- Uatp IP LLC v. Slick Slide LLCSome claims unpatentablePTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision
Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20
Patent outcomesUS 11,998,854 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 11,998,854 - Resmed Corp. v. Cleveland Medical Devices, Inc.All claims unpatentablePTAB · Jun 29, 2026 · IPR2025-00246 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 15–29 are unpatentable as obvious over the asserted combinations; the contingent motion to amend claims 30–41 is denied for lack of written-description support.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner filed an authorized Motion to Terminate, alleging that Petitioner failed to name its corporate parent, ResMed Inc., as a real party in interest. Paper 39. Petitioner filed an opposition. Paper 42. Patent Owner filed a reply. Paper 43. We denied the Motion to Terminate. Paper 51.” slip op. at 3
- Skill levelSkill level board ownOther
“understanding of a person of ordinary skill in the art at the time the invention was made.10 See Graham, 383 U.S. at 17–18. The parties agree that a person of ordinary skill in the art (sometimes referred to herein as “POSITA”) would have had: at least a bachelor’s degree in mechanical engineering, electrical engineering, computer science, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience working with diagnostic sensor systems and network data systems, such as networked PAP machines. Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Pet. 3–4 (citing Ex. 1003 (Kirkness Decl.) ¶ 44); PO Resp. 4. 9 Patent Owner does not assert any objective indicia of nonobviousness. See generally PO Resp. 10 For purposes of this Decision, we apply a priority date of November 4, 2005. See supra n.4. Because the proposed level of ordinary skill in the art is consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner does not persuade us to construe the term as “a value [or calculated value] that indicates how dire a patient’s symptoms are.” Patent Owner points to nothing in the intrinsic record that purportedly supports this construction, and we agree with Petitioner that “the patent specification’s disclosures regarding determining a level of symptom severity are broad, establishing that it can generally be derived from any sensor data and/or breathing events.” Pet. Reply 3–4; see also Ex. 1001, 3:44–46 (“Signals from the[] sensors are then analyzed to determine the level of severity of the symptoms of the subject’s sleep disorder.”). Patent Owner relies only on expert declarations to support its construction. But as indicated by the Federal Circuit, extrinsic evidence is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005). This is especially applicable here, where neither Dr. D’Ambrosio’s nor Dr. Schwartz’s declaration was prepared for this proceeding, and neither declarant was subject to cross examination on their opinions. Moreover, neither of the declarants was opining on claim construction; rather, they were addressing indefiniteness and/or written description issues. See Ex. 1058 at 7 (heading addressing definiteness); Ex. 2026 at 18 (heading addressing written description). Further, Dr. Schwartz appears to have been making an argument about certain patent claims (not the challenged ’333 patent) based on Patent Owner’s own statements made during prosecution of a separate patent application. See Ex. 2026 ¶ 47 (“[T]he similar term used in the ’284 patent claims (‘data of severity of sleep disorder symptoms’) does not find written description support in the specification by a disclosure of the same statistics disclosed in Wright, because CleveMed argued those statistics are not related to severity of sleep disorder symptoms.” (emphasis added)). Patent Owner has not persuaded us that Dr. Schwartz’s testimony has direct applicability to the claim term at issue here. Dr. Borkholder’s testimony is likewise unpersuasive. Aside from citing Dr. D’Ambrosio’s and Dr. Schwartz’s declarations, Dr. Borkholder cites Exhibits 2027 and 2016. These exhibits discuss indices such as AHI and RDI that are used to assess the severity of a patient’s symptoms, but Patent Owner has not adequately explained how they bear on construction of the claim term at issue here, which is not addressed in these exhibits. Ex. 2022 ¶¶ 32–33. Accordingly, we accord Dr. Borkholder’s claim construction opinions little weight, because they are unsupported by reference to objective, corroborating evidence of record. See, e.g., Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”); Xerox Corp. v. Bytemark, IPR2022-00624, Paper 9, 15 (PTAB 2023) (precedential) (explaining that declaration testimony that “is conclusory and unsupported” and which “adds little to the conclusory assertion for which it is offered to support . . . is entitled to little weight”).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“We find that Petitioner has the better argument. Tidal volume refers to “the volume of air that is inspired or expired during a respiratory cycle.” Ex. 2028, 13–14; PO Resp. 10. “[H]ypopnea events are defined as a reduction of ≥50 % or 74 % in tidal volume from baseline and apnea events as absence of tidal volume for at least 10s.” Ex. 2028, 13–14 (emphasis omitted). Toge teaches that a control unit analyzes collected data (e.g., the flow rate) and calculates tidal volume. Ex. 1044 (Toge) ¶¶ 34–38. The calculated tidal volume is “a quantified level of severity data based on the subject’s sleep apnea symptoms during the therapy” because it represents, e.g., the “level of airway obstruction the patient experiences during the sleep apnea treatment using the PAP device.” Pet. 15. As Dr. Chatterjee explains: Toge discloses that tidal volume Fp is a quantified level of data because Toge discloses that Fp is monitored with respect to threshold values (id., [0051]) and because Fp is a function of Ft, Fa, and Fb, which are quantitative values. Toge discloses that tidal volume Fp is severity data because Toge discloses that tidal volume is indicative of whether the patient’s breathing warrants “emergency measures” (id., [0039]) and whether to “send an alert” in “an emergency where the patient’s breathing has drastically weakened” (id., [0055]). . . . . Because Toge discloses determining tidal volume (determine a quantified level of severity data) based on Ft, Fa, and Fb (id., [0035]), which corresponds to the subject’s condition (subject’s sleep apnea symptoms) while using the device (during the therapy) (id., [0036], [0037]), Toge discloses determin[ing] a quantified level of severity data based on the subject’s sleep apnea symptoms during the therapy. Ex. 1005 (Chatterjee Decl.) ¶¶ 122–125. Patent Owner’s attempt to dismiss tidal volume as a mere “breathing metric” is unavailing. First, Petitioner correctly “notes that in the paragraph PO cites to in Dr. Schwartz’s declaration, he indicates that breathing metrics are a level of severity data.” Pet. Reply 8 (citing Ex. 2026 ¶ 46 (“standard sleep disordered breathing metrics” [ ] were well validated indicators of the type and severity of sleep disordered breathing”)). Second, Dr. Kirkness explains that tidal volume represents the level of airway obstruction, e.g., apnea “is the most severe form of reduction in airflow [and] the absence of airflow results in quantified tidal volume of zero milliliters per breath.” Ex. 1003 (Kirkness Decl.) ¶¶ 157, 159; see also PO Resp. 10–11 (Patent Owner recognizing that an apnea is defined as absence of tidal volume for at least 10 seconds). The calculated tidal volume thus indicates severity because it is used to adjust the PAP system, e.g., in the case of decreasing tidal volume, a medical professional can change the airflow settings “to counter/treat the more severe level of airway obstruction observed from the decreasing tidal volume.” Ex. 1003 (Kirkness Decl.) ¶ 158; Pet. 15–16; Ex. 1044 (Toge) ¶ 39.” slip op. at 26
Patent outcomesUS 11,857,333 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,857,333 - Berkshire Hathaway Energy Company / Pacificorp v. Birchtech Corp.Institution deniedPTAB · May 20, 2026 · IPR2025-00423 · APJ Zhenyu Yang · IPR · Institution
The Board denied institution of IPR challenging claims 1–4 and 6–29 because it instituted the ranked IPR2025-00422 under the Director’s instruction to maintain at most one IPR.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Paper 34. Birchtech Corp. (“Patent Owner”) filed a Request for Director Review in each case. See Paper 40; IPR2025-00422, Paper 39. The Director denied the request without prejudice in each case and remanded the cases to the Board to “allow discovery, narrowly tailored to resolve the RPI and privity issues.” Paper 49, 4. The Director later issued an Order Supplementing Director Review Decision in each case, instructing that “if the Board determines that Petitioners met their burden to identify all RPIs in the Petitions, then the Board should maintain at most one IPR challenging” the ’430 patent. Paper 72, 3.” slip op. at 2
Discretionary denialPatents in suitUS 10,668,430 - First Quality Retail Services, LLC / First Quality Consumer Products, LLC et al. v. Essity Hygiene And Health ABAll claims unpatentablePTAB · May 12, 2026 · IPR2024-01487 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–5, 7, 8, 20–22, 24, and 25 are unpatentable, based on anticipation by Bergstrom and obviousness over the stated combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Institution Decision, we adopted Petitioner’s definition. Dec. 9–10. In its Response, Patent Owner cites to Petitioner’s definition and states that Patent Owner “applies Petitioners’ definition.” PO Resp. 7. Because Petitioner’s definition of the level of skill in the art is consistent with the ’138 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“We begin our analysis with the language of the claims. Phillips, 415 F.3d at 1312; see also SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 874–875 (Fed. Cir. 2004) (“There is a ‘heavy presumption’ that the terms used in the claims ‘mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.’”). Claim 1 recites, in relevant part, “said fluid flow control structure being a layered structure comprising a non-perforated fibrous polymeric layer and a first perforated polymeric layer.” Ex. 1001, 13:62–64 (limitation [1h]). The plain language of claim 1 does not address additional properties of the perforated polymeric layer; the language of the dependent claims, however, imposes additional limitations on the properties of the perforated polymeric layer such as a particular basis weight (claim 2), a particular makeup (claim 3), a particular aperture size (claim 7), a particular open area (claim 8), and that it “is a three-dimensionally formed layer having penetrating apertures extending from a first surface of the first perforated polymeric layer towards a second surface of the first perforated polymeric layer and forming protrusions on said second surface” (claim 4). The dependent claims’ additional language indicates that the term “perforated” within the term “perforated polymeric layer” in claim 1 is not limited in the manner asserted by Patent Owner’s proposed construction.” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“layer pierced through with holes or apertures,” we are persuaded that Petitioner meets its burden as to this limitation. Petitioner argues that under our construction, Bergstrom’s express disclosure of forming element 60, and Bergstrom’s explanation of the properties of forming element 60, meets the claimed “perforated polymeric layer” limitation. Pet. 38–41 (citing Ex. 1002 ¶¶ 114–117). Even under Patent Owner’s proposed construction, Petitioner argues, forming element 60 would also allow free flow of liquid bodily waste. Pet. Reply 3– 4 (citing Ex. 1021 ¶¶ 20–23). Importantly, Bergstrom expressly discloses: “suitable materials for the forming element 60 are plastic films, perforated plastic films and reinforced tissue or reinforced nonwoven materials.” Ex. 1004, 10:1–4. This express disclosure is clear. Even though the forming element 60 in Bergstrom might be “typically” liquid-impermeable (Ex. 1004, 9:24–30), that does not preclude a layer that is perforated, particularly where Bergstrom expressly discloses a perforated plastic film as one of the possibilities for forming element 60. Ex. 1004, 10:1–4. Additionally, although Patent Owner focuses on Bergstrom’s disclosure that forming element 60 is “typically liquid-impermeable” (PO Resp. 58–60; Ex. 1004, 9:24–30), we do not view Bergstrom’s use of the word “typically” as mandating that the forming element always be liquid impermeable. We agree that the word “typically” does not mean “always” and that such a reading would render “typically” superfluous. Pet. Reply. 5. We do not find any ambiguity in Bergstrom’s disclosure regarding possible use of perforated plastic films for its forming element 60; whether or not the forming element 60 provides other functions (like stiffness) does not dictate whether it may also be perforated, or be part of a fluid flow control structure. On this point, we credit Petitioner’s arguments and explanation, as supported by Dr. Pourdeyhimi’s testimony. Pet. Reply 6–7; Ex. 1021 ¶ 27–28 (“components of absorbent articles could be multifunctional”).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“from the start” (PO Resp. 29), and that “using all or part of [Glaug’s] fluid-acquisition system in place of [Nakazawa’s] diffusion sheet would be antithetical to the teachings of both references” (id. at 35), we agree that the proposed combination of Nakazawa’s structure with the layers of Glaug is sufficiently motivated and reasonably expected to result in a successful article, for the reasons articulated by Petitioner. See, e.g., Pet. 59–65; Ex. 1002 ¶¶ 176–192. Namely, although fluid may flow in both Z directions in Nakazawa (PO Resp. 30), that does not foreclose the combination with Glaug in the manner proposed by Petitioner. See generally Ex. 1002 ¶¶ 176–192; see id. ¶ 184 (detailing the mechanics of the proposed combinations), ¶¶ 188–191 (discussing motivation to combine), ¶ 192 (discussing reasonable expectation of success). The combination can be achieved “either by adding the lower acquisition layer 64 [of Glaug] to diffusion sheet 63 [of Nakazawa], or by replacing diffusion sheet 63 [of Nakazawa] with the two-layer fluid acquisition system 34 [of Glaug],” and as persuasively explained by Dr. Pourdeyhimi, the arrangement constitutes a “fluid flow control structure.” See Ex. 1021 ¶¶ 45–47. Additionally, the diffusion sheet in Nakazawa can be made from the same material as used in Glaug, namely, AquiDry™. Id. ¶¶ 53–55; see also Tr. 17:25–18:3 (“although Glaug does not specify the name AquiDry in its disclosure, Patent Owner’s expert testified that it’s his understanding that Glaug is discussing the AquiDry material, the same material that is in Nakazawa . . . . they disclose using the same material, and Nakazawa says this material work[s]”). When asked if Patent Owner’s expert had any concerns that AquiDry was not the same as between Nakazawa and Glaug, Patent Owner’s counsel replied “They are the same, Your Honor. And we embrace that.” Tr. 46:8–12; see also id. at 58:19 (Petitioner’s counsel commenting about Patent Owner’s counsel: “they agree, AquiDry is used in both Nakazawa and Glaug”). Thus, Patent Owner’s argument that Nakazawa’s diffusion sheet and Glaug’s fluid acquisition layer have different purposes because Nakazawa’s diffusion sheet allegedly must promote fluid flow in the Z-directions, both toward and away from the body (PO Resp. 29–37; Ex. 2004 ¶¶ 26–28, 30– 35)) is not clearly supported by Nakazawa, and is also contravened by the shared disclosure of Nakazawa and Glaug as to the composition of the disputed layer. We have reviewed the complete record, including Patent Owner’s and Mr. Sheldon’s assertions that Nakazawa requires promoting fluid flow in both Z-directions (see id.), but find that Petitioner carries its burden to demonstrate that one of ordinary skill in the art would have been motivated to combine Nakazawa and Glaug with a reasonable expectation of success. On this complete record, Petitioner explains sufficiently why and how a person of ordinary skill would modify Nakazawa’s diffusion sheet, i.e., to use Glaug’s fluid acquisition system, or the lower non-perforated layer of its fluid acquisition system, in Nakazawa, and Petitioner provides well-supported reasons for doing so.” slip op. at 36
Patent outcomesUS 9,308,138 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,308,138 - R.J. Reynolds Vapor Company v. Healthier Choices Management Corp.All claims unpatentablePTAB · Mar 9, 2026 · IPR2024-01458 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1, 7, 8, and 11 are unpatentable as obvious over Lee-based combinations; the Gilbert-based grounds did not establish unpatentability.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 15 (citing Ex. 1003 ¶ 18). Petitioner further argues a “POSA would have been familiar with electrically powered cigarettes and their components and underlying technologies or similar components and technologies.” Id. “For the purposes of this Response,” Patent Owner “does not dispute Petitioner’s proposed level of skill in the art.” Resp. 17. On this complete record, we adopt Petitioner’s unopposed definition because it appears consistent with the’788 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner states that “Petitioner and [Petitioner’s declarant] Mr. Kodama interpret the meaning of the claims based on [Patent Owner’s] construction of the claims by its allegations of infringement in the ongoing litigation.” Resp. 18. Patent Owner further states that for “the purposes of this response,” it “agrees on how the claims are to be construed.” Id. Upon review of the record, we determine that no claim terms require express construction. 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 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“the combination of proposed references would operate. As shown in Petitioner’s proposed modification, the Gilbert bulb would have been modified to fit the Lee device. Pet. 57 (annotated Figure); Ex. 1003 ¶ 123 (stating that the combination would work “by merely replacing [Lee’s] heating element (133) with this bulb heater inside of the vaporization unit (14)” and the “bulb heater could be connected to [Lee’s] electric circuit board (111) and battery assembly (11) in a very similar fashion to the nichrome wire heater represented in Lee”); Reply 29–30 (explaining Petitioner’s annotated figure wherein “the fiber rod is not encapsulated inside the bulb”); Ex. 1026 ¶¶ 29–30 (clarifying how the fiber in Petitioner’s proposed combination from its annotated Figure in the Petition extends to, and makes contact with, the outside of the bulb, putting the fluid into direct contact with the bulb; explaining various simple ways a POSA would understand to accomplish this). We credit Petitioner’s proposal and Mr. Kodama’s testimony in this regard. Therefore, we agree that Lee would not have to be “significantly modified or reimagined” as alleged by Patent Owner, nor would the inclusion of a bulb in the Lee device “render Lee inoperable” in view of the modifications to the Gilbert bulb included in Lee, as proposed by Petitioner. Resp. 30–31.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“art would not have combined Lee and Gilbert or Levin, particularly with respect to element [1d], we are persuaded by Petitioner’s arguments that one of ordinary skill in the art would have been motivated to make the combination with a reasonable expectation of success. Petitioner states that the motivation to make the combination would have come from issues “with e-cigarettes at the time, such as metallic taste issues or inhalation risks associated with the use of a metal wire heating element,” and would have explored “heat conducting materials that could vaporize the nicotine liquid without making direct contact with the heating wire.” Pet. 57 (citing Ex. 1003 ¶ 117 (discussing the metallic flavor “dry hit” problem)); see also Reply 18–19. Additionally, Petitioner argues that one of ordinary skill in the art would have implemented “a heating element within a glass bulb to increase the life of the heating element and prevent failure of a device.” Id. at 57–58 (citing Ex. 1009 ¶ 4; Ex. 1003 ¶ 119), 59 (a “POSA would have been motivated to implement a heating element within a glass bulb like that described in Levin for all of the reasons described above” in connection with Gilbert). Petitioner depicts one example of how its proposed combination would incorporate the Gilbert bulb into the Lee device. Pet. 57 (citing Ex. 1003 ¶ 118)). Petitioner additionally relies on Levin’s disclosure that using a bulb will “allow for a consistent and reliable heat source” and “achieve a desired operating temperature when compared to conventional devices.” Id. at 59 (citing Ex. 1009 ¶¶ 56, 49). Mr. Kodama also notes the age and ubiquity of bulb heaters, credibly testifying that “a POSA would have been motivated to implement a bulb heater in the Lee device, and, due at least to the ubiquitous nature of such heaters, the implementation of such a heater would have been well within the knowledge and skill of a POSA.” Pet. 59; Reply 20; Ex. 1003 ¶¶ 39–48, 123. Petitioner also provides sufficient explanation as to “how” and “why” the combination of proposed references would operate. As shown in Petitioner’s proposed modification, the Gilbert bulb would have been modified to fit the Lee device. Pet. 57 (annotated Figure); Ex. 1003 ¶ 123 (stating that the combination would work “by merely replacing [Lee’s] heating element (133) with this bulb heater inside of the vaporization unit (14)” and the “bulb heater could be connected to [Lee’s] electric circuit board (111) and battery assembly (11) in a very similar fashion to the nichrome wire heater represented in Lee”); Reply 29–30 (explaining Petitioner’s annotated figure wherein “the fiber rod is not encapsulated inside the bulb”); Ex. 1026 ¶¶ 29–30 (clarifying how the fiber in Petitioner’s proposed combination from its annotated Figure in the Petition extends to, and makes contact with, the outside of the bulb, putting the fluid into direct contact with the bulb; explaining various simple ways a POSA would understand to accomplish this). We credit Petitioner’s proposal and Mr. Kodama’s testimony in this regard. Therefore, we agree that Lee would not have to be “significantly modified or reimagined” as alleged by Patent Owner, nor would the inclusion of a bulb in the Lee device “render Lee inoperable” in view of the modifications to the Gilbert bulb included in Lee, as proposed by Petitioner. Resp. 30–31.” slip op. at 24
Patent outcomesUS 9,538,788 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,538,788 - Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.No claims unpatentablePTAB · Feb 24, 2026 · IPR2024-01198 · APJ Jo-Anne M Kokoski · IPR · Final written decision
Claims 10–20 were not shown unpatentable because Petitioner did not establish the claimed metal impurities or a reason to combine Istratov’s gettering process with the cited solar-cell references.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“These disclosures, taken together, indicate that “metal impurities” are undesirable, and, accordingly, the term “metal impurities” is not meant to include intentionally added dopants. The undesirability of “metal impurities” is also demonstrated by the Specification’s instruction that “contaminants and/or impurities” are used interchangeably throughout. Ex. 1001, 5:8–9. In that regard, “iron, nickel, and/or chromium, among others” are the only exemplary metal impurities and/or metal contaminants identified in the Specification. Id. at 4:65–5:1 (“In an embodiment, the silicon substrate 202 can have contaminants and/or impurities 220, for example metal contaminants and/or metal impurities, such as iron, nickel and/or chromium, among others); 5:35–39 (“In an embodiment, the heating can include gettering contaminants, e.g., metal impurities and/or metal contaminants, from the substrate to the emitter region. In an example, the metal impurities and/or metal contaminants can be iron, nickel, and/or contaminants 520, e.g. metal impurities and/or contaminants, can be located in the second emitter region 512 . . . the metal impurities 520 can be iron, nickel and/or chromium, among others.”). And metal impurities and metal contaminants are both described as gettering from the silicon substrate to the emitter region. See id. at 5:5–9 (“A gettering process can be used to trap the metal impurities 220 in the emitter regions 212, reducing recombination within the silicon substrate 202 and improving overall cell lifetime.”); 5:35– 40 (“In an embodiment, the heating can include gettering contaminants, e.g. metal impurities and/or metal contaminant[s], from the substrate to the emitter region. In an example, the metal impurities and/or metal contaminants can be iron, nickel and/or chromium among others.”); 6:5–8 (“In an embodiment, the heating can getter 232 contaminants 220 from, or nearby, the surface 204 of the silicon substrate 202 and/or from within the silicon substrate 202 to the emitter region 212.”) Accordingly, the Specification conveys that “metal impurities” are metal contaminants that are detrimental to the electrical conduction of solar cells.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Petitioner fails to sufficiently demonstrate by a preponderance of the evidence that a POSITA would have been motivated to look to Istratov’s gettering process to improve Choi’s solar cell. Although Petitioner argues that a POSITA would have been motivated to look to Istratov’s gettering process upon identifying detrimental levels of metal impurities in Choi’s substrate, neither Petitioner nor Dr. Holman levels of metal impurities in Choi’s substrate, what level of metal impurities would be “detrimental,” or what detriment the metal impurities would cause. In that regard, Petitioner does not direct us to, nor do we discern, any teachings in Choi regarding the presence of metal impurities in the silicon substrate, let alone iron and/or copper impurities such as those described in Istratov.” slip op. at 24
- ExcludeMotion to exclude, deniedDenied
“We agree with Petitioner. As the Board indicated in Chicago Mercantile Exchange, whether a document qualifies as a printed publication requires a legal determination based upon evidence and “the issue of whether there is sufficient evidence in the record . . . should be presented in the patent owner response—not a motion to exclude.” Chicago Mercantile Exchange, Paper 35 at 52. Although addressing the admissibility of evidence (authenticity or hearsay) underlying the factual determinations of whether Exhibits 1018, 1034, and 1120 may be the subject of a motion to exclude, Patent Owner’s arguments in the Motion address whether there is sufficient evidence to establish that these exhibits are prior art, not the general admissibility of the documents. See Mot. 3–6; Chicago Mercantile Exchange, Paper 35 at 52. be excluded. These exhibits, for the most part, are offered to support Dr. Holman’s testimony regarding the background of the technology (Ex. 1003 ¶¶ 42, 43, 45–52, 56, 57 (citing Ex. 1018), 55, 67 (citing Ex. 1034)) or what the ordinarily skilled artisan would have understood (Pet. Reply 11 (citing Ex. 1120); Ex. 1089 ¶¶ 46–48, 56, 59, 60, 69 (citing Ex. 1120)). Furthermore, Exhibit 1018 was authored by Dr. Holman, and is identified in the curriculum vitae appended to Dr. Holman’s declaration in support of the Petition. Ex. 1003, 224 (App’x. A). Accordingly, we deny Patent Owner’s motion to exclude” slip op. at 32
Patent outcomesUS 11,251,315 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,251,315 - Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.Some claims unpatentablePTAB · Feb 24, 2026 · IPR2024-01203 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–11 are unpatentable as obvious; claim 12 was not shown unpatentable because the evidence did not establish that Froitzheim’s silver contact was formed over silicon dioxide.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had (i) an advanced degree in electrical engineering, mechanical engineering, applied physics, chemistry, materials science, or a related discipline and (ii) at least one year of experience 7 Neither Petitioner nor Patent Owner raises issues of objective indicia of nonobviousness. designing, developing, or researching the design and/or manufacture of solar cells or related technologies. Alternatively, a POSITA [i.e., a person of ordinary skill in the art] would have had (i) a bachelor’s degree in the aforementioned disciplines and (ii) at least two years of experience designing, developing, or researching the design and/or manufacture of solar cells or related technologies. Less work experience may be compensated by a higher level of education, and vice versa.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe claim terms according to the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc); 37 C.F.R. § 42.100(b). Under Phillips, we give claim terms “their ordinary and customary meaning.” Phillips, 415 F.3d at 1312. “[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Id. at 1313. “Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” Id.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We are persuaded that Petitioner has shown a reasonable expectation of success in the combination of Froitzheim and Gan. Petitioner explains that the combination of Froitzheim and Gan simply replaces one emitter, i.e., Froitzheim’s diffused emitter, with the polysilicon emitter of Gan. Pet. 36. According to Petitioner, a person of ordinary skill in the art would have also readily understood how to replace a diffused emitter with a polysilicon emitter and oxide layer [and] would have understood that instead of diffusing boron into the substrate’s back side as taught by Froitzheim, a [person of ordinary skill in the art] would instead follow the manufacturing technique taught by Gan. Pet. 37 (citing Ex. 1005, 246). Petitioner explains that the Gan processes are well-known and routine, and Dr. Holman states that “modifying Froitzheim in view of Gan simply involves using Gan’s known technique of a polysilicon emitter and oxide layer with Froitzheim’s known solar cell to improve Froitzheim’s solar cell in a similar way.” Pet. 37 (citing Ex. 1003 ¶ 144). For example, Petitioner directs our attention to “multiple instances” in which oxide layers and polysilicon emitters have been implemented successfully in the art. Pet. 37 (citing Ex. 1005, 246; Ex. 1006 ¶ 22; Ex. 1046, Abstr., 1121; Ex. 1003 ¶ 145). Furthermore, Gan’s statement that “cell performance can be improved if the diffused-emitter is replaced with the polysilicon emitter” and “polysilicon emitters with low J0 and ρc can be obtained with a very small fraction of interfacial oxide breakup” indicate a reasonable expectation of success. Ex. 1005, 245, 249. Gan also states that “polysilicon emitters with these qualities can be quite useful for silicon concentrator solar cells.” Ex. 1005, 249. Thus, we are persuaded that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Froitzheim and Gan.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We are not persuaded the record evidence rises to the level of a teaching away. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). And “teaching away” requires more than the mere expression of a general preference.” Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Notably, our reviewing court has determined that a reference can distinguish prior art in order to show the novelty of an invention without teaching away from combining the prior art with the invention disclosed in the reference. See Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008). Here, Li prefers a “heterogeneous PN junction” and states that “a PN junction is prepared by a low-temperature deposition method, which avoids a conventional diffusion process at 800–1000°C. Such high-temperature process will cause more defects or contamination in silicon material, which will affect the improvement of cell efficiency.” Ex. 1008, 4. But, Li’s preference for lower temperature diffusion processes does not amount to a teaching away from the broader disclosure. In fact, Li acknowledges that “[t]he silicon thin film can be prepared by any deposition method,” including conventional processes at higher temperatures. Ex. 1008, 4 (emphasis added). And, while Patent Owner asserts that “[d]eposition methods are not relevant to the parties’ dispute, which is over deposition temperature” (Sur-reply 17), the deposition method employed includes its deposition temperature. See Ex. 1008, 4 (Li describing “conventional” diffusion processes at temperatures of 800–1000° C). Thus, just because Li teaches one way of depositing its silicon thin film using a low-temperature deposition method does not mean that Li teaches away from high-temperature processes. Li’s teachings do not discredit or discourage high-temperature processes in a manner that may be said to teach away.” slip op. at 51
Patent outcomesUS 8,222,516 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,222,516 - Hanwha Solutions Corporation v. Maxeon Solar Pte. Ltd.All claims unpatentablePTAB · Feb 24, 2026 · IPR2024-01199 · APJ Avelyn M Ross · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over the grounds combining Froitzheim, Gan, and Smith, or Li, Gan, and Smith.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner also states that the Patent Owner “applies the level of ordinary skill in the art Petitioner proposed.” PO Resp. 24. 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 ’053 patent and the prior art of record, we determine that the definition offered by Petitioner and applied by Patent Owner comports with the qualifications a person would have needed to understand the ’053 patent and the prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that “[t]he claims should be given their plain and ordinary meaning to resolve the issues in this proceeding.” Pet. 17 (citing Ex. 1003 ¶¶ 102–105). Patent Owner states that its Patent Owner Response “adopts petitioner’s proposal to apply the plain and ordinary meaning of the claims.” PO Resp. 24. Accordingly, we need not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“teaching away. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). And, “teaching away” requires more than the mere expression of a general preference. Galderma Labs., L.P., v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013). Notably, our reviewing court has determined that a reference can distinguish prior art in order to show the novelty of an invention without teaching away from combining the prior art with the invention disclosed in the reference. See Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008). Here, Li prefers a “heterogeneous PN junction” and states that “a PN junction is prepared by a low-temperature deposition method, which avoids a conventional diffusion process at 800–1000°C. Such high-temperature process will cause more defects or contamination in silicon material, which will affect the improvement of cell efficiency.” Ex. 1008, 4. But, Li’s preference for lower temperature diffusion processes does not amount to a teaching away from the broader disclosure. In fact, Li acknowledges that “[t]he silicon thin film can be prepared by any deposition method,” including conventional processes at higher temperatures. Ex. 1008, 4 (emphasis added). And, while Patent Owner asserts that “[d]eposition methods are not relevant to the parties’ dispute, which is over deposition temperature” (Sur-reply 17), the deposition method employed includes its deposition temperature. Thus, just because Li teaches one way of depositing its silicon thin film using a low-temperature deposition method does not mean that Li teaches away from high-temperature processes. Li’s teachings do not discredit or discourage high-temperature processes in a manner that may be said to teach away.” slip op. at 44
Patent outcomesUS 8,878,053 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,878,053 - PTAB · Feb 10, 2026 · IPR2025-00687 · APJ Kristina M Kalan · IPR · Remand
On remand, the Board instituted IPR on claims 1–8 and 10–18 over all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRemand decision- RemandInstituted
“Paper 34, 1 (requesting “Director Review of the Director’s August 22, 2025 Decision Referring the Petition to the Board (‘Referral Decision’)”). Patent Owner argued that institution of IPR2025-00687 and IPR2025-00688 “should be discretionarily denied.” Id. at 5. Petitioner opposed. Paper 37. The Director granted review and found that “granting institution of two petitions that each challenge the same claims of the ’370 patent and ’218 patent 2” was an “abuse[] of discretion.” Paper 40, 1. The Director remanded the cases “to the Board panel to determine which of the two petitions challenging each of the ’370 and ’218 patents to institute.” Id. at 3. Pursuant to the Director’s instruction that we choose only one of the two petitions challenging the ’370 patent to institute, and for the reasons set forth below, we choose to institute review of the ’370 patent in this Petition, and not in IPR2025-00688.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Petitioner bears the burden of demonstrating compliance with 35 U.S.C. § 312(a)(2) and § 315(b). See, e.g., Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 (PTAB Jan. 24, 2019)” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, 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). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “[does] not, at this time, contend that any term requires construction,” and instead, states that “[a]ll terms have been accorded their plain and ordinary meaning.” Pet. 11 (citing Ex. 1002 ¶¶ 212–215). Patent Owner asserts that it “does not presently propose any constructions,” but discusses the Board’s claim construction in IPR2020- 00834, Paper 18, 7–8. Prelim. Resp. 7. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,933,370 - PTAB · Feb 10, 2026 · IPR2025-00717 · APJ Zhenyu Yang · IPR · Remand
On remand, the Board instituted IPR of claims 1–4 and 6–26 on all six asserted obviousness grounds, finding a reasonable likelihood of prevailing.
RulingsRemand decision- Director reviewDirector review, grantedOther
“The Director granted Director Review, finding that the panel “abused its discretion in granting institution of two petitions that each challenge the same claims” of the ’218 patent. Paper 39, 2. The Director vacated the DI and remanded the case “to the Board panel to determine which of the two petitions” to institute. Id. at 4.” slip op. at 4
- Parallel petitionsDecided for petitioner
“On November 4, 2025, we instituted inter partes review of all challenged claims based on all the grounds raised in the Petition. Paper 35 (“DI”). In the DI, we noted that “Petitioner filed an explanation regarding the necessity of multiple petitions,” and “Patent Owner d[id] not challenge that multiple petitions are necessary” in the Preliminary Response. Paper 23, 3 n.3.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Therefore, we institute inter partes review of all challenged claims based on all the grounds raised in this Petition.3” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’218 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,926,218
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.