• Charles River Laboratories, Inc. v. Seikagaku CorporationAll claims unpatentable
  PTAB · Sep 8, 2026 · IPR2025-00440 · APJ Tawen Chang · IPR · Final written decision

  Claim 21 is unpatentable as obvious over Mizumura with either the ’498 PCT or McClymont; the Revised Contingent Motion to Amend proposing claim 22 is denied.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “overlap to a significant degree, i.e., a person with a Ph.D. in a discipline related to biological sciences and having had at least two years of work experience. However, the parties’ proposals differ slightly in the specific subjects in which a POSA would have had a doctoral degree, and whether the person’s work experience must have been directly related to horseshoe crab Factor C. As an initial matter, we find that a rigid requirement as to the subject of a POSA’s doctoral degree (e.g., biochemical engineering, enzymology), or experience working specifically with horseshoe crab proteins, is not consistent with the evidence of record. See, e.g., Ex. 1067, 20:23–21:2 (Dr. Schaefer testifying that the fact the “name of [his] Ph.D. is immunology . . . does not change the fact that the core of [his] thesis training was really in molecular biology”), 22:3–15 (explaining “the fact that the production of proteins recombinantly is mostly species agnostic”); Ex. 1069, 45:20–47:17 (Dr. Morris testifying that whether a person is a POSA depends on the person’s “experience, [ ] publications,” and work done for the Ph.D. rather than the name of the Ph.D. program). We also find that evidence of record supports Petitioner’s assertion that, for purposes of defining a POSA, “[m]ore education could substitute for experience, and vice versa.” See, e.g., Pet. 19; Ex. 1065, 99:14–100:3. with respect to the claims of the ’318 patent would have had a Ph.D. in molecular biology, biochemistry, or a related discipline, and about two years of experience with cloning genes, expressing cloned genes as proteins, and/or characterizing such cloned genes and proteins, with more education being able to substitute for experience, and vice versa. A POSA may also have collaborated with others, including those with specific experience in utilizing or assessing horseshoe crab Factor C for endotoxin detection and quantitation.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction The parties agree that “the terms in claim 21 can be afforded their plain and ordinary meaning for purposes of this proceeding” without further construction. Pet. 19–20; PO Resp. 11. Because express claim construction is not needed to resolve the issues in this case, we need not, and do not, construe expressly any claim term for purposes of this Decision. 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)).” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “Carrying Out the Invention section, that “[t]he Factor C of the present invention is a Factor C derived from a horseshoe crab,” and states later in the same section that “[e]xamples of the horseshoe crab include . . . Limulus polyphemus.” Ex. 1006, 40. However, none of the remaining portions of ’767 application cited by Patent Owner relate directly to L. polyphemus; instead, the remaining portions of ’767 application cited by Patent Owner are directed to other species, in particular the Japanese horseshoe crab T. tridentatus. Further, Patent Owner’s witness, Dr. Schaefer, conceded that the ’767 application does not contain Factor C sequence information for L. polyphemus. See, e.g., Ex. 1067, 44:25–45:23. Although “[n]o length requirement exists for a disclosure to adequately describe an invention,” Falko-Gunter, 448 F.3d at 1365–1366, we are persuaded that a POSA would not, based on the totality of the above disclosures, reasonably understand that the inventors were in possession of the claimed HEK-293 recombinant L. polyphemus Factor C protein, in view of the state of the art as of December 10, 2013. In this regard, we note that adequate written description of a biological molecule, such as a HEK293 recombinant L. polyphemus Factor C protein, requires “more than a mere statement that it is part of the invention and reference to a potential method for isolating it”; instead, what is required is “‘a precise definition, such as by structure, formula, chemical name, or physical properties,’ not a mere wish or plan for obtaining the claimed chemical invention.” The Regents of the” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Neither do we see Petitioner’s arguments regarding the December 10, 2013 priority date to be “mutually opposed” as Dr. Schaefer testified. Ex. 1067, 216:4– 24. Instead, we credit evidence of record, including Dr. Jain’s testimony and the February 22, 2018 Mizumura Declaration, that existence of the full sequence would permit a more complete analysis and that such an analysis would provide a POSA with a reasonable expectation that the claimed L. polyphemus recombinant protein would have a residual activity within the claimed range. See, e.g., Ex. 1029, 2–5; Ex. 1010, 48; Ex. 1065, 117:14– 130:24 (explaining that comparison of partial sequences in the Tokunaga 1991 publication showed “difference around the cleavage site” between T. tridentatus and L. polyphemus but comparison of the full sequence revealed that “the catalytic triad of histidine, serine, aspartate . . . to be more similar between Tachypleus and Limulus”). Patent Owner asserts that “Petitioner’s reliance on a statement made by Dr. Mizumura in a declaration submitted during prosecution of the ’767 Application fails to fill the gap in the analysis” regarding reasonable expectation of success, because the declaration “offers no evidence of the percentage of conserved amino acid substitutions that exist to support the conclusion that a POSA would have expected residual activity to be maintained between Tachypleus tridentatus and Limulus polyphemus” PO Resp. 47. However, as noted above, Dr. Mizumura provides an alignment of Factor C proteins from the two different species of horseshoe crab, determines that the similarity between the amino acid sequence is 99.5%, states that the amino acid residues that can undergo N-type sugar chain that L. polyphemus, like T. tridentatus, would also be less susceptible to inhibition by ions. Ex. 1029, 4–5. For the reasons discussed above, we also disagree with Patent Owner’s assertion that Petitioner’s reasonable expectation of success argument is “nothing more than conclusory assertions with no support.” PO Resp. 46. Rather, we find Petitioner has shown, by a preponderance of the evidence, that a POSA would have had reason to combine the teachings of Mizumura and the ’498 PCT, with a reasonable expectation of success in arriving at the Factor C protein recited in claim 21.” slip op. at 38

  Patent outcomesUS 11,236,318 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 11,236,318
• Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentable
  PTAB · Feb 6, 2026 · IPR2024-01340 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–12 and 14–18 are unpatentable as obvious over Whitehead, alone or with Marcus ’904; claims 13 and 19–24 were not shown unpatentable.

  RulingsFinal written decision

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “establishes that the subject matter of independent claim 19 would have been obvious in view of Whitehead. Claim 19 recites “an aggregator having a memory and a processor, the processor adapted for . . . providing an output signal including data indicative of the selection and of user data.” Ex. 1001, 15:51–16:3. As discussed above (Section II.C.2), we construe claim 19 as requiring a signal including both “data indicative of the selection and of user data.” Accordingly, we consider whether Petitioner has shown that Whitehead teaches or suggests that the “aggregator” “provid[e] an output signal including” both “data indicative of the selection and of user data.”” slip op. at 46

  • Expert testimonyOther

    “Cristofalo’s “user identifiers” represent data about users that Cristofalo’s system uses to “select a specific media object” (advertisements) from received “multi-object programming data.” Cristofalo at ¶ [0048]. For example, a user identifier may indicate that a given user is a Coca-Cola drinker, and when the receiving system receives the multi-object programming data it can select a particular media object out of several possible media objects (e.g., a Pepsi advertisement) to push to the user. Id. This user data exists independently of, and does not relate to, any particular media stream or streams. See Goodrich PO Resp. Decl. at ¶ 135. Petitioner seems to recognize this when tersely referring to “user identifiers” as “data,” not “data relating to a plurality of streams.” Pet. at 71. Accordingly, Cristofalo’s “user identifiers” are not the claimed “data related to the plurality of media streams.” Goodrich PO Resp. Decl. at ¶ 136.” slip op. at 73

  Patent outcomesUS 8,145,704 mixed
  § 103 obviousnesscites Graham
  Patents in suitUS 8,145,704
• Tiktok Inc. v. Ntech Properties, Inc.Some claims unpatentable
  PTAB · Jan 23, 2026 · IPR2024-01342 · APJ Terrence W Mcmillin · IPR · Final written decision

  Claims 1–4 and 6–10 are unpatentable as obvious over each asserted ground; claim 5 was not shown unpatentable because the petitions failed to establish its additional feed and time-period limitations.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “1b, 1c, and 1e of claim 1 and in claims 4 and 5 of the ’753 patent. Patent Owner contends that the plain and ordinary meaning of “feed” is “one or more associated media elements.” See, e.g., PO Resp. 4. However, as discussed below, this alleged plain and ordinary meaning of feed is not supported by the claim language, the specification of the ’753 patent, or dictionary definitions of feed as contended by Patent Owner. We reject this contention and the related contentions that the cited art may be distinguished from the claims of the ’753 patent based on the recited term “feed.” Patent Owner relies on the language of claim 1 to support its” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or an equivalent or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. Neither party presents any arguments relating or referring to the level of ordinary skill in the art. Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt Petitioner’s assessment of the level of skill in the art. Petitioner’s assessment is supported by the testimony of Dr. Almeroth and is consistent with the ’753 patent and the asserted prior art. However, our obviousness analysis would be the same under either party’s assessment. See Ex. 2014 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth” and “My opinions in this declaration would not change were I to adopt the definition of a POSITA offered by Dr. Almeroth.”).” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “16 With regard to claim 5, the Petition cites paragraphs 97 and 98 of the Almeroth Declaration (Ex. 1002). See Pet. 28–29. We have considered the cited paragraphs in the Almeroth Declatation and found that they consist of nothing more than the inadequate and conclusory contentions in the Petition preceded by, in paragraph 97, “[i]n my opinion” and “it is my opinion” and, in paragraph 98, “[i]t is also my opinion.” Ex. 1003 ¶¶ 97, 98. As related to claim 5, we accord the Almeroth Declaration little or no weight. See 37 C.F.R. § 42.65 (a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). that might become out-of-date before a user accesses access [sic] them. Ex. 1003, 11:49–58 (emphasis added). The cited passage in Whitehead mentioning “near real-time” does not support finding that Whitehead teaches or suggests the elements recited in claim 5.” slip op. at 39

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner contends, “[a] POSITA would have modified Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm (running on Marcus ’904’s receiver) for receiving, selecting, ordering, and assembling different media streams (both for content and advertising).” Pet. 33. Petitioner supports this contention by articulating the following reasons for the asserted modification of Whitehead’s mixing server 130 to incorporate Marcus ’904’s algorithm: “makes it more likely the system will identify content best suited for a particular user,” “allows for more targeted advertising and/or an opportunity to maximize revenue,” “improves Whitehead’s ability to target content and advertising to a particular user,” “would unlock new revenue sources for Whitehead,” “Marcus ’904’s content selection and concatenation algorithm improves Whitehead’s efficiency,” “[b]oth Whitehead and Marcus ’904 generate custom media programming based on a user profile,” “incorporating Marcus ’904’s teachings would not require redesigning Whitehead’s architecture and instead merely supplements Whitehead’s disclosure,” and “Petitioner’s proposed modification can be implemented entirely in software and does not require any hardware modifications. Indeed, Whitehead acknowledges that such modifications are possible. EX1003 at 19:64-20:6, 22:26-40.” Id. at 33–35 (citing Ex. 1002 (Almeroth Decl.) ¶¶ 110–115) (emphasis omitted). Based on this undisputed showing, we find that one of ordinary skill would have had a motivation to combine the teachings of Whitehead and Marcus ’904 as asserted in the Petition with a reasonable expectation of success.” slip op. at 48

  Patent outcomesUS 8,886,753 mixed
  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,886,753
• MPL Brands NV, Inc. v. Buzzballz, LLCAll claims unpatentable
  PTAB · Nov 17, 2025 · PGR2024-00035 · APJ Cynthia M Hardman · PGR · Final written decision

  Claims 1–20 are unpatentable as obvious over the cited prior art, based on the Board’s findings across the four asserted grounds.

  RulingsFinal written decision

  • Skill levelOther

    “II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art” slip op. at 12

  • Expert testimonyPatent owner expert discountedDecided for patent owner

    “person or designer of ordinary skill in the art. See Reply 7; Ex. 2001 ¶ 5. Patent Owner asserts that Mr. Kirkpatrick’s testimony is nevertheless relevant because it “informs the opinion of expert witnesses who do qualify as POSITAs” (i.e., Dr. Rojas). PO Resp. 4–5. But the level of ordinary skill in the art as defined here does not mention patents or patent drawings, and Patent Owner has not explained why or in what capacity a person of ordinary skill in the art would have consulted with a patent illustrator.15 For these reasons, we accord no weight to Mr. Kirkpatrick’s opinions on how a person of ordinary skill in the art would have viewed the figures. See” slip op. at 26

  • BurdenFwd all claims unpatentableUnpatentable

    “Petitioner has the burden of proving unpatentability of the challenged claims by a preponderance of the evidence. 35 U.S.C. § 326(e). Having reviewed the parties’ arguments and cited evidence, for the reasons we discuss below, we find that Petitioner has demonstrated by a preponderance of the evidence that claims 1–20 are unpatentable as obvious over the cited prior art.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “For the above reasons, and after considering Patent Owner’s” slip op. at 47

  Patent outcomesUS 11,932,441 unpatentable
  § 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,932,441
• Tesla, Inc. v. Graphite Charging Company LLCNo claims unpatentable
  PTAB · Aug 19, 2025 · IPR2024-00388 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Wang and Wang with AESO did not establish the claimed analysis, and Cooley did not disclose reducing current power consumption.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the claims require a decision engine to perform those elements.” Tr. 48:17– 20. In light of this, we fail to understand the basis for Patent Owner’s objection to the characterization of the level of ordinary skill involving experience with “intelligent” techniques or devices that control grid electricity. We determine that Petitioner’s definition is consistent with the level of ordinary skill reflected in the Specification and the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We, therefore, apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Patent Owner (PO Resp. 12, 49–50) points to the Specification’s list of “[e]xamples of power reduction actions.” Ex. 1001, 8:47–63. Patent Owner asserts that the list includes numerous examples of power reductions that occur in the present and one that takes place in the future—namely, “scheduling nonessential operations at a different time (e.g., nonessential software or hardware upgrades).” Ex. 1001, 8:61–62 (cited at PO Resp. 12, 50). We are persuaded by Patent Owner’s contention (PO Resp. 12) that the applicant, by including the term “current” in the claims, intentionally narrowed the claims to power consumption reductions that occur temporally in the present, rather than those that occur in the future. See Pet. Reply 6–7 (Petitioner asserting that Patent Owner’s position is “inconsistent with the specification’s examples,” but then arguing that the Specification does not support that position rather than pointing to any purported inconsistencies). Because the independent claims recite the term “current,” construing the term in the temporal sense is not, as Petitioner argues, importing into the claims an example from the Specification. See Pet. Reply 8.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Given the interchangeable nature taught for various features of Wang’s embodiments, it would have been a routine and obvious matter for a POSA to combine aspects from Wang’s various embodiments (e.g., data acquisition, internal hardware, data analysis performed by the UMC receiver 400 and/or the display 200). Moreover, many of Wang’s embodiments–particularly of specific smart appliance types– include common components, thus further confirming combinability of aspects of the disclosed embodiments. A POSA would have had a reasonable expectation of success in combining features of the embodiments together. Id. at 77–78 (citing Ex. 1003 ¶¶ 201–203). We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentable

    “We determine that these reasons are inadequate and too generic to satisfy Petitioner’s burden as they lack a clear explanation of what and how “aspects from Wang’s various embodiments” are proposed to be combined along with reasoning specific to that proposal. Petitioner, for example, does not explain adequately or persuasively why a person of ordinary skill in the art would have added a display that purportedly receives and analyzes data to a “smart appliance,” when that appliance already has an application processor that purportedly receives and analyzes the same data. It is not enough for Petitioner to allege that all of the elements of the challenged claims can be found somewhere in the various embodiments of Wang; Petitioner must also show that a person of ordinary skill in the art would have had a reason to combine the elements in the manner as arranged in the challenged claims. See KSR Int’l Co., 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). We find Petitioner has not shown an adequate reason to combine embodiments.” slip op. at 38

  Patent outcomesUS 8,291,243 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,291,243
• Tesla, Inc. v. Graphite Charging Company, LLCAll claims unpatentable
  PTAB · Jul 31, 2025 · IPR2024-00387 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–20 are unpatentable: claims 1, 4–8, 11–15, and 18–20 over Kimura; claims 2, 5, 9, 12, and 16 over Kimura and Hotta; claims 3, 10, and 17 over Kimura and King.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We understand Petitioner’s phrase “experience working on software and/or hardware used to manage charging processes for electric vehicles” to encompass data processing systems similar to that proposed by Patent Owner, but with a slightly narrower area of application. We determine that Petitioner’s definition, as set out in the block quote above, is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For the purposes of this decision, we apply Petitioner’s definition, as block quoted above, of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same. Cf. Pet. Reply 15 (Petitioner asserting that “[Patent Owner] takes issue with the level of ordinary skill in the art . . ., but never argues that the level impacts how the Board should understand the arguments. Petitioner’s positions apply regardless.”).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “We are not persuaded that the Specification evidences a clear intent by the patentees to redefine (either explicitly or by implication) or to otherwise narrow the scope of the claim terms “request” and “response,” as Patent Owner urges. The statements in the Specification upon which Patent Owner relies are referring to “Request 414” and “Response 418.” See PO Resp. 27 (quoting Ex. 1001, 12:3–4, 12:12–14). As indicated by the reference numbers, the Specification is discussing a specific request and a specific response in the context of Figure 4, which is described as depicting “an illustrative embodiment.” See Ex. 1001, 10:51–53 (“FIG. 4 is a system for managing a charging process of an electric vehicle in accordance with an illustrative embodiment.”), 12:1–19, Fig. 4. By stressing the illustrative nature of the embodiment of Figure 4, the patentees indicated an intent for it to not be limiting. See also Ex. 1001, 15:44–47 (the Specification stating: “The description of the present invention has been presented for purposes of illustration and description, but is not intended to be exhaustive or limited to the invention in the form disclosed.”); Hill-Rom Servs., Inc., 755 F.3d at 1373 (“[T]hose terms [including, datalink 39] are used synonymously only in describing a particular numbered component in the figure depicting the preferred embodiment, and never in describing the datalink of the invention generally.”). At oral argument, Patent Owner’s counsel, relying on the opinion of Dr. Cameron, argued that a person of ordinary skill in the art would “read the definition without the reference numbers.” Tr. 43:23–44:9. Thus, we understand Patent Owner to argue that the Specification provides an explicit definition when one reads out a portion of the Specification—converting, for example, “Request 414 is a message” to “Request is a message.” This is not persuasive as it involves editing the evidence to conform to Patent Owner’s argument, rather than an argument supported by the Specification as written by the patentees. Patent Owner does not direct us to any portion of the Specification that clearly defines “request” and “response” generally or, for example, uses phrasing implying that those terms are defined for “the present invention.” See, e.g., Hill-Rom Services, Inc., 755 F.3d at 1372 (“For example, we have held that disclaimer applies when the patentee makes statements such as “the present invention requires . . .’ or ‘the present invention is . . .’ or ‘all embodiments of the present invention are . . . .’”); Astrazeneca, 384 F.3d at 1339 (discussing defining by implication and determining that the “specification’s statement that ‘[t]he solubilizers suitable according to the invention are defined below’ provides a strong signal of lexicography.”).” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “We fail to discern a clear disparagement of the use of signals in the Specification that would justify excluding signals from the scope of the claimed invention. The Specification does not mention in these excerpts the use of signals, and thus does not characterize “using signals as less ‘complete, flexible, and interoperable,’” as Patent Owner impliedly argues. PO Sur-reply 11. The Specification characterizes “the most rudimentary charging scenarios” as including situations such as a car owner merely plugging the electric vehicle into a common electric outlet at the owner’s house, and suggests that illustrative embodiments are an improvement in that they apply to “much broader and more complex sets of circumstances than this simple scenario.” See Ex. 1001, 6:60–7:2. An example of a “complex transaction[]” is the car owner using a charging station located away from the owner’s house and being required to pay for the charge. See id. at 7:2– 11. To the extent there is any disparagement, it is merely of the simple scenario of the owner plugging the car into the standard household outlet. Cf. Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1336 (Fed. Cir. 2009) ([T]his court also recognizes that disparaging comments alone do not necessarily show a manifest or express disavowal of the criticized subject matter.”). Additionally, Patent Owner does not direct us to any portion of the Specification that indicates, for example, that the use of messages is a very important feature of the claimed invention and that alternatives (e.g., signals) are disparaged. See Hill-Rom Servs., Inc., 755 F.3d at 1372 (citing Inpro II Licensing, S.A.R.L., 450 F.3d at 1354–55); see id. at 1377 (holding that there is no disavowal or lexicography where “[t]here is no language that extolls the virtues of interfaces that both send and receive messages or language that disparages interfaces that only send messages.”).” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Sur-reply 15 (citing Ex. 1021, 161:5–21). Patent Owner overstates that testimony, which is that “[t]here’s actually disincentive for using messages all together.” Ex. 1021, 161:17–18. Regardless, even if correct, the existence of some disincentives does not necessarily negate a motivation to make the proposed combination. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”). We find that Petitioner’s assertion—that a person of ordinary skill in the art would be motivated by a desire to assure a safe and commercially-desirable system (Pet. 53)—to have rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Patent Owner argues that Dr. Cameron “explained [that] . . . it would not be simple because Hotta uses two-stage charging subroutines.” PO Sur-reply 16 (citing Ex. 2005 ¶ 118). We disagree with Patent Owner’s characterization of Dr. Cameron’s testimony. The cited paragraph 118 states that Hotta’s figures depict “two-stage charging subroutines different from both the ’391 patent and Kimura,” and that there are “fundamental differences.” Ex. 2005 ¶ 118. Dr. Cameron does not go so far as to opine that combining the teachings as Petitioner’s proposes would not be considered simple by a person of ordinary skill in the art. See id.; see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art.”). Dr. MacCarley, on the other hand, credibly testifies that “making use of Hotta’s command keys in Kimura’s system . . . would have been a simple substitution of one known element (Kimura’s lightly- described main switch) for another known element (Hotta’s command keys) to achieve predictable results (a charging process that can be stopped by pressing Hotta’s charging stop command key . . .).” Ex. 1009 ¶ 147. We credit Dr. MacCarley’s testimony over that of Dr. Cameron’s because it is consistent with a sufficiently reasoned rationale of a simple substitution and is supported by the references.” slip op. at 48

  Patent outcomesUS 8,103,391 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,103,391
• Gene Company Pty Ltd v. The Trustees Of Columbia University In The City Of New YorkNo claims unpatentable
  PTAB · Jun 23, 2025 · IPR2024-00313 · APJ Tawen Chang · IPR · Final written decision

  Claims 1–54 were not shown unpatentable because Petitioner failed to establish a reasonable expectation of success for the proposed combinations; objective indicia also supported non-obviousness.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “As to the first issue, we agree with Patent Owner that defining the level of skill in view of the solution described in the patent risks improper hindsight. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 18 (“[T]he level of skill in the art is a . . . lens through which . . . the Board views the prior art and the claimed invention,” which “prevents . . . factfinders from using their own insight or . . . hindsight[] to gauge obviousness.”). We therefore do not include “practical knowledge about . . . the deuterium isotope effect, including the patents and publications discussed [in the Petition],” as part of our definition of a person of ordinary skill in the art.” slip op. at 18

  • Expert testimonyPetitioner expert creditedMixed

    “person of ordinary skill in the art would employ” in an obviousness analysis, we give some weight to Dr. Guengerich’s testimony. KSR, 550 U.S. at 418; Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (explaining that “motivation to combine may be found. . . in . . . the background knowledge, creativity, and common sense of the person of ordinary skill”). Nevertheless, even if we were to agree that an ordinarily skilled artisan would have seen the 1,5-shift in NRPE in Mata’s A2E biosynthetic pathway as a particularly desirable location for intervention, we are not persuaded that such a person would have been motivated to substitute C20 deuterated vitamin A for the vitamin A in Ortho Pharma’s composition and method, because Petitioner has not shown, by a preponderance of evidence, that such an artisan would have reasonably expected the substitution to retard the accumulation of A2E or to treat macular degeneration.” slip op. at 42

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “In our Institution Decision, we preliminarily construed the preamble of claim 28 as limiting. Inst. Dec. 30–31. Petitioner did not take issue with our construction, or dispute Patent Owner’s construction of the preambles of claims 1 and 29 as also limiting. After consideration of the full trial record, we maintain our construction of the preamble of claim 28 as limiting for the reasons set forth in our Institution Decision. For similar reasons and the reasons set forth in Patent Owner’s Response, we further construe the preambles of claims 1 and 29 as limiting. See PO Resp. 12–14. We further determine that we do not need to construe any other claim term in order to resolve the controversy between the parties. 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)).” slip op. at 26

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc). Under this framework, claim terms are given 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 of record. Id.” slip op. at 25

  Patent outcomesUS RE47,045 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc.All claims unpatentable
  PTAB · Nov 27, 2024 · PGR2022-00025 · APJ Susan L C Mitchell · PGR · Final written decision

  Claims 1–19 are unpatentable because the ’201 patent lacks written description support for the claimed genus of CRF1 receptor antagonists under § 112(a).

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable

    “[A] sufficient description of a genus instead requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can “visualize or recognize” the members of the genus. Id. at 1350 (citing Regents, 119 F.3d at 1568–69). Moreover, “an adequate written description requires a precise definition, such as by structure, formula, chemical name, physical properties, or other properties, of species falling within the genus sufficient to distinguish the genus from other materials.” Id. (citing Regents, 119 F.3d at 1568 (quoting Fiers, 984 F.2d at 1171)). Furthermore, “functional claim language can meet the written description requirement when the art has established a correlation between structure and function.” Id. (citing Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002) (quoting 66 Fed. Reg. 1099 (Jan. 5, 2001))). “[M]erely drawing a fence around the outer limits of a purported genus is not an adequate substitute for describing a variety of materials constituting the genus and showing that one has invented a genus and not just a species.” Id.” slip op. at 42

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the relevant art (“POSA”) “would have a medical degree or a Ph.D. in a field related to endocrinology, and would have knowledge of hormone regulation and disorders, as well as knowledge of the treatment regimens employed to treat such disorders . . . [and] would also have at least three years of experience conducting research concerning endocrine disorders, including CAH or other adrenal disorders.” Pet. 26–27 (citing Ex. 1005 ¶ 34 (Dr. Carey Declaration)). Patent Owner does not expressly contest this definition of a person of ordinary skill in the art in its Response. Because Petitioner’s definition of a person of skill in the art appears commensurate with the level of skill reflected in the asserted art in this case as well as the ’201 patent itself, see, e.g., Exs. 1024, 1025, 2003, 2004, 2005, we apply Petitioner’s proposed level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (stating prior art itself can reflect the appropriate level of ordinary skill in the art). C.” slip op. at 22

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “For these reasons, we do not find persuasive the testimony of Patent Owner’s expert, Dr. Dobs, that: By describing adjustments of dosing protocols to achieve an A4 reduction from baseline, and describing this use of tildacerfont as just one embodiment of the claimed use of the entire well-known, well-characterized, and discrete class, the specification reasonably conveyed to a POSA that the invention extended to the particularly claimed use of the entire recited class. Ex. 2014 ¶ 82. On the contrary, far from being a “well-known, well-characterized, and discrete class” the prior art teaches a heterogeneous assembly of different classes of small molecule CRF1 receptor antagonists (Type I, Type II, and “atypical”) displaying a very considerable variety of structures, both in terms of the core pharmacophore (e.g., monocyclic, bicyclic, tricyclic, phenolic, cyclohexyl amide, etc.) as well as in the various side groups. Moreover, the challenged claims recite only “a CRF1 receptor antagonist or a pharmaceutically acceptable salt thereof,” the scope of which also encompasses the much larger (and, according to Williams) much more effective large-molecule (peptide) CRF1 receptor antagonists, about which the Specification is entirely silent. See Ex. 1029, Abstr., 1065. Furthermore, despite Dr. Dobs’ testimony that “[t]he [prior art] references explain the typical CRF1 antagonist consists of a core nitrogen heterocycle with an aryl substituent adjacent to the core nitrogen atom and a branched alkyl group attached at the opposite end of the core,” Dr. Dobs also acknowledged that the “atypical CRF1 receptors depicted in Figures 11 and 12 of Williams had different structures, and lacked the nitrogen heterocyclic core.” Ex. 1042, 127:9–14, 130:13–131:16; see also Ex. 2014 ¶ 83. Additionally, Petitioner’s expert, Dr. Cutler, testified, by way of example, in his Reply Declaration that two of the ‘“first-generation CRF1 antagonists’ identified in Figure 1 of the Williams article do not fall within the Figure 2 structure Dr. Dobs relies upon.” Ex. 1047 ¶ 93. Indeed, with respect to the alleged core pharmacophore that Dr. Dobs” slip op. at 54

  • ExcludeMotion to exclude, deniedMixed

    “with chemical terminology”; “could not answer questions regarding the chemical structures in the prior art articles”; “did not know whether CRF1 receptor antagonists contained the structural features she deemed ‘essential’ in her Declaration”; and “agreed that tildacerfont has structurally unique features” (see Ex. 1042, 52–53, 125–126, 126–128, 128–130) goes to the weight that we assign to such testimony, but we do not find that such testimony, in light of Dr. Dobs’ extensive qualifications as an endocrinologist set forth above, deems Dr. Dobs unqualified to testify concerning the written description issue in this proceeding. For these reasons explained above, Petitioner’s Motion to Exclude Dr. Dobs’ written description opinions in paragraphs 20 and 75–87 of Exhibit 2014 is denied.” slip op. at 11

  Patent outcomesUS 11,007,201 unpatentable
  § 112 disclosurecites Phillips
  Patents in suitUS 11,007,201
• Neurocrine Biosciences, Inc. v. Spruce Biosciences, Inc.All claims unpatentable
  PTAB · Nov 26, 2024 · PGR2021-00088 · APJ John G New · PGR · Final written decision

  Claims 1–25 are unpatentable because the ’908 patent lacks written description support under § 112(a); the Board did not reach Grounds 1–3 or 5.

  RulingsFinal written decision

  • ExcludeMotion to exclude, deniedMixed

    “To the extent that Dr. Dobs has admitted that she is “not comfortable with chemical terminology”; “could not answer questions regarding the chemical structures in the prior art articles”; “did not know whether CRF1 receptor antagonists contained the structural features she deemed ‘essential’ in her Declaration”; and “agreed that tildacerfont has structurally unique features” (see Ex. 1038, 52–53, 125–126, 126–128, 128–130), we will weigh her testimony regarding those matters accordingly. However, for the reasons explained above, Petitioner’s Motion to Exclude Dr. Dobs’ written description opinions in paragraphs 19 and 80–91 of Exhibit 2014 is denied.” slip op. at 10

  • Strike new argumentOther

    “Analysis Patent Owner’s Exhibits 2020–2026 play no part in our reasoning and were not relied upon by the Board in reaching our Decision. Petitioner’s Motion to strike Exhibits 2020–2026 is therefore dismissed as moot.” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “typically possess a medical degree or a Ph.D. in a field related to endocrinology, and would have knowledge of hormone regulation and disorders, as well as knowledge of the treatment regimens employed to treat such disorders. Pet. 60 (citing Ex. 1005 ¶ 34). Petitioner argues that such a person of ordinary skill would also have at least three years of experience conducting research concerning endocrine disorders, including CAH or other adrenal disorders. Id. Patent Owner does not expressly contest this definition of a person of ordinary skill in the art in its Response. Because we find Petitioner’s definition to be consistent with the demonstrable level of skill in the art (see, e.g., Exs. 1009, 1025, 2003, 2004, 2005), and in the absence of a different proposed definition of the level of skill in the art by Patent Owner, we adopt Petitioner’s definition.” slip op. at 26

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “For these reasons, we do not find persuasive the testimony of Patent Owner’s expert, Dr. Dobs, that: By describing adjustments of dosing protocols to achieve at least a 10% reduction from baseline, and describing this use of tildacerfont as just one embodiment of the claimed use of the entire well-known, well-characterized, and discrete class, the specification reasonably conveyed to a POSA that the invention extended to the particularly claimed use of the entire recited class. Ex. 2014 ¶ 87. On the contrary, far from being a “well-known, well-characterized, and discrete class” the prior art teaches a heterogeneous assembly of different classes of small molecule CRF1 receptor antagonists (Type I, Type II, and “atypical”) displaying a very considerable variety of structures, both in terms of the core pharmacophore (e.g., monocyclic, bicyclic, tricyclic, phenolic, cyclohexyl amide, etc.) as well as in the various side groups. Moreover, the challenged claims recite only “a CRF1 receptor antagonist or a pharmaceutically acceptable salt thereof,” the scope of which also encompasses the much larger (and, according to Williams) much more effective large-molecule (peptide) CRF1 receptor antagonists, about which the Specification is entirely silent. See Ex. 1029, Abstr., 1065.” slip op. at 56

  Patent outcomesUS 10,849,908 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 10,849,908
• Fusion Orthopedics, LLC v. Extremity Medical, LLCSome claims unpatentable
  PTAB · Nov 4, 2024 · IPR2023-00894 · APJ Robert A Pollock · IPR · Final written decision

  Claims 1–10 and 12–15 are unpatentable; claim 11 was not shown unpatentable. Substitute claims 16–25 and 27–30 are unpatentable over Mazur; claim 26 was not reached.

  RulingsFinal written decision

  • BurdenMixed

    “It is of the utmost importance that petitioners in the 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)). Here, however, not until its Reply does Petitioner belatedly suggest that Ferrante’s disclosure of bone screws with self-tapping ends equally meets the limitation of claim 10 (with respect to the first member) as with claim 11 (with respect to the second member), and that both claims are obvious in light of “evidence” from Ferrante “that it was well known to equip bone screws with self-tapping ends.” Reply 26–27. We do not discern these arguments in the Petition, and consider them waived. See Netflix, Inc. v. DivX, LLC, 84 F.4th 1371,1377 (Fed. Cir. 2023) (“While the Board should not take an overly mechanistic view of a petition and decline to address an argument because the petitioner did not present it with ideal vigor and clarity, the Board should also not have to decode a petition to locate additional arguments beyond the ones clearly made.”). In sum, Petitioner’s error in failing to first address limitations of claim 10 in the Petition specific to the Cognet/Ferrante combination indicates a failure to meet the particularity requirements for what must be in the petition and cannot be left to be filled in on reply. See 35 U.S.C. § 312(a)(3); 37 C.F.R. §§ 42.22(a)(2) (requiring, among other things, “a detailed explanation of the significance of the evidence”), 42.104(b)(4)–(5) (requiring that petition “specify where each element of the claim is found in the prior art patents or printed publication relied upon” and, regarding submitted evidence, state “the relevance of the evidence to the challenge raised, including identifying specific portions of the evidence that support the challenge”). Microsoft, 2022 WL 989403, at *6. Accordingly, Petitioner has not shown persuasively that claim 11 would have been obvious in light of Cognet and Ferrante for the reasons set forth in the Petition. slip op. at 41

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We also find persuasive Mr. Dominguez’s explanation that one of ordinary skill in the art would have understood “bore” as including stepped diameter holes, sometimes described as a bore having a counterbore. See generally Ex. 1018 ¶¶ 4–29; Reply 3–10. Three of Mr. Dominguez’s illustrative examples are reproduced in the annotated figures below. The above figures show Mr. Dominguez’s annotated illustrations from the Jackson (Ex. 1019, Fig. 3), Brånemark (Ex. 1021, Fig. 4), and Ray (Ex. 1025, Fig. 1) references as discussed at paragraphs 10, 12, and 13, respectively, of Mr. Dominguez’s Second Declaration. With reference to the above figures, Mr. Dominguez testifies that “Jackson describes a bone repair set screw in which ‘[t]he bore 27 comprises a first bore section 31, a second bore section 32,’ etc. delineated by shoulders 41, 42, etc. (Ex. 1019, 5:24– 43)” (Ex. 1018 ¶ 10); “Brånemark describes an osseous implantation device having body 1ʺ with first and second holding portions 21ʺ, 31ʺ and ‘an inner through bore with a first portion 4ʺ in the first holding portion and a second portion 5ʺ in the second holding portion.’” Ex. 1021, 4:44–46” (id. ¶ 12); and Ray discloses surgical calipers including “handle 12 having ‘stepped cylindrical bore 14,’” wherein “[c]ollar 20 of a shaft inserted in the bore ‘rests against a step of the bore 14’ (2:14–15)” (id. ¶ 13). Patent Owner responds that Mr. Dominguez’s examples “that allegedly show a single bore encompassing two or more stepped-diameter holes or a counterbore . . . . are specific to these references and divorced from the disclosures of the ’166 patent.” Sur-Reply 7. Insofar as the ’166 patent makes no mention of the term “bore” outside the claims, and Mr. Dominguez’s examples are all taken from the field of orthopedic surgery, we do not find this argument persuasive. Patent Owner further appears to contend that exemplary references to a “cylindrical stepped down bore” or a “stepped cylindrical bore” are too specific to be within the scope of the term “bore.” Sur-Reply 7–8. As these terms merely describe species within a larger genus, and Patent Owner presents no cogent reason to exclude them, we do not find this argument availing. Relatedly, we are also not persuaded by Patent Owner’s argument that “the prior art treats a ‘bore’ as an element that is distinct from a ‘counterbore.’” Id. at 8. Rather, we credit Mr. Dominguez’s testimony that “[a] counterbore is not a structure unto itself, a counterbore is part of a larger structure” as exemplified by numerous examples including Laps (Ex. 1028 ¶ 33 (sensor assembly wherein “bore 16 includes a counterbore 18”)); Martinez (Ex. 1029, 3:61 (surgical cutting instrument wherein “bore 56 has a counterbore 64”)); Zang (Ex. 1030, 2:49 (bone anchor having a “bore [that] includes a counterbore”)); Ledet (Ex. 1022, 29:3–5 (vertebral fixation plate having “through holes . . . . countersunk, or counterbored to accommodate the head of a bone screw”)); Seo (Ex. 1031, 3:45 (chair leg employing “counterbored bore 23”)); and Exner (Ex. 1032, 2:16 (extrusion press including “counterbored axial bore 6”)). Ex. 1018 ¶¶ 17–23. That a reference may refer to a figure as showing “bore 103” with “counterbore 105 . . . formed on one end” does not indicate that they are distinct structures as Patent Owner contends, but merely that the focus of each term is directed to the entire bore or to a particular aspect of the bore, i.e., its counterbore. See” slip op. at 22

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner subsequently proposed an alternative definition, as a person having “[a] Bachelor’s Degree in biomedical and/or mechanical engineering or similar training and . . . at least three years of experience with implant devices used for internal fixation of bones.” POR 5 (citing Ex. 2012 ¶¶ 32–33). According to Patent Owner, “[t]his hypothetical person would be capable of performing various design tasks and would understand the basic mechanical features and operation of orthopaedic implant devices [and] have an appreciation for orthopaedic fusion techniques and the medical issues and concerns faced by a doctor/surgeon charged when performing operations to implant orthopaedic devices.” Id. Despite some differences in wording, Patent Owner asserts (and Petitioner does not contest) that any “distinction between the parties’ proposed definitions of a POSITA does not affect the arguments set forth herein.” Id. (citing Ex. 2012 ¶ 34). Consistent with this view, we find the parties’ constructions equally applicable in light of the prior art of record and the disclosure of the ’166 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] 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)). We adopt, for convenience, Petitioner’s definition, but our analysis does not change depending on which of the two articulations are applied here. H.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “one of ordinary skill in the art would understand that “bore,” as used in the context of claims 1 and 12, encompasses a multi-diameter passage, and in particular, one having stepped longitudinal cross sections such as that shown in Cognet’s Figure 1. See generally DI 11–13. For the reasons that follow, we conclude that one of ordinary skill in the art would have understood “bore” as such. Relying on the testimony of Mr. Dominguez, Petitioner initially proposed a construction of “bore” as “a usually cylindrical hole made by or as if by the turning or twisting movement of a tool.” Pet. 16 (citing Ex. 1002 ¶ 58). Petitioner’s proposal relied on Mr. Dominguez’s testimony that “[a] bore is a cylindrical hole made by the spinning rotation of a twist drill cutting tool. It is typically made by removing material from a solid or hollow object, similar to a tunnel or orifice.” Ex. 1002 ¶ 58. Pointing to its annotation of Cognet’s Figure 1, above, Patent Owner argued that that the term “bore” excludes a tunnel made by “two adjacent bores.” See Prelim. Resp. 21–25. In view of the then-available evidence, we provisionally construed “bore” as a hole or passage made by or as if by the turning or twisting movement of a tool such that its interior walls have cylindrical lateral cross-sections, and which do not exclude holes or passages having tapered or stepped longitudinal cross-sections. DI 13.” slip op. at 19

  Patent outcomesUS 11,298,166 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,298,166

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.