers may be used in “numerous” electrical applications (id. at 5:17–25). Tr. 8:9–10:2, 27:2– 21; see Pet. Reply 5 (explaining how “Cohen described insulating polymers that could be applied as films and be used to protect substrates including cables and electrical coils.” (citing Ex. 1004, 2:60–63, 5:13–25)). These disclosures suggest strongly that Cohen’s crosslinked polymers––if cast into a film or formed in situ on an electrical device or component––would serve as a protective coating on that electrical device or component, even though Cohen does not expressly refer to its crosslinked polymers ipsis verbis as a “protective coating.” Thus, we find that Cohen is within the field of endeavor of the ʼ087 patent.” slip op. at 15
Patent outcomesUS 11,041,087 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,041,087 - Apple Inc. v. Haptic, Inc.Institution deniedPTAB · Apr 4, 2025 · IPR2024-01476 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution of review of claims 3, 6, 7, 12, and 13, exercising § 314(a) discretion under Fintiv after balancing the parallel litigation factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“prejudice to renewal if the PTAB institutes IPR review.” Ex. 2023, 6. A stay denial without prejudice to renew if a PTAB trial is instituted “usually weigh[s] against exercising authority to deny institution.” Fintiv, Paper 11 at 7. But “proximity of the court’s trial date and investment of time are relevant to how much weight to give to the court’s willingness to reconsider a stay.” Id. Although the District Court denied a stay pending the Board’s decision, the court also identified the proximity of the trial date and litigation investment as significant factors in its initial denial of the requested stay. See Ex. 2023, 6. Thus the evidence is inconclusive as to whether or not the District Court would stay the case if we granted institution at this time. Absent a clear indication from the District Court, we decline to predict whether a stay would be granted.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundOther
“a sensor in a fixed position relative to a sensing surface to provide a fixed reference point for accurate detection of vibratory signals”), 171 (“the sensor is held in a particular position within the housing and relative to the surface that the housing is mounted to”). Stewart teaches the opposite: a sensor that is vibrated inside a housing to measure rotational movement. Ex. 1006, 5:54–56, 6:5–10, 6:20–31; Ex. 2001 ¶¶ 100, 133, 138. Thus, Stewart’s sensor is flexibly suspended with brackets inside the housing to allow movement and minimize transmission of vibrations from the surface to the sensor. Ex. 1006, 5:7–24, 7:61–64; Ex. 2001 ¶ 102. Petitioner combines Murakoshi with Stewart’s brackets and case mounts to fix the sensor to prevent it from moving within the housing and thus enable the sensor to detect vibrations from outside the housing. See Pet. 24, 33–36. But Stewart’s teachings undermine the very reason proffered by Petitioner, because Stewart’s sensor is movably suspended within the housing so that it does not detect vibrations from outside the housing. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (“An inference of nonobviousness is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundOther
“Likewise, we find a significant weakness in Petitioner’s argument for a reasonable expectation of success in the combination. “The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). Claim 1 requires “said sensor being in a fixed position portion” that “set[s] a rigid position of said sensor relative to said mounting surface” (limitation 1e). As discussed above, neither Murakoshi nor Stewart appear to teach a sensor in a fixed position relative to said engagement means or a rigid position relative to said mounting portion. Accordingly, even if Murakoshi’s and Stewart’s teachings were to be combined, the combined teachings would not appear to meet the limitations of the claimed invention.” slip op. at 14
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,996,738 - Uipath, Inc. v. Rule 14 LLCInstitution deniedPTAB · Mar 14, 2025 · IPR2024-01306 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, failing to support its proposed obviousness combinations with a reason to combine.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). slip op. at 6
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Further, as Patent Owner notes, Petitioner’s declarant testimony is identical to the Petition and does not cite to any evidence either in the asserted references or other documents to support a reason to combine the references. See, e.g., Ex. 1004 ¶¶ 80, 93. In brief, “[t]he declaration does not Srivastava] determines that the feature in question was required or would have been obvious based on the prior art disclosure.” Xerox, IPR2022- 00624, Paper 12 at 5. Accordingly, we give little weight to Petitioner’s declarant testimony because the declaration merely offers conclusory assertions without underlying factual support and repeats, verbatim, Petitioner’s conclusory arguments. Id.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of database searching techniques.” Pet. 14 (citing Ex. 1004 ¶ 28). Patent Owner’s declarant adopts Petitioner’s definition of the level of ordinary skill in the art. See Ex. 2001 ¶ 6. For the purposes of this Decision, we adopt Petitioner’s formulation for a person of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’712 patent. See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985) (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”).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner notifies the Board of two terms being disputed in the co-pending litigation: (1) “expanding search terms of the query,” and (2) “accuracy threshold.” Pet. 12–15. For each term, Petitioner contends the “Board need not resolve” or address the dispute. See id. Patent Owner does not address claim construction. See generally Prelim. Resp. We agree with Petitioner that we need not resolve the claim construction disputes from the co-pending litigation. Accordingly, we need not construe explicitly any claim terms because no such construction is necessary to determine whether to institute. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,048,712 - Uipath, Inc. v. Rule 14 LLCInstitution deniedPTAB · Mar 14, 2025 · IPR2024-01304 · APJ Andreas Baltatzis · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, chiefly because it failed to establish motivation to combine the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Furthermore, Petitioner must explain with particularity how the prior art would have rendered the challenged claims unpatentable. 35 U.S.C. § 312(a)(3); 37 C.F.R. § 42.104(b)(4) (“The petition must specify where each element of the claim is found in the prior art patents or printed publications relied upon.”). slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Our reviewing court has emphasized that the “motivation-to-combine analysis is a flexible one.” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023). And it is well-established that “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 420. Despite this flexible standard, our reviewing court cautions that “‘a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine’ because ‘[t]his type of finding, without more, tracks the ex post reasoning KSR warned of and fails to identify any actual reason why a skilled artisan would have combined the elements in the manner Cir. 2019) (quoting In re Van Os, 844 F.3d 1359, 1361–62 (Fed. Cir. 2017)); see also TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (“Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’”).” slip op. at 18
- Expert testimonyPetitioner expert discountedDecided for patent owner
“identical to the Petition and does not cite to any evidence either in the asserted references or other documents to support a reason to combine the references. See, e.g., Ex. 1003 ¶¶ 70, 71. In brief, “[t]he declaration does not provide any technical detail, explanation, or statements supporting why [Dr. Srivastava] determines that the feature in question was required or would have been obvious based on the prior art disclosure.” Xerox, Paper 12, 5. Accordingly, we give little weight to Petitioner’s declarant testimony because the declaration merely offers conclusory assertions without underlying factual support and repeats, verbatim, Petitioner’s conclusory arguments. Id.” slip op. at 20
- Skill levelSkill level petitioner adoptedOther
“Petitioner argues that one of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, “would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of database searching techniques.” Pet. 15 (citing Ex. 1003 ¶ 26). Patent Owner does not address the definition of a person of ordinary skill in the art. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s formulation for a person of ordinary skill in the art, which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’977 patent. See Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985) (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”).” slip op. at 7
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,229,977 - Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentablePTAB · Feb 28, 2025 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Remand
Claims 13, 14, and 17–27 were not shown unpatentable because Tennant did not establish that Wikey or Davies inherently disclosed the claimed microbubbles and nanobubbles.
RulingsRemand decision- RemandOther
“The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11. On September 19, 2024, we authorized the parties to file supplemental briefing, stating also that the “parties are not authorized to present new factual assertions, provide additional exhibits, or raise new arguments beyond those directed to the issues raised in the remand.” Ex. 3001. Pursuant to this authorization, Petitioner filed an Opening Brief on Remand (Paper 61; “Pet. Br. Rem.”) in support of its contentions. Patent Owner filed a Lead Brief on Remand (Paper 62; “PO Br. Rem.”) in support of its contentions. Petitioner filed a Reply Brief on Remand (Paper 66; “Pet. Reply Br. Rem.”). Patent Owner filed a Responsive Brief on Remand (Paper 65; “PO Resp. Br. Rem.”).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Accordingly, and in line with our previous determination that “Wikey appears to disclose each limitation of claim 13 except ‘microbubbles and nanobubbles having a bubble diameter of less than 50 microns’” (Final Dec. 20), we determine that Petitioner has not demonstrated that Wikey inherently discloses microbubbles or nanobubbles. Accordingly, Petitioner has not demonstrated that Wikey discloses every limitation of claim 13.” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11.” slip op. at 3
Patent outcomesUS RE45,415 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - PTAB · Feb 19, 2025 · IPR2024-01230 · APJ Andreas Baltatzis · IPR · Institution
The Board instituted IPR on claims 1–5 for all asserted grounds after finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“discretionary denial under § 325(d). The Notice Regarding Amendment Options explains that the Board may deny institution under § 325(d) of a requested AIA trial proceeding if a parallel Office proceeding, for example, is in a more advanced stage and involves overlapping issues with the proposed AIA trial proceeding. 84 Fed. Reg. at 16,657 (emphasis added). We find that the EPR is not in a more advanced stage as compared to this proceeding, and therefore does not weigh in favor of the Board exercising discretion to deny institution, despite its overlapping issues with those in the Petition.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review to be instituted unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim challenged in the Petition. Accordingly, we institute an inter partes review of claims 1–5 of the ’336 patent, based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“the art.7 On consideration of the record, specifically the patent and cited prior art, we find Petitioner’s proposed educational levels and subject matter (bachelor’s degree in electrical or mechanical engineering) more appropriate. Specifically, Patent Owner’s reference to a degree in computer science does not appear relevant to the claimed electro-mechanical device. We find Patent Owner’s proposed hands-on experience more persuasive as Petitioner’s definition is too vague (“generally familiar”) to assist our determination. On this record and for the purposes of institution, we find that a person of ordinary skill in the art relevant to the challenged claims, as of the earliest claimed priority date, would have a bachelor’s degree (or equivalent) in electrical engineering or mechanical engineering, and would have two years of experience in designing and/or implementing hardware components for computers, servers, and/or other electronic devices. We further determine that more experience could compensate for the absence of a bachelor’s degree. The level of skill is reflected by the testimony of the parties’ declarants and the prior art of record.” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We determine that the plain meaning of claim 1 supports Patent Owner’s interpretation. Claim 1 recites a body, provided with a fan in center of the body, an illumination area on at least two sides of the fan at top of the body, a power socket and a first connector on one side of the body, and a second connector on another side of the body . . . such that when the power socket on the one side of the body is supplied with power, the fan and the illumination area of the body are respectively driven into rotation and illumination . . . Ex. 1001, 4:5–9 (emphasis added). Claim 1 expressly recites three body locations: “the top of the body,” “one side of the body,” and “another side of the body.” Id. “A power socket and a first connector” are listed together in the same clause “on one side of the body.” Id. The plain language of the claim further supports that “one side of the body” includes both power socket and first connector, as the limitation is repeated later in the claim: “the power socket on the one side of the body.” See id. at 4:12 (emphasis added). The location of the second connector is defined in relation to the one side with the first connector. See id. at 4:5–9. Accordingly, the plain meaning of claim 1 defines three sides of the claimed body, a top of the body (with an illumination area on two sides of the fan), one side of the body with a power socket and a first connector, and another side of the body with a second connector. See id. For purposes of this Decision, we determine that no other claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly necessary to resolve the controversy.”)).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,690,336
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.