- PTAB · Jan 14, 2026 · IPR2025-00632 · APJ Mitchell G Weatherly · IPR · Remand
On remand, the Board reinstituted review of all challenged claims on all grounds after finding Petitioner sufficiently explained its differing claim-construction positions.
RulingsRemand decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Id. The Director neither addressed the merits of Petitioner’s challenges nor found that our prior consideration of those merits was faulty. Accordingly, we understand that we need not reconsider our conclusion that Petitioner had demonstrated a reasonable likelihood of proving that claims 1, 2, 7–9, 11, 12, and 20–24 were unpatentable or that the merits of patentability set forth in the Petition warranted institution of inter partes review.” slip op. at 5
- BurdenDecided for petitioner
“The question before us, therefore, is whether the Petitioner’s proffered explanation that it has proposed a different claim interpretation before the Board because the District Court may decline to adopt the narrower claim interpretations it advocates there is sufficient. We find that Petitioner’s explanation is sufficient because it follows the Director’s exemplary logic. Whether a district court has already or might in the future decline to adopt constructions that a petitioner proposes in related district court litigation merely reflects the timing of when a dispute over claim interpretation will be resolved. The Director and Patent Owner both recognize that, to resolve the dispute over claim interpretation that exists here, a decision-maker must determine “a single claim construction that best captures the true meaning of the patent claim.” Remand 4; PO Remand Br. 3. Based on the record presented by the parties to date in this proceeding, no dispute exists that the disputed claim terms mean what Patent Owner says they mean in the Litigation. Accordingly, we find that, at this stage of the proceeding, it is undisputed that Patent Owner’s interpretations of the claim terms represent the “single claim construction that best captures the true meaning of the patent claim.”8 Under that claim interpretation, we” slip op. at 8
NonePatents in suitUS 11,835,421 - PTAB · Jun 25, 2025 · IPR2024-01280 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution under § 314(a), finding the Fintiv factors favored denial despite declining to deny under § 325(d).
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Other than initials on a lengthy IDS, nothing in the record indicates that the Examiner substantively considered Takeuchi, Kim, Pienemann, or among over 1,000 other references listed on the IDS, which, as noted in the Director Review Decision, “is over 40 times the size of a typical IDS.” Pet. Remand Br. 5–6; DR Dec. 7 n.3 (citing Setting and Adjusting Patent Fees During Fiscal Year 2025, 89 FR 91898 at 91924 (Nov. 20, 2024)); Ex. 1002, 228–284. Petitioner also shows that the applicant did not respond to the Examiner’s request that the applicant specifically point out “any particular reference or portion of a reference in the [IDS] which the examiner should take [sic] pay particular attention to.” Ex. 1002, 174, 295– 302.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing a month after the Institution Decision issued, and the target date for the ITC’s final determination is several months before the projected statutory deadline for the Board’s final written decision. PO Remand Br. 7. Accordingly, we determine that Fintiv factor 1 weighs in favor of discretionary denial. See also Klein Tools, Inc. v. Milwaukee Electric Tool Corp., IPR2024-01400, Paper 22 at 2 (PTAB June 9, 2025) (Acting Director Stewart determining that Fintiv factor 1 weighs in favor of discretionary denial when the ITC investigation is unlikely to be stayed, the ITC already conducted a full evidentiary hearing, and the ITC final determination is expected to issue six months before the statutory deadline for the Board’s final written decision).” slip op. at 19
Discretionary denialcites PhillipsPatents in suitUS 11,925,202 - PTAB · Jun 25, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Remand
On remand, the Board denied institution of review of claims 1, 3, 4, 8–13, and 15 under § 314(a), finding the Fintiv factors favored discretionary denial.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“stay or evidence exists that one may be granted if a proceeding is instituted.” Fintiv, Paper 11 at 6. A stay of litigation pending resolution of an inter partes review allays concerns about inefficiency and duplication of efforts, and strongly weighs against exercising our authority to deny institution. Fintiv, Paper 11 at 6. The Guidance Memo states that “the Board will apply the Fintiv factors when there is a parallel proceedings at the International Trade Commission.” Guidance Memo 2. Patent Owner asserts that a stay of the ITC Investigation had not been requested at the time of the Institution Decision,7 and argues that “the ITC does not stay investigations pending IPR.” PO Supp. Br. 4. Patent Owner also notes that the Institution Decision issued “just days before the ITC evidentiary hearing.” Id. Accordingly, Patent Owner argues that this factor favors denial. Id. Patent Owner is likely correct that the ITC would not have been inclined to grant a stay if one had been requested at the time the Institution Decision issued. Moreover, the ITC conducted a full evidentiary hearing less than three weeks after the Institution Decision issued, and the target date for the ITC’s final determination is four months before the statutory deadline for the Board’s final written decision. PO Supp. Br. 5. Accordingly, we” slip op. at 9
Discretionary denialPatents in suitUS 11,925,202 - PTAB · May 15, 2024 · IPR2023-00268 · APJ Sean P O’Hanlon · IPR · Remand
The Board instituted IPR on claims 1–3, 5–10, 16–18, and 21–25 based on all asserted grounds, finding a reasonable likelihood of success on anticipation and obviousness.
RulingsRemand decision- RehearingOther
“On August 11, 2023, a majority of the panel entered a Decision denying institution of inter partes review. Paper 9 (“Board Decision”). On September 11, 2023, Petitioner timely filed a request for Director Review of the Board Decision. Paper 10. On November 7, 2023, the Director delegated Director Review of the Board Decision to a Delegated Review Panel (“DRP”). Paper 11. On February 21, 2024, the DRP issued a decision granting Petitioner’s request for Director Review rehearing, vacating the Board Decision, and remanding to the original panel to reconsider whether to institute review. Paper 14 (“DRP Dec.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“[T]he Board’s cases addressing earlier trial dates as a basis for denial under NHK have sought to balance considerations such as system efficiency, fairness, and patent quality.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5 (PTAB Mar. 20, 2020) (designated precedential). Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),1 which provides several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (designated precedential in relevant part). 1 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Petitioner stipulates “not to pursue, in the[Delaware litigation], any argument that the Challenged Claims are invalid on any ground that was raised or could have been reasonably raised in this [inter partes review], should th[e] petition be instituted.” Pet. 86; see also Ex. 1057, 1 (“If the Patent Trial and Appeal Board institutes a proceeding for [this inter partes review], [Petitioner] will not pursue in the [Delaware litigation], any argument that the challenged claims of the patent in [this inter partes review] are invalid on any ground that was raised or could have been reasonably raised in [this inter partes review] proceeding.”). Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims is unpatentable. At this preliminary stage, we have not made a final determination with respect to the patentability of the challenged claims or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Accordingly, inter partes review is instituted as to all challenged claims and all proposed grounds of unpatentability. See 37 C.F.R. § 42.108(a). V. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–3, 5–10, 16–18, and 21–25 of the ’779 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. We note that Patent Owner’s declarant, Dr. Vancura, uses essentially the same definition as Petitioner. See Ex. 2001 ¶ 33. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,200,779 - PTAB · Oct 7, 2022 · IPR2021-00680 · APJ David C Mckone · IPR · Final written decision
Claims 1–3, 5, 7, 9–11, 14–16, 19, 21, 32–37, 39, 47, and 49–57 are unpatentable as obvious; the remaining challenged claims were not shown unpatentable.
Nonecites KSR · GrahamPatents in suitUS 10,469,934 - PTAB · Nov 14, 2016 · IPR2015-01243 · APJ Grace Karaffa Obermann · IPR · Final written decision
Petitioner failed to prove claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, and claims 1–6 and 8–19 of the ’510 patent obvious over Fohr, Sato, and …
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We recognize that it may be necessary “to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l, 550 U.S. at 418. Petitioner in these proceedings, however, directs us to no persuasive reason why an ordinary artisan would have turned to the heat-retaining battery module of Hallaj when working to implement a plurality of Sato’s cells in a pack to replace the capacitors in Fohr. Pet. 36–38 (nowhere addressing that critical point); Reply 13 (devoting four sentences to rebuttal of Patent Owner’s persuasive evidence that one would not have combined the disclosures of Hallaj, Fohr, and Sato in the manner claimed); see Ex. 1033, 15 (Examiner’s observation, in confirming the patentability of the challenged claims during reexamination, that Sato contains “no information as to how Sato’s cells would be implemented in a pack”). We view Petitioner’s unexplained leap from the single battery cell of Sato to the heat-retaining battery module of Hallaj as a classic example of impermissible hindsight reconstruction driven not by any teaching in the prior art, but by the claim requirement of a “plurality” of cells implemented in a battery pack. Pet. 36–38; Reply 13. Patent Owner, by contrast, comes forward with persuasive evidence, which we credit, showing that one of ordinary skill in the art would not have been led to arrange a plurality of Sato’s cells in the heat-retaining battery module of Hallaj because such a modified battery pack would have been unsuitable for use as a replacement for the capacitors in Fohr. Specifically, we credit the testimony of Dr. Blomgren, who cogently explains why a person of ordinary skill in the art would not have been led to the proposed modification. Ex. 2147 ¶¶ 79–85.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are not persuaded by Dr. Riley’s testimony that Fohr effectively teaches that both lithium-based battery cells and capacitors can achieve the 20 Amp Limitation, on a theory that “it’s actually the tool that draws the power” and “the right lithium cell” would be “a drop in replacement for this application.” Ex. 2169, 121:12–16 (Dr. Riley’s deposition testimony); Resp. 17. Dr. Riley readily admitted an unfamiliarity with capacitors, and identified no suitable “drop in” ready lithium cells available at the time of the invention. Ex. 2169, 121:11–122:4 (“[I]f I had a cell that could do similar things, I’d certainly swap it in there.”). On that point, we find more credible Dr. Blomgren’s testimony that “there is no guarantee that a given pack of battery cells can provide the current that a tool tries to draw.” Resp. 17 (citing Ex. 2147 ¶ 60).” slip op. at 13
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,944,173 - PTAB · Sep 24, 2014 · IPR2014-00969 · APJ Donna M Praiss · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding under the settlement, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Under these circumstances, the Board determines that it is appropriate to terminate this proceeding without rendering a final written decision. 37 C.F.R. § 42.72. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 2
NonePatents in suitUS 7,123,117 - PTAB · Sep 2, 2014 · IPR2014-00472 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motion to terminate the preliminary IPR proceeding and terminated it without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“these circumstances, the Board determines that it is appropriate to enter judgment2 and terminate without rendering a final written decision under 37 C.F.R. § 42.72. ORDER It is, therefore, ORDERED that the joint motion to terminate this proceeding is GRANTED and the proceedings are hereby terminated; and FURTHER ORDERED that the settlement agreement shall be treated as business confidential information.” slip op. at 3
NonePatents in suitUS 7,096,358 - PTAB · Aug 25, 2014 · IPR2014-00582 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the three proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,149,124 - PTAB · Aug 25, 2014 · IPR2014-00588 · APJ Glenn J Perry · IPR · Order
The Board granted the parties’ joint motions and terminated the proceedings before institution, without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Each of the captioned inter partes review cases is in its preliminary stage. The Petition in each of the captioned cases has not been granted. Under these circumstances, the Board determines that it is appropriate to enter judgment4 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72.” slip op. at 3
NonePatents in suitUS 8,466,795
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.