- Shenzhen Tuozhu Technology Co., Ltd. v. Stratasys, Inc.All claims unpatentablePTAB · Sep 28, 2026 · IPR2025-00611 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–10, 12, 13, 19, and 20 are unpatentable under § 103 over the stated Douglas–Mark and Hamilton-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that experience could substitute for a degree, and vice versa. Pet. 3; PO Resp. 10. The parties’ proposed levels of ordinary skill are substantially similar. For this decision, as in the Institution Decision, we adopt Petitioner’s proposed level, which is supported by credible testimonial evidence and is consistent with the problems addressed in the ’774 patent. See Ex. 1001, 1:16–52. Our decision would be the same, however, if we were to adopt Patent Owner’s proposal.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“Neither Petitioner nor Patent Owner argues that we need to construe any claim terms explicitly. See Pet. 2–3; PO Resp. 10. However, the parties contest two material claim-construction issues which we address below. To the extent that the parties’ positions depend on interpreting other claim language in a particular way, we discuss the relevant claim language below in the context of the parties’ arguments regarding the prior art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We disagree with Patent Owner that a person of ordinary skill in the art would have understood that limitation 1.2 must be performed before limitations 1.3 or 1.4. See Ex. 1001, 35:21–24. See Interactive Gift Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of a method actually recite an order, the steps are not ordinarily construed to require one.” (citing Loral Fairchild Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999)). The evidence suggests that a “target printer” is any printer that is ultimately selected for fabricating the object, and such a printer could send its configuration information either before or after that determination is made in limitation 1.2. This interpretation does not render the word “target” meaningless. At some point, a printer must be determined to be the target printer, which is the one intended to ultimately fabricate the three-dimensional object. But the target printer still exists, and is capable of being queried, before that determination is made. We find the examples in the ’774 patent pertinent to this question. The ’774 patent states that “the target printer may include more than one printer.” Ex. 1001, 18:66–67. In discussing the step of “query target printer for properties 306” (Fig. 3A), the ’774 patent states that “[i]n one aspect, numerous queries are sent to numerous printers, e.g., for use in selecting one or more of the printers as the target printer.” Id. at 19:8–10. Alternatively, “the query is sent to a printer that is not necessarily the target printer as described herein, e.g., when the query or information received from a response to the query is used for the selection of the target printer.” Id. at 19:11–14. Importantly, the second embodiment states that the queried printer “is not necessarily the target printer,” suggesting that the queried printer could be the target printer even before it is determined to be such. Id. at 19:11–12 (emphasis added). Based on the evidence of record, a person of ordinary skill in the art would have understood that the “target printer” can be determined after the query recited in limitation 1.3 or the reception of configuration information recited in limitation 1.4. Thus, the evidence does not impose an ordering between limitations 1.2 and 1.3 or between limitations 1.2 and 1.4. The evidence also does not support Patent Owner’s argument that the two reverse-order examples in the ’774 patent are unclaimed embodiments.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation foundDecided for petitioner
“We disagree that Petitioner’s arguments are based on impermissible hindsight, because they are based on the disclosures in Douglas and Mark, and Petitioner has articulated a persuasive reason to combine those references without referring to the ’774 patent itself, as we discuss below. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (an obvious rationale is not improper hindsight if it “takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure”).” slip op. at 29
Patent outcomesUS 11,886,774 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,886,774 - Microsoft Corporation v. X1 Discovery, Inc.No claims unpatentablePTAB · Jun 18, 2026 · IPR2025-00254 · APJ Lisa A Murray · IPR · Final written decision
Claims 1–20 were not shown unpatentable under either §103 ground because Petitioner failed to establish motivation to combine and a reasonable expectation of success.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. In our Decision on Institution, we adopted Mr. Haeberli’s formulation, finding it to be consistent with the evidence then of record, including the asserted prior art and the ’490 patent. Dec. 9. Following a review of the full record, we agree with Mr. Haeberli’s statement that Petitioner’s definition of one of ordinary skill in the art is “not meaningfully different” from Mr. Haeberli’s for the purposes of this proceeding. We continue to view Mr. Haeberli’s proposed definition as consistent with the ’490 patent and the asserted prior art, and we apply it in our analysis below. However, our analysis of the issues below would have been the same had we instead adopted Petitioner’s proposed definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our Decision on Institution, the only term that we found it necessary to construe was the term “string separator character” in claim 1. We preliminarily construed this term to mean “a single-character string separator.” Dec. 11, 30–31. We invited the parties to address the appropriateness of this construction over the course of the trial. Id. at 11, 31. In its briefing, Patent Owner agrees with the Board’s preliminary construction, arguing that it is “consistent with the intrinsic evidence.” PO Resp. 8 (citing Ex. 1001, claims 8 and 20). Patent Owner further argues that a person of ordinary skill would have understood a multi-character Boolean operator such as “AND” to be “a search syntax instruction rather than a string separator.” Id. at 9 (citing Ex. 1059, 162; Ex. 2001 ¶ 112). Petitioner’s Reply Brief does not address the issue of claim construction. See generally Reply Br.; see also Pet. 11 (“Unless otherwise noted, Petitioner applies the plain and ordinary meaning of all claim terms below.”). Following our review of the full record, we determine that it is not necessary to construe this or any other claim term for the purposes of this Decision.2 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy.). In our analysis below, we interpret the language of the claims according to its plain and ordinary meaning.” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“Having reviewed the evidence of record, we find Mr. Haeberli’s testimony to be more persuasive and better supported by the evidence. According to Dr. Terveen, “[r]obust programming languages such as C and C++, together with well-developed operating system and UI frameworks, . . . allowed an ordinary programmer to build a UI that supported incremental searching, as evidenced by the numerous prior art systems that implemented such functionality, including Entourage, Eudora, Emacs, Canon Cat, SwyftWare, and others. Ex. 1100 ¶ 43 (citing Ex. 1004, 8–9, 161; Ex. 1021, 125, 127, 129; Ex. 1039, 102–103; Ex. 1043, 385–389). The relevant question, though, is not whether it would have been possible to build a user interface that supported incremental search, but whether it would have been “simple and straightforward” to execute an incremental search of multiple partial search strings on large, indexed multi-file databases such as those described in the Lotus Notes references, as Dr. Terveen alleges. None of the prior art discussed in the “State of the Art” section of Dr. Terveen’s initial declaration, taken individually or together, discloses incrementally searching a plurality of files using two partial search strings. See Ex. 1003 ¶¶ 32–33, 37, 40; Ex. 2001 ¶ 100. Thus, creating a user interface might be “simple,” but the evidence suggests that the back-end execution of an incremental search is not. See, e.g., Ex. 1021, 126 (Raskin, concluding that “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“different approach from that taken in Lotus Notes. The difference between Raskin’s sequential scanning method and the index-based system described in Wilcox is that sequential scanning by definition can only scan one document at a time as each document is loaded into a “buffer.” See, e.g., Ex. 2020 ¶ 35. Lotus Notes, however, only needs to load the index into memory for a user to be able to locate the single index entry identifying all instances of an indexed term across all indexed files. In fact, Raskin acknowledges that indexing may be necessary to maintain an acceptable response time. Ex. 1021, 132 n.10; see also id. at 129 (indexing speeds search times). Mr. Haeberli’s third and final reason for concluding that one of ordinary skill would not have been motivated to combine Raskin’s incremental search with Lotus Notes is that at the time using incremental searches would have presented “extreme technical difficulties.” Ex. 2001 ¶ 101. Here again we find Mr. Haeberli’s explanation more persuasive than Dr. Terveen’s opinion that combining the teachings from Raskin with Lotus Notes’ teachings “would have required only simple and straightforward software modifications.” Ex. 1003 ¶ 80. According to Mr. Haeberli, “there are serious technical challenges with implementing the complex search strategies of the challenged claims in the systems on which Dr. Terveen relies.” Id. ¶ 96. As Patent Owner argues: searching across a set of files to find specific files requires the system to identify which files are in the set, access those files (which are often not loaded in active memory), search their contents, determine which files contain matches to search criteria, and then present results to the user; all tasks that do not exist in the same way (or at all) for a search confined to text in a single open file already loaded into memory. Sur-Reply 9; see Ex. 2020 ¶¶ 15, 35–36. There would have been other challenges as well. For example, “[t]he type of sequential scanning typically employed to search a single open document is very time and resource intensive if employed to search a large set of documents.” Ex. 2020 ¶ 15. Also, “[i]mplementing incremental search in the Lotus Notes indexed system would necessarily require a larger index, which would slow down, rather than increase the search speed.” PO Resp. 23; see Ex. 2020 ¶ 33. Finally, Raskin itself concludes that “even if incremental searching is advantageous, ‘almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.’” Ex. 2001 ¶ 96 (emphasis added by Mr. Haeberli) (quoting Ex. 1021, 126). In short, Mr. Haeberli presents three significant reasons why there would have been no motivation or expectation of success in combining the teachings of Wilcox with those of Raskin. Dr. Terveen’s opinion to the contrary, on the other hand, is not supported by evidence. Dr. Terveen testifies that “[a] POSITA would have been motivated to perform Lotus Notes’ multi-string search incrementally for the reasons stated by Raskin: speed, effectiveness, and ease of use.” Ex. 1003 ¶ 78 (citing Ex. 1021 ¶¶ 125–127). The evidence, however, not only fails to support Dr. Terveen’s testimony, but also demonstrates that one attempting to make the proposed combination would not have reasonably expected the proposed combination to result in greater speed or effectiveness.” slip op. at 27
Patent outcomesUS 10,552,490 not shown unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,552,490 - Runergy Alabama Inc. / Runergy USA Inc. et al. v. Trina Solar Co., Ltd.All claims unpatentablePTAB · Apr 15, 2026 · IPR2025-00186 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable under § 103 over Chang and Jin; the Board found the combination disclosed the claimed isolation portion and supported the challenged claims.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have been someone with an advanced degree involving the disciplines of electrical engineering, applied physics, chemistry, or materials science, and at least two years of experience designing, developing, or researching in the field. Alternatively, that person would have had a bachelor’s degree in electrical engineering, applied physics, or materials science, and at least three years of experience designing, developing, or researching in the field. Pet. 4 (citing Ex. 1003 ¶ 49). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp; Sur-reply. In light of the complete trial record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’104 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’104 patent and the prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“C. Claim Construction 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); 37 C.F.R. § 42.100(b). Under Phillips, we give claim terms “their ordinary and customary meaning.” Phillips, 415 F.3d 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. Petitioner contends that “[n]o claim construction is believed to be necessary to resolve this Petition.” Pet. 23. And, Patent Owner does not address claim construction. See generally PO Resp. As neither party proposes an express construction for our consideration and because we determine that an express claim construction is not necessary for us to render a decision in this matter, we do not construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 10
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“edge and offers little explanation of why the skilled artisan would apply Jin’s gap- T isolation region to both of Feldmann’s polysilicon and tunnel oxide layers. As noted above, Petitioner states that the skilled artisan would have included Jin’s gap-T isolation region in order to prevent shorting. Pet. 25. Petitioner’s reasoning is questionable—supported only by the conclusory testimony of Dr. Banerjee. Dr. Banerjee’s testimony offers no more evidentiary support than provided in the Petition. Compare Ex. 1003 ¶ 113, with Pet. 25. Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” Magnum Oil, 829 F.3d at 1380. We acknowledge Dr. Banerjee’s testimony that the combination of Jin’s gap-T isolation region would prevent shorting and that extending the tunnel oxide layer the edge “could trap impurities and create negative fixed oxide charges, which could then create a p-type inversion in the n-type base substrate, leading to a leakage path to the p-type emitter on the front of the solar cell” (Ex. 1003 ¶ 113 (emphasis added)) but are not convinced by his equivocal testimony. Notably too, neither Jin nor Feldmann discuss issues relating to trapped impurities and Petitioner, as well as Dr. Banerjee, fail to direct our attention to any record evidence to support their contentions. Rather, we are persuaded by Dr. Peckerar’s testimony that as a general rule in semiconductor process technology, a bare silicon surface should not be left unpassivated after processing. Elemental silicon is highly chemically reactive. As such, the bare surface is a “magnet” for defects and contamination. Leaving the tunnel oxide in place across the entire substrate backside would reduce this problem. Ex. 2001 ¶ 142. Dr. Peckerar further explains that a person of ordinary skill in the art would have known how to avoid shorting and leakage. In particular, he testifies that the manner by which charge is transported through a tunnel oxide can be controlled by adjusting manufacturing parameters such as time, temperature, thickness, and ambient impurities. A POSITA would plainly have adjusted these parameters to ensure that the tunnel oxide operates as intended (i.e., minimizes recombinant losses while transporting charge carriers to the backside of the solar cell) while avoiding undesirable leakage current. Because unwanted leakage charge can be avoided via other means during manufacture, there would have been no reason to reduce the physical extent of the tunnel oxide. Ex. 2001 ¶ 152 (referring to Ex. 2001 ¶¶ 149–151). Moreover, Dr. Peckerar testifies that “Dr. Banerjee also appears to be arguing that incorporation of impurities into the oxide will produce a MOSFET-like structure, with the contaminated oxide acting as a MOS gate leading to enhanced leakage,” but, for that to occur, “the source and drain areas would need to be of the same type.” Ex. 2001 ¶ 159. Here however, “the tunnel oxide layer is located between an n-type polysilicon layer and p-type frontside emitter layer” so “[n]o MOSFET-like structure can form because the source and drain are of different types.” Ex. 2001” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable
“base a conclusion of obviousness upon facts gleaned only through hindsight. “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Therefore, “to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the [Petitioner] must articulate the basis on which it concludes that it would have been obvious to make the claimed invention.” Id. Impermissible hindsight is inferred when the specific understanding or principle within the knowledge of one of ordinary skill in the art that would motivate one (with no knowledge of the claimed invention) to make the proposed combination has not been explained. In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998).” slip op. at 16
Patent outcomesUS 9,722,104 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,722,104 - Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyNo claims unpatentablePTAB · Mar 23, 2026 · IPR2024-01451 · APJ Tawen Chang · IPR · Final written decision
Claims 1–19 were not shown unpatentable: Larson did not establish the claimed detection in a single sample volume, and the asserted obviousness combinations did not cure the deficiencies.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that, “[f]or purposes of this IPR proceeding, PO does not contest Petitioner’s description of qualifications for a person of ordinary skill in the art (POSA) set forth [above].” PO Resp. 23. In view of the above, and because Petitioner’s uncontested description of one of ordinary skill in the art is reasonable and consistent with the ’921 patent and the cited art, we adopt Petitioner’s definition of a POSA for purposes of this Decision, except that we replace the phrase “at least a year of experience in quantitative and/or dPCR and fluorescence-based analyte detection” with “around a year of experience in quantitative and/or dPCR and fluorescence-based analyte detection.” Pet. 9 (emphasis added).13” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We begin with “the context in which a term is used in the asserted claim,” which can be “highly instructive.” Phillips, 415 F.3d at 1314. In this case, claim 1 recites that the claimed assay is “capable of unambiguously detecting the presence or absence of each of said at least M analytes, in any combination of presence or absence, in a single sample volume, . . . wherein the analytes are amplified in the single sample 15 In this regard, we note that Petitioner’s claim construction position is not predicated on the collection of droplets being reconstituted into its original, pre-partition form prior to amplification; rather, the droplets remain compartmentalized from each other in the PCR thermal cycling tube. Tr. 65:21–66:9 (Petitioner’s counsel explaining that the droplets do not combine in the PCR thermal cycling tube but, rather, are “suspended in an immiscible fluid and analyzed en masse”). indicates that the first instance of single sample volume, i.e., the single sample volume in which the presence or absence of each M analytes are to be detected, is the antecedent basis for the second instance of “single sample volume,” i.e., the single sample volume in which the analytes are amplified. Thus, as the parties appear to agree, the single sample volume in which amplification takes places must be the same single sample volume in which the presence or absence of analytes are to be detected. We are not persuaded that, when accorded its plain and ordinary meaning, a single sample volume divided into a collection of droplets would be considered the “same” single sample volume prior to its partition.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“With respect to the limitation, “wherein the analytes are amplified in the single sample volume,” Petitioner asserts that “Larson discloses PCR assays that amplify target polynucleotide in a single sample volume, specifically a portion of the reaction mixture that is subsequently partitioned into droplets.” Pet. 31 (emphasis added). There is no dispute that the amplification of the analytes in Larson occurs in the droplets. Larson ¶¶ 6–7 (explaining that “[d]igital PCR (dPCR) is an alternative quantitation method in which dilute sample are divided into many separate reactions” and that “[t]he template is amplified in the droplet for detection”) (emphasis added). Because the claims require that amplification of the analytes be in the same sample volume in which the at least M analytes, in any combination of presence or absence, is unambiguously detected, and because the pre-partition single sample volume is not the same single sample volume as the collection of droplets after partition under our claim construction set forth above, we find Petitioner has not shown, by a preponderance of evidence, that claims 1–10 and 13–19 are anticipated by Larson.17 Tr. 68:12–69:14 (Petitioner’s counsel” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Although we agree with Petitioner that Larson contemplates scenarios in which droplets may contain more than one target molecule and does not require the exclusion of such multiple occupancy droplets in all embodiments, we are nevertheless not persuaded Petitioner has shown, based on a preponderance of evidence, that Larson renders obvious an assay capable of unambiguously detecting, in such multiple occupancy droplets, the presence or absence of each of at least M analytes, in any combination of presence or absence, when M is greater than F and F is at least 2.” slip op. at 32
Patent outcomesUS 11,827,921 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,827,921 - Shenzhen Root Technology Co., Ltd. v. Willow Blossom Holdco LimitedAll claims unpatentablePTAB · Feb 18, 2026 · IPR2024-01296 · APJ Barry L Grossman · IPR · Final written decision
Claims 1–46 are unpatentable as obvious under § 103 over the asserted combinations of Chang, Fang, Yuen, Khalil, Park, and Chen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that before the effective filing date of the claimed invention a person of ordinary skill in the art (“POSITA”) “would have had at least a bachelor’s degree in mechanical engineering or a similar field and at least two years of experience designing human breast pump equipment” and that “[m]ore education could substitute for experience and vice versa.” Pet. 2 (citing Ex. 1003 ¶¶ 15–18). Mr. Bauer’s cited testimony supports Petitioner’s assertion.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“[parent application to the application that matured into the ’380 patent], the Examiner construed the term ‘self-contained, in-bra wearable device’ to mean ‘complete, or having all that is needed, in itself’ and is capable of being worn in a bra.” Pet. 3 (citing Ex. 1005, 2290) (emphasis omitted). According to Petitioner, “PO did not dispute this construction, and Petitioner applies it herein.” Id. Petitioner also states that “[o]ther terms of the Challenged Claims should receive their plain and ordinary meaning, and no formal claim constructions are necessary in this proceeding because ‘claim terms need only be construed to the extent necessary to resolve the controversy.’” Id. (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011); Ex. 1003 ¶¶ 69–70). Again, because Patent Owner did not file a Response, we exercise our discretion and look to Patent Owner’s Preliminary Response. We note that in the Preliminary Response Patent Owner states that “[f]or purposes of this Preliminary Response, no claim terms require construction to resolve the prior art grounds raised in the Petition.” Prelim. Resp. 19. According to specific construction, any such terms should be accorded their plain and ordinary meaning in light of the specification.” Id. Construction is needed only for those terms “that are in controversy, and only to the extent necessary to resolve the controversy.” See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). There are no claim terms in controversy. Accordingly, we need not construe any terms for our analysis.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Petitioner contends (Pet. 17) that a person of ordinary skill in the art “would have been motivated to implement Chang’s breast pump device as suggested by Fang” to achieve four benefits: (1) “to facilitate convenient cleaning and maintenance” (Pet. 19 (citing Ex, 1003 ¶ 102)); (2) “to facilitate more rapid assembly and disassembly (e.g., during use)” (id. at 20–21 (citing Ex. 1003 ¶ 105)); (3) “as a particularly effective and suitable option to generate negative” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“a breast pump device having “a diaphragm pump that generates negative air pressure.” Pet. 33; see also id. at 38. Petitioner explains Chang’s pump “generates suction by cyclical compression and decompression of a conduit or flex-tube, and expressly notes that other configurations were known and suitable.” Id. at 17 (citing Ex. 1007 ¶¶ 22, 25, 28, 68, 79, 84–86). Chang, however, does not mention, specifically, that Chang’s pump is a “diaphragm” pump. We note, however, that this claim clause does not state or require any specific type of pump. It merely requires a “pump.” Clause 1[e]/29[e], discussed below, however, does require a “diaphragm” pump. Petitioner here merely lays the foundation for this later clause by asserting that “Fang provides a straightforward suggestion of a diaphragm pump including a diaphragm housing component formed in a wall of the pump housing.” Id. at 18 (citing Ex. 1009 ¶¶ 24–25, Fig. 7; Ex. 1003 ¶ 97). Thus, Petitioner asserts, Fang teaches “an ‘air pump’ in pneumatic connection with the diaphragm that serves to generate negative air pressure,” and Chang teaches “the location of pump components (e.g., ‘motor’ [46]).” Pet. 33 (citing Ex. 1007 ¶¶ 72, 80, Fig, 6A; Ex. 1009 ¶¶ 19, 24). Petitioner then asserts that “the ‘air pump’ components of the combined device are positioned within the pump housing,” and the air pump is powered by Chang’s rechargeable battery. Id. (citing Ex. 1007 ¶¶ 72, 80).” slip op. at 34
Patent outcomesUS 11,413,380 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,413,380 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, IncNo claims unpatentablePTAB · Nov 25, 2025 · IPR2024-01165 · APJ William V Saindon · IPR · Final written decision
Claims 1–21 were not shown unpatentable because Zhou does not teach the claimed low-light high-pass or stickiness parameter limitations.
RulingsFinal written decision- BurdenFwd all claims patentableNot shown unpatentable
“4. Conclusion for the Prior Art Analysis In sum, we find that Zhou does not disclose the low-light high-pass parameter or the stickiness parameter. Petitioner’s grounds for both independent claims 1 and 16 rely on Zhou for teaching a low-light high-pass parameter or a stickiness parameter. Pet. 23–28, 64. Because we find Zhou does not teach these limitations, all of Petitioner’s grounds fall for this reason. III. CONCLUSION For the reasons given above, we determine that Petitioner has not established by a preponderance of the evidence that any claim of the ’840 patent would have been obvious in view of the prior art cited.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“A person of ordinary skill in the art (POSITA) in the field of the ’840 patent would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras. Alternatively, a POSITA would have four years of experience working on image or video processing, or digital cameras. An advanced graduate degree in the disciplines cited above may make up for the work experience indicated above. Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner applies the same standard. PO Resp. 26–27. We use this agreed-upon standard for purposes of this Decision.” slip op. at 7
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We review this testimony based on the strength of the underlying factual basis. 37 C.F.R. § 42.65(a); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value . . ..”). Here, the underlying factual basis is not very strong for either witness. That said, we find that Dr. Foroosh’s testimony is more logically sound and consistent with the ’840 patent disclosure. Based on our reading of the specification, we find a clear indication that “stickiness” has to do with the past. In order to control “the extent by which preceding portion(s) . . . impacts determination of the smoothed trajectory” (emphasis added), one must control the degree by which the past frames impact determination. And to control the degree of the past’s influence, one must, as a consequence, favor the past over the future. That is, the frame of reference of the stickiness parameter is the past. The specification could have used a time-agnostic term, like a “nearness” or “adjacency” parameter, but it did not. Thus, the fact that “stickiness” is used in conjunction with “preceding” indicates that it deals with a preference for preceding frames. On this basis, we find Dr. Katsaggelos’s testimony less persuasive than Dr. Foroosh’s.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“That said, we do not construe a stickiness parameter as prohibiting consideration of future frames. Instead, we determine that the stickiness parameter’s value determines the impact of the preceding portions, versus the following portions. The ’840 patent recognizes this, when it says that a stickiness parameter value of “1,” representing a “lazy” stabilizer that maximally favors the past, would not override a violation of the margin constraint based on the look-ahead (i.e., would not allow the viewing window to fall out of bounds in the event of large future motion). See Ex. 1001, 22:26–30; see also id. at 12:61–13:29 (acknowledging that favoring the past may lead to a conflict with the viewing window determination), 15:39–60 (adjusting the viewing window to ensure it does not violate a margin constraint). Thus, while a past-favoring parameter by necessity favors the past over the future, it does not prohibit consideration of the future. In view of the above, we construe the claimed “stickiness parameter” as a parameter that controls the extent by which preceding portions of the trajectory impacts determination of the smoothed trajectory, with an understanding that in order to favor preceding portions, to some extent, the parameter must relatively disfavor following portions.” slip op. at 10
Patent outcomesUS 10,958,840 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,958,840 - PTAB · Nov 20, 2025 · IPR2025-00951 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–19 and all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over DuroMax and De Vries.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner. As to the inclusion of physics in Petitioner’s definition, Patent Owner acknowledges that an undergraduate mechanical engineering degree holder would have the requisite knowledge here but does not adequately explain why an undergraduate physics degree holder would not. In addition, Patent Owner requires “a four-year degree in mechanical engineering or a closely related field,” but fails to identify what fields are “closely related.” See Prelim. Resp. 10 (emphasis added). Based on the Winkel Declaration, we are persuaded at this stage that a hypothetical undergraduate physics degree holder would have had adequate knowledge for one of ordinary skill in the art of the invention here. See Winkel Decl. ¶ 106. As to the requisite years of experience proposed in the definitions— three for Petitioner versus “at least one” for Patent Owner—we note that Patent Owner’s definition is broader than, but includes, Petitioner’s definition. Moreover, for both the inclusion of physics and the years of experience issues, Patent Owner acknowledges that the arguments in the Preliminary Response “are not impacted based on which definition is applied.” Prelim. Resp. 10. Further, Patent Owner does not argue at this stage that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would have understood either the challenged patent or the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding and on the current record, we need not and do not explicitly construe the phrase “selector switch.” See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Although we do not expressly adopt Petitioner’s proposed construction at this stage of the proceeding, we note that it at least generally aligns with the tentative claim construction issued by the United States District Court in the California Litigation: “Mechanical device whose positioning precludes simultaneous access to two fuels.” Ex. 300310 at 2; see also 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”); Memorandum from Acting Director Coke Morgan Stewart to Members of the Patent Trial and Appeal Board (Sept. 15, 2025), available at https://www.uspto.gov/sites/default/files/documents/ Memo_re_prior_findings_of_fact_and_conclusions_of_law_9_16_25.pdf (“Prior Determinations Memo”) (discussing PTAB consideration of prior findings of fact and conclusions of law). We also note that Patent Owner” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Like the Federal Circuit in In re Ellis, although the patent classification of the reference is “some evidence of ‘non-analogy, . . . we consider the similarities and differences in structure and function of the inventions . . . to carry far greater weight.” In re Ellis, 476 F.2d at 1372 (affirming the Board and rejecting the applicant’s nonanalogous art argument). Here, the challenged patent discusses in the Background of the Invention the need for a way to “prevent both valves from being ‘on’ at the” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,598,101 - PTAB · Nov 13, 2025 · IPR2025-00805 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“C. Patent Owner’s Arguments Under 35 U.S.C. § 325(d) In the Preliminary Response, Patent Owner contends that Petitioner’s unpatentability arguments presented in this proceeding were previously considered by the USPTO. See Prelim. Resp. 31–33. In her decision referring this matter to the Board, then-Acting Director Stewart rejected that argument. See Paper 20 at 2–3 (discussing why “Petitioner provides persuasive reasoning, supported by evidence, that discretionary denial under 35 U.S.C. § 325(d) is not appropriate”); see also Prelim. Resp. 31–33 (referring to and citing Patent Owner’s Discretionary Denial Brief (Paper 8)). We need not and do not address this issue further.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner. As to the inclusion of physics in Petitioner’s definition, Dr. Singhose (a professor of mechanical engineering) testifies as to why undergraduate mechanical engineering degree holders would have the requisite knowledge here, but does not testify that undergraduate physics degree holders would not. See Singhose Decl. ¶¶ 2, 27, 28. In addition, Patent Owner and Dr. Singhose require “a four-year degree in mechanical engineering or a closely related field,” but fail to identify what fields are “closely related.” See Prelim. Resp. 11; Singhose Decl. ¶ 27. Based on the Morse Declaration, we are persuaded at this stage that a hypothetical undergraduate physics degree holder would have adequate knowledge for one of ordinary skill in the art of the invention here. See Morse Decl. ¶ 31. As to the requisite years of experience proposed in the definitions— three for Petitioner versus “at least one” for Patent Owner—we note that Patent Owner’s definition is broader than, but includes, Petitioner’s definition. Moreover, for both the inclusion of physics and the years of experience issues, Patent Owner acknowledges that the arguments in the Preliminary Response “are not impacted based on which definition is applied.” Prelim. Resp. 12 (citing Singhose Decl. ¶¶ 30–34). Further, Patent Owner does not argue at this stage that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction In inter partes reviews, the Board interprets claim language using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Petitioner does not propose express constructions for any claim terms. Pet. 12. Patent Owner also does not propose any express constructions. See Prelim. Resp. 12. On the current record, we need not construe explicitly any claim terms. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). As discussed below, however, the parties dispute the meaning of “gaseous fuel.” We address this issue below in the analysis of the challenge to claims 1–3, 5–9, and 18 based on Nakafushi and Olmr.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,393,034 - PTAB · Nov 6, 2025 · PGR2025-00040 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–9, 11–33, and 35–38 on all petition grounds, finding it more likely than not that Hassfjell-Hoff anticipates at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only 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 ’437 patent is eligible for post-grant review and that it is more likely than not that at least one challenged claim of the ’437 patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of all challenged claims of the ’437 patent.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“Here, Patentee Sciencons AS filed a statutory disclaimer of claims 10 and 34 of the ’437 patent. Ex. 2001; Prelim. Resp. 43. Based on our review of Exhibit 2001 and the Office’s public records, we find that the disclaimer of claims 10 and 34 complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Accordingly, we treat claims 10 and 34 as having never been part of the ’437 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C.] § 253 to mean that the patent is treated as though the disclaimed claims never existed.”). Because post-grant review cannot be instituted based on disclaimed claims, claims 10 and 34 are outside the scope of this proceeding. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution in view of a statutory disclaimer of all the challenged claims). Thus, we confine our analysis in this Decision to claims 1–9, 11–33, and 35– 38, the remaining challenged claims that have not been disclaimed.” slip op. at 6
- PTAB / AIA Trials › Real party in interest / privityGranted
“Sciencons AS also states that ARTBIO, Inc. is responsible for defending the ’437 patent in this proceeding and requests that ARTBIO, Inc. be included in the caption for this proceeding.2 Paper 4, 1. ARTBIO, Inc. has signed powers of attorney appointing the same practitioners that were appointed by Sciencons AS to transact all business associated with the instant post-grant review review of the ’437 patent. See Paper 3. To date, no objection has been raised to Patent Owner’s request. Given Sciencons AS’s representation that ARTBIO, Inc. is currently the exclusive licensee of the ’437 patent and is responsible for defending the ’437 patent, we grant Sciencons AS’s unopposed request that ARTBIO, Inc. be included in the caption. For convenience we refer to Sciencons AS and the purported exclusive licensee ARTBIO, Inc. collectively as “Patent Owner.” As stated supra, to the extent any party disputes ARTBIO, Inc.’s right to participate in this proceeding or to be included in the caption, the party shall request authorization to brief the issue within 10 business days of this Decision.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“nuclear chemistry, radiochemistry, or materials science, or a comparable field of study, plus approximately two to three years of professional experience with radioisotope generators, radiopharmaceutical chemistry, nuclear medicine, or other relevant industry experience” and that “[a]dditional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education.” Pet. 2–3 (citing Ex. 1002 ¶ 33; Ex. 1019 ¶ 27). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed definition nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposed definition of a POSITA.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 12,249,437 - Home Depot U.S.A., Inc. v. H2 Intellect LLCInstitution deniedPTAB · Oct 20, 2025 · IPR2025-00480 · APJ Lisa A Murray · IPR · Institution
The Board denied institution because the Elliott/Jacob grounds did not show a reasonable likelihood that claims 1–15 were unpatentable, and Musk did not cure the deficiencies.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“c) Summary We may institute an inter partes review when “the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). We have determined that, at this stage of the proceeding and on the present record, the information presented in the Petition does not show that Petitioner is reasonably likely to prevail with respect to its challenge to claim 1 based on the combination of Elliott and Jacob. Specifically, the Petition does not demonstrate that the proposed Elliott/Jacob combination would teach or suggest either limitation [1.e] or limitation [1.a] of independent claim 1. For the same reasons, the Elliott/Jacob combination does not teach or suggest the commensurate limitations in independent claims 6 and 11. Compare Ex. 1001, 13:42–14:5, 14:31–15:5, 15:38–16:21.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a Bachelors’ degree in electrical or computer science or a comparable field of study, plus at least three years of professional experience in advertisement delivery systems or other relevant industry experience. Additional graduate education could substitute for professional experience, and significant experience in the field could substitute for formal education. Pet. 3; Ex. 1002 ¶ 79. Patent Owner does not offer a competing formulation, stating that “[f]or purposes of this preliminary response only, Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 12. We find Petitioner’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’296 Patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“After reviewing the parties’ arguments and evidence, we determine that no express constructions of the terms identified by Petitioner are needed 6 For the term “recording a request identifier associated with the request,” Petitioner asserts that it is unclear which “request” is at issue, Pet. 7–8, while Patent Owner argues that “the ‘request’ refers to the ‘request for content to be used within the registered application program’ as described in claim element 1.h.” Prelim. Resp. 13. For the reasons discussed below, we determine that it is not necessary for us to construe this term for purposes of this Decision. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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)). C.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“as obvious over the combination of Elliott and Jacob. Pet. 9–60. Patent Owner contests Petitioner’s mapping of the cited prior art to four limitations in independent claim 1 (and the commensurate limitations in independent claims 6 and 11): limitations [1.a], [1.b], [1.d], and [1.e]. Prelim. Resp. 14– 39. Patent Owner also argues that one of ordinary skill in the art would not have been motivated to modify Elliott with the teachings of Jacob. Id. at 39– 46. We agree with Patent Owner that the proposed combination does not teach or suggest elements [1.a] and [1.e], for the reasons discussed below. Because the absence of these two elements from the cited prior art is a sufficient basis for denying institution, we do not address Patent Owner’s remaining arguments.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,433,296
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.