- Seaspine Holdings Corporation v. Roger P. Jackson, M.D.Institution deniedPTAB · Aug 7, 2025 · IPR2025-00773 · APJ Mary C Hoffman · IPR · Institution
The Board denied institution because Patent Owner disclaimed claims 1–19, and declined to enter adverse judgment.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“challenged in the Petition and paid the requisite fee. See Ex. 2001; 37 C.F.R. § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested review. 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution based on pre-institution disclaimer of all challenged claims) (“General Electric”).” slip op. at 2
- Adverse judgmentAdverse judgmentDecided for patent owner
“interpreted Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner disclaims all challenged claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018). But neither Arthrex nor Rule 42.73(b) require the entry of adverse judgment. Instead, under these circumstances, the Board has discretion to decide whether or not to enter adverse judgement. See, e.g., Bestway (USA), Inc. v. Intex Mktg., Ltd., PGR2024-00036, Paper 9, 6 (PTAB Oct. 28, 2024) (“Bestway”). Based on the facts of this case, we believe that efficient administration weighs against entry of adverse judgment. Thus, consistent with Rule 42.107(e) and General Electric, denial of institution is sufficient to dispose of this matter. See, e.g., Bestway at 8; Samsung Electronics Co., Ltd. v. Oura Health OY, IPR2024-00929, Paper 8, 3 (PTAB Dec. 9, 2024); Takeda Vaccines, Inc., v. Valneva Austria Gmbh, IPR2023-00354, Paper 7, 4 (PTAB June 9, 2023); Microsoft Corp. v. Litl, LLC, IPR2021-01011, Paper 11, 3 (PTAB Apr. 5, 2022); Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper 13, 7 (PTAB Mar. 14, 2021).” slip op. at 3
NonePatents in suitUS 11,399,873 - PTAB · Jul 25, 2025 · IPR2025-00237 · APJ Annette R Reimers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 6, 11, 12, 17, 21, 23, 27, 28, or 30 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’879 patent is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not contest the level of ordinary skill in the art set forth in the Petition. Prelim. Resp. 19. Because Petitioner’s unopposed definition is consistent with the ’879 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In particular, we agree with Patent Owner that Cantor does not teach or suggest contacting a ‘tissue section’ with its beads, let alone that its beads could be contacted with a tissue section to identify spatial location. Prelim. Resp. 36–48. In this case, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from a biological sample and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 36 (citing EX.1031 1:5–6). More specifically, according to Dr. Cantor, “[f]or bulk-analysis methods, nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Dr. Cantor further explains that in bulk-analysis methods, the mixture is analyzed to determine if a particular nucleic acid was present in the tissue sample or not. They cannot, however, determine where the molecule was in the tissue sample. As such, bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples. This is in contrast to spatial analysis methods such as those claimed in the ’879 patent which can determine both if a biological molecule was present in a tissue sample and where the molecule was in the tissue sample. Id. at ¶¶ 16–17. Although we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 24, 30–31 (citing to Dr. Puglisi, Ex. 1102 ¶¶ 133, 155, respectively), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mention of “tissue” made in Cantor is in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue section itself. See Ex. 2002 ¶¶ 142, 143 (Dr. Cantor testifying that (1) “a POSA would only be able to determine where on the array a target nucleic acid was captured, but not where in the original tissue section the nucleic acid came from,” because “all information about the spatial location of a target nucleic acid in a tissue sample is lost when the nucleic acid sample is prepared as Cantor teaches”; and (2) “Cantor [] does not teach or suggest contacting its solid supports (e.g. beads) with a tissue section and certainly not with its beads at known locations to obtain spatial information.”).” slip op. at 23
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claim 1 are supported by the’124 provisional and/or whether the ’879 patent’s priority chain is intact. Pet. 57–66. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find that (1) the’124 provisional provides adequate written description support for each of the challenged claim elements; (2) the ’879 patent’s priority chain is intact; and (3) the ’879 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims. Because Frisen is not prior art, we do not specifically comment on its teachings, nor the factual assertions regarding its teachings provided by Petitioner or Patent Owner. 4. Conclusion For the foregoing reasons, we determine that Petitioner has not established a reasonable likelihood of showing that Frisen anticipates any of claims 1, 2, 5, 6, 11, 12, 17, 21, 23, 27, 28, and 30.” slip op. at 32
§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,001,879 - PTAB · Jul 25, 2025 · IPR2025-00236 · APJ Annette R Reimers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 6, 7, 12, 13, 18, 20, 21, 23, 25, 26, or 30 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’468 patent is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a doctorate degree (or equivalent) in bioengineering, genetics, genomics, chemistry, biochemistry, biophysics, molecular imaging or a related discipline with at least 2-4 years of academic, research, or industry experience in genomic technology. In the course of their training and experience, the POSA would have acquired a working knowledge of nucleic acid arrays, combinatorial chemistry techniques for making and using such arrays, nucleic acid sequencing and sample preparation techniques, such as barcoding, imaging methods for signal detection, as well as histopathology techniques for cell permeabilization and tissue handling. Pet. 13–14 (citing Ex. 1102 ¶¶ 30–32). Patent Owner does not contest the level of ordinary skill in the art set forth in the Petition. Prelim. Resp. 19. Because Petitioner’s unopposed definition is consistent with the ’468 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In particular, we agree with Patent Owner that Cantor does not teach or suggest contacting a ‘tissue section’ with its beads, let alone that its beads could be contacted with a tissue section to identify spatial location. Prelim. Resp. 37–44. In this case, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from a biological sample and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 36 (citing EX.1031 1:5–6). More specifically, according to Dr. Cantor, “[f]or bulk-analysis methods, nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Dr. Cantor further explains that in bulk-analysis methods, the mixture is analyzed to determine if a particular nucleic acid was present in the tissue sample or not. They cannot, however, determine where the molecule was in the tissue sample. As such, bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples. This is in contrast to spatial analysis methods such as those claimed in the ’468 patent which can determine both if a biological molecule was present in a tissue sample and where the molecule was in the tissue sample. Id. at ¶¶ 16–17. Although we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 25–26, 32–33 (citing to Dr. Puglisi, Ex. 1102 ¶¶ 133, 135, respectively), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mention of “tissue” made in Cantor is in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue section itself. See Ex. 2002 ¶¶ 142, 143 (Dr. Cantor testifying that (1) “a POSA would only be able to determine where on the array a target nucleic acid was captured, but not where in the original tissue section the nucleic acid came from,” because “all information about the spatial location of a target nucleic acid in a tissue sample is lost when the nucleic acid sample is prepared as Cantor teaches”; and (2) “Cantor [] does not teach or suggest contacting its solid supports (e.g. beads) with a tissue section and certainly not with its beads at known locations to obtain spatial information.”).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“In particular, we agree with Patent Owner that Cantor does not teach or suggest contacting a ‘tissue section’ with its beads, let alone that its beads could be contacted with a tissue section to identify spatial location. Prelim. Resp. 37–44. In this case, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from a biological sample and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 36 (citing EX.1031 1:5–6). More specifically, according to Dr. Cantor, “[f]or bulk-analysis methods, nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Dr. Cantor further explains that in bulk-analysis methods, the mixture is analyzed to determine if a particular nucleic acid was present in the tissue sample or not. They cannot, however, determine where the molecule was in the tissue sample. As such, bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples. This is in contrast to spatial analysis methods such as those claimed in the ’468 patent which can determine both if a biological molecule was present in a tissue sample and where the molecule was in the tissue sample. Id. at ¶¶ 16–17. Although we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 25–26, 32–33 (citing to Dr. Puglisi, Ex. 1102 ¶¶ 133, 135, respectively), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mention of “tissue” made in Cantor is in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue section itself. See Ex. 2002 ¶¶ 142, 143 (Dr. Cantor testifying that (1) “a POSA would only be able to determine where on the array a target nucleic acid was captured, but not where in the original tissue section the nucleic acid came from,” because “all information about the spatial location of a target nucleic acid in a tissue sample is lost when the nucleic acid sample is prepared as Cantor teaches”; and (2) “Cantor [] does not teach or suggest contacting its solid supports (e.g. beads) with a tissue section and certainly not with its beads at known locations to obtain spatial information.”).” slip op. at 23
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,662,468 - Resmed Corp. v. Cleveland Medical Devices, Inc.Institution deniedPTAB · Jun 10, 2025 · IPR2025-00157 · APJ Cynthia M Hardman · IPR · Institution
The Board denied institution of ResMed’s challenge to claims 1–3, 6, and 12–20 under General Plastic because the follow-on petition followed an earlier petition challenging the same claims.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“We find that in view of Petitioner’s prior petition, this factor favors discretionary denial. Code200 is distinguishable. There, the Board exercised its discretion to deny institution of the earlier petitions under 35 U.S.C. § 314(a) based on Fintiv. Code200, Paper 18, 2 n.3. Here, the Board did not discretionarily deny the previous petition, but rather denied it because Petitioner failed to carry its burden of demonstrating a threshold requirement for post-grant review, namely that the patent is eligible for postgrant review. See PGR Dec. 9–10, 24. In evaluating the eligibility issue, the Board thoroughly addressed the merits of Petitioner’s arguments that the ’284 patent claims lack adequate written description and enablement support in the priority applications such that the claims are not entitled to any of the pre-2013 priority dates listed on the face of the patent. See PGR Dec. 10–24. This issue extensively overlapped with Petitioner’s grounds of unpatentability based on lack of written description and enablement in the post-grant petition, which Petitioner included together with prior art challenges. See PGR Dec. 6–7. As such, contrary to Petitioner’s argument, it did have “the opportunity to pursue a decision on the merits,” but failed to carry its burden to secure postgrant review. Prelim. Reply 1 (emphasis added).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied general plasticInstitution denied
“institute review. An inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “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 explained below, we exercise our discretion to deny institution of this follow-on petition because Petitioner previously filed a post-grant review petition challenging the same claims of the same patent.” slip op. at 2
- BurdenNot reached
“III. REMAINING ISSUES Because we deny the Petition under 35 U.S.C. § 314(a) and General Plastic, we need not reach the parties’ additional arguments regarding discretionary denial or the merits of Petitioner’s unpatentability challenges.” slip op. at 15
Discretionary denialPatents in suitUS 11,602,284 - PTAB · May 21, 2025 · IPR2025-00193 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, or 30 were unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’030 patent is unpatentable.” slip op. at 2
- BurdenNot shown unpatentable
“What is missing from Petitioner’s stated motivation for modifying the array of Cantor is a reason why a POSA would seek to correlate the identification sequence with a location on the array at all. Prelim. Resp. 72. Indeed, the location of a bead on the substrate is not pertinent to the analysis disclosed in Cantor. Ex. 2002 ¶ 172; see also id. at ¶ 31 (Cantor “does not relate to the [spatial] analysis of tissue samples . . . .”). “[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, and 30 would have been obvious over Cantor.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not argue that any claim term requires construction. Pet. 22–23. Likewise, Patent Owner takes the position that “no claim terms 2 Person of ordinary skill in the art. require explicit construction” for purposes of determining whether to institute inter partes review. Prelim. Resp. 19. Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“What is missing from Petitioner’s stated motivation for modifying the array of Cantor is a reason why a POSA would seek to correlate the identification sequence with a location on the array at all. Prelim. Resp. 72. Indeed, the location of a bead on the substrate is not pertinent to the analysis disclosed in Cantor. Ex. 2002 ¶ 172; see also id. at ¶ 31 (Cantor “does not relate to the [spatial] analysis of tissue samples . . . .”). “[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 3, 6, 10, 11, 16, 18, 21, 24–26, and 30 would have been obvious over Cantor.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,761,030 - PTAB · May 21, 2025 · IPR2025-00192 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 5, 17, 20, 23, 28, or 29 were unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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). After considering the evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’138 patent is unpatentable.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). Here, Cantor fails to teach or suggest capture probes distributed randomly on a substrate comprising a nucleic acid sequence that identifies a unique location on the substrate as required by the challenged claims, and Petitioner fails to adequately articulate why a person of ordinary skill in the art would have modified Cantor to make the recited capture probes. In view of the above, we find that, on this record, Petitioner has failed to establish that Cantor teaches or suggests each element of the challenged claims. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge that any of claims 1, 5, 17, 20, 23, 28, and 29 would have been obvious over Cantor. slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claims 1 and 17 are supported by the ’124 provisional and/or whether the ’138 patent’s priority chain is intact. Pet. 52–60. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find (1) that the ’124 Provisional provides adequate written description support for each of the challenged claim elements; (2) that the ’138 patent’s priority chain is intact; and (3) that the ’138 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims.” slip op. at 28
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claims 1 and 17 are supported by the ’124 provisional and/or whether the ’138 patent’s priority chain is intact. Pet. 52–60. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find (1) that the ’124 Provisional provides adequate written description support for each of the challenged claim elements; (2) that the ’138 patent’s priority chain is intact; and (3) that the ’138 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims.” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,549,138 - SML Intelligent Inventory Solutions LLC / SML (USA) Inc. v. Adasa Inc.Institution deniedPTAB · May 20, 2025 · IPR2025-00125 · APJ Devon Zastrow Newman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2019). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that Petitioner has not established a reasonable likelihood of prevailing on its assertion that at least one challenged claim is unpatentable based on the grounds advanced here. Accordingly, we deny institution of inter partes review of claims 1–20 of the ’967 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). Petitioner adopts the following definition of a person of ordinarily skill in the art (hereafter, sometimes “POSITA”) of the ’967 patent proposed by Patent Owner in the Avery Dennison litigation: [A]t least a bachelor’s degree in electrical engineering, computer science, or computer engineering, or a related discipline, and at least five years of experience which would consist of, A, designing, developing, evaluating and/or using RFID or other AIDC [automatic identification and data capture] technologies in inventory management, unique object identification, and/or security; or B, studying and conducting research related to RFID technologies and using RFID and other AIDC technologies in inventory management, unique object identification, and/or security. Pet. 6 (citing Ex. 1030, 707:3–13). Patent Owner does not offer a definition of an ordinarily skilled artisan of the ’967 patent at this time. See generally Prelim. Resp. Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed proposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references and the problems addressed in the ’967 patent.” slip op. at 17
- Prior constructionPrior construction adoptedDecided for patent owner
“Petitioner proposes the following claim constructions: “an allocated block of serial numbers” as “a pre-authorized range of binary serial numbers” and “uniquely corresponding” as the “term’s plain and ordinary meaning, consistent with the articulation of the plain and ordinary meaning” in the Avery Dennison litigation. Pet. 8–12. As to the remaining claim terms, Petitioner applies the district court’s constructions in the Avery Dennison litigation. Id. at 12 (citing Ex. 1028). Patent Owner applies the following constructions that were entered during in the Avery Dennison litigation: “object class information space” as “data field within the memory of the RFID integrated circuit chip for information identifying the class of an object, such as a company prefix, item reference code, partition value, and/or filter value,” “unique serial number space” as “data field within the memory of the RFID integrated circuit for information identifying a unique serial number,” “being assigned a limited number of most significant bits” as “includes a limited, predefined sequence at the leading end,” “remaining bits of lesser significance” as “the remaining lower order bits at the trailing end,” “is encoded with one serial number instance” as “has stored within it one serial number instance,” “an allocated block of serial numbers” as “a pre-authorized range of serial numbers,” and “uniquely corresponding” as its plain and ordinary meaning. Prelim. Resp. 32. For purposes of resolving whether to institute trial, we adopt and apply the interpretations stated in the district court’s claim construction order and applied by the Federal Circuit on appeal, Ex. 1028.11 See 55 F.4th 900, 908–909, 912–913 (Fed. Cir. 2022) (citing the district court’s claim construction order).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“IBM200 and Kuhno would have made it obvious for a POSITA to commission RFID tags with unique serial numbers partitioned into MSBs and bits of lesser significance. See Pet. 34–39; Ex. 1005 ¶¶ 167–176. However, on this record, Petitioner has not sufficiently shown that the POSITA, having read IBM200 and Kuhno, would have been led to create a serial number space in which the limited number of “most significant bits” uniquely corresponds to those bits assigned to an allocated block of serial numbers, as recited in limitation [f].” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,798,967 - Aardevo North America, LLC v. Agventure B.V.Institution deniedPTAB · May 1, 2025 · IPR2025-00136 · APJ Jeffrey N Fredman · IPR · Institution
Institution of inter partes review was denied for claims 1–10 because Petitioner did not establish a reasonable likelihood of prevailing on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we find that on the current record Petitioner has not shown that it has a reasonable likelihood that it would prevail on these obviousness grounds. XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5. XIII. CONCLUSION After reviewing the information presented in the Petition and the Preliminary Response, we determine that, based on the evidence of record, Petitioner has not established a reasonable likelihood that claims 1–10 of the ’841 patent are unpatentable. XIV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), institution of an inter partes review of all challenged claims on all grounds presented in the Petition is denied.” slip op. at 35
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureNot shown unpatentableInherency not foundNot shown unpatentable
“However, neither Petitioner nor Dr. Jansky provide specific data on the record before us showing the actual measured homozygosity of either of the inbred lines, US-W 5309 and US-W 5315. And Phumichai experimentally demonstrates that Dr. Jansky’s assumption that theoretical heterozygosity reduction of 50% per generation is not necessarily accurate, stating the “observed average percentage of reduction of heterozygosity per generation (38.4% or 38.5%) was lower than the theoretically expected value of 50%.” Ex. 1005, 982. Indeed, Phumichai disclosed that the “SOPH [Section-based observed percentage of heterozygosity] decreased steadily from the original 100% in 99H2–1 (S0) to the family means of 62.4% in 3H2 (S1), 37.9% in 3H3 (S2).” Id. at 981. That is, Phumichai experimentally shows that in an S2 generation of a potato line, the heterozygosity was 37.9%, resulting in homozygosity of about 62.1%, below the 75% theoretically expected and the 75% required by claim 1 of the ’841 patent. Therefore, the evidence of record does not show that the S2 generation of potato lines in Jong necessarily satisfies the homozygosity recitation in claim 1 of the ’841 patent, and so cannot establish on the record before us that Jong inherently teaches this limitation.” slip op. at 15
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedNot shown unpatentableNot shown unpatentable
“Owner is telling. Petitioner does not refute Patent Owner’s evidence of objective indicia. On the current record, the objective indicia evidence is compelling. As to long felt need, Patent Owner cited evidence on record before the Examiner that showed a persistent need recognized by ordinarily skilled artisans. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). For example, Dr. Huang states “This research is the breakthrough we have been waiting for since nearly a century . . . This is crucial for the potato breeding worldwide.” Ex. 2009, 687. There is no evidence that this long-felt need was satisfied by another before Appellant’s invention. See Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved . . . .”). Lastly, Dr. Lindhout explains that this invention satisfies the long-felt need, stating “I have discovered, and disclosed in the present application for patent, how a fertile homozygote in” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“XII. DISCRETIONARY DENIAL – 35 U.S.C. § 325(d) In view of our determination that the Petitioner does not meet the threshold for instituting review on the merits, we need not address the parties’ dispute about whether the Board should exercise its discretion to deny institution under 35 U.S.C. § 325(d). Pet. 74–75; Prelim. Resp. 38–54; Pet. Reply 1–5; PO Sur-Reply 1–5.” slip op. at 35
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,140,841 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Institution deniedPTAB · Apr 25, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“experience working on the development of materials or components for electronic devices such as batteries.” Pet. 2. Petitioner further contends that “[a]dditional education, such as a graduate degree, could compensate for less work experience, and additional work experience could compensate for less formal education.” Id. Patent Owner states that, “[f]or purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’014 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “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))).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). in this proceeding.” Pet. 3. Patent Owner contends that “[t]he Board need not construe any term in order to determine that institution should be denied.” Prelim. Resp. 4. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we are not persuaded that Petitioner sufficiently establishes that a POSITA would have been motivated to modify Hanafusa in light of Dobashi with a reasonable expectation of success as Petitioner contends. Accordingly, we determine that Petitioner fails to demonstrate a reasonable likelihood of prevailing in its assertion that the subject matter of claim 1, and claims 4 and 8 that depend therefrom, would have been obvious over the combined teachings of Hanafusa and Dobashi.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner also focuses on Hanafusa’s teaching that all known methods can be used to make a rough surface low-profile, and Dobashi’s teaching that RSm can be used as an indicator for judgment of the surface, to support its contention that a POSITA would have been motivated to apply Dobashi’s RSm to further achieve Hanafusa’s purpose, without explaining how and why that would be the case. In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness and is rough when RSm is small.” Id. at 3:1–3, 6:27–29. Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66– 3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66–3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Institution deniedPTAB · Apr 23, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable over either asserted § 103 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art (“POSITA”) “would have had at least an undergraduate degree in materials science, chemical engineering, electrical engineering, or related field, or equivalent knowledge, training, or experience, with at least two years of experience working on the development of materials or components for electronic devices such as batteries.” Pet. 4. Petitioner further contends that “[a]dditional education, such as a graduate degree, could compensate for less 7 We refer to the page numbers added by Petitioner to the bottom-center of the page. formal education.” Id. (citing Ex. 1003 ¶ 10). Patent Owner states that, “[f]or purposes of this Preliminary Response, Patent Owner applies Petitioner’s level of skill for a person of ordinary skill in the art.” Prelim. Resp. 4. For purposes of this Decision, we adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’689 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “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, 163–64 (Fed. Cir. 1985))).” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We are not persuaded, on this record, that Petitioner adequately establishes that Khatibi discloses a CTE in the claimed range of 16 to 22 µm/(m·°C.). Petitioner’s argument that Khatibi’s reported values meet this claim limitation are based solely on Dr. Randall’s testimony that Khatibi’s measurement method would produce results that would not significantly differ from results determined using the claimed method. See Pet. 16–18 (citing Ex. 1003 ¶¶ 56–60). Dr. Randall’s testimony, however, is largely conclusory and unsupported by adequate explanation and/or objective evidence. For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added). to little 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.”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 12 at 5 (PTAB Feb. 10, 2023) (finding that “the Board was correct in giving little weight to Petitioner’s expert because the expert declaration merely offered conclusory assertions without underlying factual support”); Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1311 (Fed. Cir. 2000) (“Lack of factual support for expert opinion to factual determinations, however, may render the testimony of little probative value in a validity determination.” (quoting Ashland Oil, Inc. v. Delta Resins and Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985))); see also In re Ethicon, Inc., 844 F.3d 1344, 1348, 1352 (Fed. Cir. 2017) (concluding that the Board properly gave “little weight” to conclusory expert testimony of objective indicia). Because Petitioner offers Dr. Randall’s testimony to supply a limitation missing from the prior art, namely, the CTE measurement method, and we give Dr. Randall’s unsupported and conclusory testimony little weight, we are not persuaded that Petitioner establishes a reasonable likelihood of showing that Khatibi discloses limitation [1d].” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“second surfaces of the electrolytic copper foil ranges from 3 to 92.” Ex. 1001, 13:62–63. Petitioner contends that “Kim teaches that the electrolytic copper foil (e.g., untreated or treated copper foil) having Rz less than 2 µm is advantageous toward battery efficiency and performance,” and, similarly, Griesi describes the use of untreated electrolytic copper foil with an Rz value less than 2 µm in printed circuit boards that are compatible with secondary batteries. Pet. 58–59 (citing Ex. 1012, claim 2, ¶¶ 13, 25, 27; Ex. 1003 ¶ 157). In particular, Petitioner notes that Griesi’s Figure 3.16 describes an “Rz value of 1.2 µm.” Id. at 59 (citing Ex. 1015, 53–54; Ex. 1003 ¶ 158). Petitioner asserts that “Dr. Randall explains that a POSITA would have also recognized another surface roughness-related parameter, Rpc, in Griesi as a potentially useful parameter that can be optimized to further enhance uniformity or generally improve Kim’s copper foil surface, for example, to prevent wrinkles or achieve other advantageous effects.” Id. (citing Ex. 1003 ¶ 159). Although Dr. Randall demonstrates that Griesi’s Pc (or Rpc) value is 19.2 over a 4 mm sampling length (Ex. 1003 ¶ 155), Petitioner does not contend that Griesi addresses this value, or indicates any benefit that might be derived from its use. Instead, Griesi’s Pc value appears to be an incidental finding, which is not discussed or analyzed in the reference. See incidental, unexamined finding would lead a POSITA to import Griesi’s Pc value into Kim’s copper foil, absent a hindsight desire to reconstruct the claimed invention. As such, Petitioner’s arguments with respect to Kim and Griesi are not persuasive. See Cheese Sys. Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013) (“Obviousness cannot be based on the hindsight combination of components selectively culled from the prior art to fit the parameters of the patented invention.” (internal quotations marks omitted)). Thus, we are not persuaded, on this record, that the combined disclosures of Kim and Griesi teach all of the elements of limitation [1g].” slip op. at 23
§ 103 obviousnesscites PhillipsPatents in suitUS 10,811,689
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.