- Samsung Display Co., Ltd. v. Pictiva Displays International Ltd.Some claims unpatentablePTAB · Jan 22, 2026 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Final written decision
Claims 1, 2, 6, and 8–14 are unpatentable as obvious over Ma; claims 3 and 4 were not shown unpatentable over Werner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s contention. See generally Resp. Neither party indicates that the result would change depending on the definition selected. We adopt Petitioner’s uncontested proposed definition, because it is consistent with the disclosures of the asserted prior art references. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under that standard, claim terms generally are given their plain and ordinary meaning as would have been understood by the ordinarily skilled artisan at the time of the invention and within the context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to resolve the disputes at hand. Pet. 15; see generally Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision. In our analysis of the challenges, however, we discuss the meaning of the terms “metal complex” and “central metal atom,” which appear in claim 1 (Ex. 1001, 19:19–20) to the extent necessary to resolve Patent Owner’s contention that Petitioner fails to establish that Ma invalidates claim 1. See Resp. 53, 56–58.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“Whether Ma qualifies as a “printed publication” involves an inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). A reference is considered “publicly accessible” upon a satisfactory showing that the document has been “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.” Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1350 (Fed. Cir. 2008); see Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 10– 11 (PTAB Dec. 20, 2019) (precedential).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Based on the information presented, we find Petitioner has the better position. Patent Owner admits that joint vaporization means “two materials vaporize together.” Reply 21 (quoting Resp. 54). As Petitioner argues, “This is what Ma discloses.” Id. We agree with Petitioner that Ma describes a “two-component” electron transport layer having a “thickness with one value.” Id.; see Ex. 1007, 811 (reporting a “co-deposited” application of “BPhen:LiQ” that is “50 nm thick”). Ma’s disclosure, thereby, strongly “indicates that the two components were vaporized together––as opposed to creating a ‘macroscopically homogenous form’” prepared by sequentially vaporizing the individual components as Patent Owner “hypothesizes.” Reply 21 (citing Ex. 1020 ¶¶ 42–44; Ex. 2041 ¶¶ 155–157); see Resp. 54– 55; see also Ex. 1007, 811 (Ma’s description of its device fabrication, appearing in the third paragraph of the experiments section). Petitioner further advances evidence that “[p]reparing a layer that is ‘macroscopically homogeneous’ but potentially microscopically heterogeneous,” as Patent Owner postulates, “would introduce excessive variability and render the data noncomparable and unreliable, thus undermining the experiment’s purpose.” Reply 21 (citing Ex. 1020 ¶ 44); see Resp. 54–55. Patent Owner presents no counterargument or evidence that is persuasive to undercut Petitioner’s reasoning or evidence on that point. See Sur-reply 19–22. Petitioner also argues that an ordinarily skilled artisan would have recognized “that vaporizing materials together would best achieve Ma’s objective of assessing the current density using different Liq doping percentages.” Reply 22 (citing Ex. 1007, 811; Ex. 1020 ¶ 51). Here again, Petitioner’s evidence on point stands uncontested. See Sur-reply 19–22 (declining to contest that point). On this record, therefore, we agree with Petitioner that, as to the relevant disclosure in Ma, “the most natural interpretation of ‘co-deposition’ for forming a layer, particularly when there is nothing to indicate that the materials” are “vaporized sequentially,” is that the materials are co-deposited by joint vaporization. Reply 22 (citing Ex. 1020 ¶ 46–51). We further agree that, “[u]nder a preponderance standard, Ma’s disclosures are sufficient to render joint vaporization at least obvious.” Id. For the above reasons, we determine that Petitioner demonstrates by a preponderance of the evidence that Ma discloses joint vaporization as required by the challenged claims.” slip op. at 15
Patent outcomesUS 8,558,223 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,558,223 - Sigray, Inc. v. Carl Zeiss X-Ray Microscopy, Inc.All claims unpatentablePTAB · Dec 12, 2025 · IPR2022-00218 · APJ Grace Karaffa Obermann · IPR · Remand
On remand, claims 2, 5, and 6 were held unpatentable as obvious; the motion to amend was denied for proposed claims 16–21 and dismissed for claims 22–23.
RulingsRemand decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The level of ordinary skill in the art, as articulated by Patent Owner, more accurately reflects the subject matter of the ’704 Patent and the asserted prior art than does Petitioner’s articulation. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself reflects an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). Petitioner does not explain how “control theory” and “applied mathematics” (Pet. 16) relate to the subject matter of the ’704 Patent or the asserted prior art, and Petitioner’s reference to “laboratory experience” (id.) is too general to be useful in defining the level of skill. Furthermore, whereas Petitioner requires a POSITA to have “x-ray and computing imaging experience” (id.), Patent Owner more particularly specifies “x-ray microtomography experience” (PO Resp. 5), which is the field of art for the ’704 Patent, as well as many of the asserted prior art references. Ex. 1001, code (54) (“High resolution direct-projection type x-ray microtomography system using synchrotron or laboratory-based x-ray source”); Ex. 1007 (discussing X-ray microcomputed tomography); Ex. 1008 (discussing X-ray nanotomography and microtomography); Ex. 1010, code (54) (“Method and apparatus for utilizing an electro-optic detector in a microtomography system”); Ex. 1011 (title: “Three- Dimensional X-ray Microtomography”). For those reasons, we apply Patent Owner’s definition of a POSITA.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Neither party proposes any express claim constructions. See Pet. 17 (“all claim terms should receive their plain and ordinary meaning”); PO Resp. 5 (applying the same constructions as Petitioner). In accordance with the Federal Circuit’s mandate, however, we adopt and apply herein “[t]he plain meaning of the term ‘between 1 and 10,’” which “includes tiny, and even undetectable, magnification” and, moreover, we take account that Jorgensen anticipates claim 1, including that limitation. Paper 38, 11–12. We determine that no other claim term requires express construction for purposes of resolving any controversy between the parties. 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))).” slip op. at 10
- Obviousness (§103) › KSR rationalesUnpatentableUnpatentable
“i. Spot Size as a Result-Effective Variable First, Patent Owner argues that Petitioner fails to “identify any prior art that discloses an x-ray source having the claimed spot size.” PO Resp. 45. We agree with Petitioner, however, that Patent Owner “fails to consider the advantages of a smaller spot size” –– advantages that would have been known to a POSITA, given that they are discussed “in each of these references.” Reply 19. Petitioner further directs us to evidence that Patent Owner’s own witness, Dr. Bentley, “agreed that a POSITA would have been aware of tradeoffs between smaller and larger spot sizes.” Id. (citing Ex. 1024, 45:14–47:20). In other words, the evidence supports that spot size would have been a result effective variable and, on this record, that optimizing that variable in view of various “tradeoffs,” recognized by Patent Owner’s own witness, would have been within the level of ordinary skill in the art. Id.; see In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art”). Patent Owner does not counter Petitioner’s evidence on that point, but instead, refers us back to a related argument in the Response, pertaining to whether one would have undertaken that modification with a reasonable expectation of success, which we address below in connection with Patent Owner’s third argument. Sur-reply 18 (citing PO Resp. 47–49).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“smaller spot sizes.” PO Resp. 45. We recognize that an obviousness challenge may be overcome “by showing that the prior art teaches away from the claimed invention in any material respect.” In re Peterson, 315 F.3d 1325, 1331 (Fed. Cir. 2003) (citing In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997)). For a reference to teach away, however, it must state more than a general preference for an alternative invention. Specifically, it must “criticize, discredit, or otherwise discourage” investigation into the invention claimed. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). In Patent Owner’s view, “Jorgensen teaches away from smaller spot sizes” because smaller spot sizes “require significantly more power to generate the desired flux.” PO Resp. 45. Patent Owner directs us to evidence that, at best, illustrates that this disadvantage would have been among the “tradeoffs between smaller and larger spot sizes” that inform the selection. Ex. 1024, 45:14–47:20 (Dr. Bentley’s cross-examination testimony); see PO Resp. 45–46 (evidence of proposed disadvantage). This evidence does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. Fulton, 391 F.3d at 1201. At best, we find that it may indicate a preference for a different spot size depending on the desired application.” slip op. at 13
Patent outcomesUS 7,400,704 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,400,704 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66–3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66– 3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 4
§ 103 obviousnessPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,811,689 - PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9
Discretionary denialPatents in suitUS 11,925,202 - PTAB · Jun 18, 2025 · IPR2025-00321 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1, 2, 5–7, 9, 16, and 17, finding a reasonable likelihood that claim 1 is anticipated by Boyer.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“approximately two weeks before the statutory deadline for a final written decision, but the most recent median time-to-trial statistics for Judge Gilstrap in the Eastern District of Texas indicate that the actual trial date will likely be in July 2026, which is later than the statutory deadline to issue a final written decision in this proceeding in mid-June 2026. See Ex. 2001, 7 (median time from filing to trial of 23.2 months); Prelim. Resp. 10. Thus, we find this factor is neutral or weighs slightly against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had (1) at least a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a related field, and (2) at least two years of research or industry experience in 3D printing or materials used for 3D printing.” Pet. 5 (citing Ex. 1003 ¶¶ 14–16). Petitioner also argues that “[a]dditional experience could substitute for a formal degree or formal training (and vice versa).” Id. Patent Owner proposes a slightly different level of skill, arguing that a person of ordinary skill in the art “would have had a bachelor’s degree in Mechanical Engineering, Computer Engineering, Chemical Engineering, Materials Science, or a comparable field and at least two years of experience related to 3D printing, with additional experience potentially being a substitute for a formal degree or training (and vice versa).” Prelim. Resp. 24. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’713 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“We note that, as discussed below, we are able to determine whether to institute inter partes review of the ’713 patent without expressly construing the term “from multiple print heads or deposition lines.” 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 for Patent Owner’s argument that Petitioner has failed to carry its burden to identify how the claims are to be construed, we disagree on the present record. Although Petitioner does not provide a preferred construction for the single term it proposes requires construction, Petitioner does identify which of its two alternative constructions applies to each of its asserted grounds of unpatentability. Pet. 6 (“Under the first construction, [the obviousness grounds] are applicable, and [the anticipation ground] would be excluded from the claim scope. Under the alternative construction, all of [the asserted grounds] are applicable.”). In our view, this approach does not fail to satisfy Petitioner’s burden under 37 U.S.C. § 42.104(b)(3).” slip op. at 17
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,421,713 - Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.No claims unpatentablePTAB · Jun 10, 2025 · IPR2024-00231 · APJ Avelyn M Ross · IPR · Final written decision
Claims 14–16, 18, 27–29, 31, and 32 were not proven unpatentable because the asserted references failed to establish the claimed airflow path or a reason to make the proposed combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s and Patent Owner’s proposed levels of skill are similar and differ in that Petitioner’s relevant degrees and corresponding two years of experience additionally includes “industrial design” and “product design” and familiarity with “electrically powered vaporizing articles, their components or the underlying technologies” where Patent Owner requires two years of experience “designing electro-mechanical consumer products or an advanced degree.” Compare Pet. 7, with PO Resp. 2. Patent Owner alleges that “Petitioner has failed to establish unpatentability under either standard,” indicating that the level of skill in the art is not a dispositive issue. PO Resp. 3. In light of the record before us, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’123 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 ’123 patent and the prior art. We note that the outcome of this Decision would be the same under Patent Owner’s proposed definition.” slip op. at 11
- Expert testimonyPetitioner expert creditedOther
“In this case, Mr. McAlexander meets both Petitioner’s and Patent Owner’s proposed level of skill in the art. As a result, we are persuaded Mr. McAlexander has the requisite skill and relevant expertise to offer testimony in this matter. For example, Mr. McAlexander has a Bachelor’s Degree in Electrical Engineering and far more than 2 years of experience in the electrical engineering field. Ex. 1027, 3–6, 7. In addition, Mr. McAlexander has provided expert consulting services in a wide range of technology areas involving the process and design of electro-mechanical consumer products. Ex. 1003 ¶ 5. Through one of Mr. McAlexander’s business ventures, his laboratory has “performed detailed airflow analyses, designing and constructing specialized apparatuses to emulate human breath, allowing for precise activation testing of ENDS devices.” Ex. 1043 ¶ 16. That said, a declarant’s expertise, even clothed as a skilled artisan, does not entitle a naked opinion persuasive weight. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985). Here, Patent Owner had the opportunity to, and in fact did, thoroughly cross examine Mr. McAlexander about the purported deficiencies in his testimony. See, e.g., Exs. 2052, 2054; Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 595 (1993) (“Vigorous cross examination [and] presentation of contrary evidence . . . are the traditional and appropriate means of attacking shaky but admissible evidence.”). Therefore, to the extent Patent Owner credibly identifies deficiencies in Mr. McAlexander’s testimony or that testimony lacks factual support or is based on broad, conclusory assertions, we will assign appropriate weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (explaining that it is within the Board’s discretion, as the trier of fact, to accord appropriate weight to the evidence presented).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the parties proposed a construction for “pressure valve,” a limitation appearing in claims 18 and 31, during the ITC investigation. Pet. 7 (citing Ex. 1001, 41:58–65). Patent Owner contends that the terms of the ’123 patent should be given their plain and ordinary meaning. PO Resp. 4. Because resolution of the issues presented in this case do not require construction of the term “pressure valve,” we do not expressly construe this claim term. 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 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. To anticipate a claim, a reference “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, 545 F.3d at 1369. “The requirement that the prior art elements themselves be arranged as in the claim means that the claims cannot be treated . . . as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Indeed, the prior art reference “must clearly and unequivocally disclose the claimed [invention] or direct those skilled in the art to the [invention] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference.” Net MoneyIN, 545 F.3d at 1371 (citation omitted). “[D]ifferences between the prior art reference and the claimed invention, however slight, invoke the question of obviousness, not anticipation.” Id.” slip op. at 20
Patent outcomesUS 10,130,123 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,130,123 - Bio-Rad Laboratories, Inc. v. California Institute Of TechnologyRehearing deniedPTAB · May 22, 2025 · IPR2024-01178 · APJ Cynthia M Hardman · IPR · Rehearing
The Board denied Bio-Rad’s rehearing request, leaving institution denied because the petition relied on Saxonov material not shown to be prior art and could not be supplemented on rehearing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Such an approach is inconsistent with the Supreme Court’s statements that in an inter partes review, “the petitioner is master of its complaint,” and “the petition [is] the centerpiece of the proceeding.” SAS Inst., Inc. v. Iancu, 584 U.S. 357, 363, 369 (2020). “It is of the utmost importance that petitioners in IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). In contravention of these principles, Petitioner’s approach improperly shifts the onus to Patent Owner or the Board to identify and parse out erroneous, and purportedly non-essential, citations to Saxonov and piece together an argument based on the remaining citations. As we stated in the Decision, we decline to assume this task. See Dec. 20. Finally, in the Request, Petitioner attempts to “show[] how Ground 6 is fully supported by undisputed prior art material.” Req. 6. This attempt is improper. Petitioner cannot use the Request as a means to supplement the Petition to identify purportedly essential citations and disavow erroneous or non-essential citations.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In the Decision, we determined that Petitioner had not shown that all of the portions of Saxonov that Petitioner relied on in its unpatentability arguments qualify as prior art to the challenged claims. See Dec. 17–24. On this basis, we found that Petitioner failed to demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’170 patent.” slip op. at 2
NonePatents in suitUS 10,770,170 - Juul Labs, Inc. v. Njoy, LLCNo claims unpatentablePTAB · May 21, 2025 · IPR2024-00161 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 1–27 were not shown unpatentable because the asserted obviousness grounds failed to establish the claimed central airflow passageway or a reason to combine the references.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Relying on the testimony of Patent Owner’s declarant Dr. Singhose, Petitioner argues that a person of ordinary skill in the art “would have known a central straight path has less airflow resistance than a circuitous one.” Reply 22–23 (citing Ex. 1035, 127:15–128:9). But the same witness also testified that higher airflow resistance might be desirable and explained that providing more resistance to airflow might result in improved mixing. Ex. 1035, 21:21–22:12, 127:20–24, 170:10–14. In addition, Dr. Singhose testifies that the complicated design of the airflow passageway in Xia “serves important functions,” including “allow[ing] large droplets to be reabsorbed by the liquid-guiding mechanism,” allowing “excessive liquid in the airflow [to] condense,” and “prevent[ing] the chemical liquid from being sucked into the mouth.” Ex. 2022 ¶ 183 (citing Ex. 1004, 11, 13–14, 16). Although Petitioner’s declarant Dr. Sturges testifies that a straight airflow passageway “would provide improved, smoother air flow,” he does not provide any evidence supporting the view that the air flow would be improved. Ex. 1007 ¶ 118. We credit the testimony of Dr. Singhose that using a straight passageway in Xia would have been detrimental rather than beneficial. Ex. 2022 ¶ 183. Petitioner also argues that the inventors’ use of a straight path is evidence that the use of a straight passageway was “merely common-sense obviousness.” Reply 22–23. This is hindsight. Otsuka Pharm. Co. v. Sandoz, Inc., 678 F.3d 1280, 1296 (Fed. Cir. 2012) (“The inventor’s own path itself never leads to a conclusion of obviousness; that is hindsight.”). Moreover, it does not address the testimony of Dr. Singhose that the use of a complicated passageway like that in Xia had benefits not present in a straight central passageway.” slip op. at 29
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had a mechanical or electrical engineering degree, industrial design degree, or a similar technical degree, or equivalent work experience, and 5 to 10 years of experience in electromechanical devices.” Pet. 10 (citing Ex. 1007 ¶ 16). Prior to institution, Patent Owner stated that, for “the limited purpose of this Preliminary Response,” it “does not challenge the definition of a POSITA set forth in the Petition.” Prelim. Resp. 9. We adopted Petitioner’s proposed definition in our Decision granting institution. During trial, neither party disputed this definition. Upon a complete record, we see no reason to change the adopted definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues, however, that this presumption is overcome in the present case, and we agree. PO Resp. 28–32. We note that, although the claims require the first aperture to be “on the first end,” the claims still require that the “housing hav[e] a first aperture.” Thus, the issue is whether the aperture must be on the housing itself or part of the housing, as well as whether the aperture is on the first end of the housing. Although “having” and “includes” are used with respect to the solution holding medium to refer to elements located inside the housing, the specification of the ’881 patent suggests that the ends of the housing are part of the housing itself, rather than located inside the housing. First, “the first end . . . can be integrated into a single assembly as part of the housing.” Ex. 1001, 6:16–17. Second, “the housing . . . may comprise the cylindrical wall and two end-caps,” or “the housing . . . may comprise the cartridge wall and a single end-cap.” Id. at 3:55–59. The only figures of the ’881 patent that depict first end 206 show it at the end of the housing rather than located within the interior of housing 202. Id. at Figs. 2, 3. Moreover, there is no requirement to construe a claim term uniformly across multiple uses in the claims when doing so would be nonsensical. Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367, 1375 (Fed. Cir. 2008). Here, construing a first element that is recited as “having” or “includ[ing]” a second element always as encompassing not only second elements that are part of the first element, but also second elements that are located within the interior of the first element, would lead to nonsensical results. Claim 2 recites an airflow passageway “having a length having a circular cross section.” Ex. 1001, 17:59–60. It would be nonsensical to interpret this claim as encompassing an airflow passageway of non-circular cross section that contains another object that has a circular cross section, and neither party argues in favor of such a reading. Similarly, claim 16 recites an “airflow passageway having an interior having a uniform cross-sectional area,” and there is no reason to interpret this claim as encompassing an airflow passageway of non-uniform cross-sectional area that contains another object that itself has uniform cross-sectional area. Id. at 19:47–48. Thus, the claims do not use “having” or “includes” consistently to refer to elements located within the interior of an object; instead, they sometimes use these terms to refer to elements that are a part of an object. See Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1030–31 (Fed. Cir. 2002) (terms should be construed based on the context of how the terms are used in the claims).” slip op. at 13
- Prior constructionPrior construction not adoptedDecided for patent owner
“When we instituted trial, we preliminarily construed this phrase to encompass apertures that are located within the first end of the housing, determining on the record available at that time that “[t]he term does not require that the first aperture be located in the housing itself.” Inst. Dec. 16. We invited the parties to “address [the] construction of this term during trial,” id., and, on the full record developed during trial, we reach a different conclusion.” slip op. at 10
Patent outcomesUS 10,334,881 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,334,881 - Innoscience America, Inc. v. Infineon Technologies Americas Corp.Institution deniedPTAB · May 16, 2025 · IPR2025-00010 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution of IPR challenging claims 1–14, exercising § 314(a) discretion under Fintiv because the balance of factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“2. Factor 2: ITC Final Determination Date Fintiv provides that an ITC trial date that is earlier than the Board’s projected statutory deadline for a final written decision may favor discretionary denial if the ITC is going to decide the same or substantially similar issues to those presented in the petition. Fintiv, Paper 11 at 8. The Guidance Memo further provides that “the Board is more likely to deny institution where the ITC’s projected final determination date is earlier than the Board’s deadline to issue a final written decision.” Guidance Memo 2. Here, the ITC has set the target date for its final determination to March 2, 2026. Ex. 2010, 3 (ITC Order Amending the Procedural Schedule). Our final written decision would be due almost three months later, in late May 2026, should we institute inter partes review.” slip op. at 8
Discretionary denialPatents in suitUS 9,070,755
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.