- PTAB · Apr 15, 2026 · IPR2025-00104 · APJ Michael A Valek · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, and 9–18 based on all presented grounds, finding a reasonable likelihood of success on obviousness grounds 1A and 1B.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). The petitioner ultimately bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition shows a reasonable likelihood that the petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) would have “had at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field [of] consumer electronics, with exposure to digital camera technology and wireless communications.” Pet. 5 (citing Ex. 1030 ¶¶ 94–95).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We find it unnecessary to construe any claim term to decide whether Petitioners satisfy the “reasonable likelihood” standard for instituting trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. 35 U.S.C. § 103; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness.10 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness determination requires finding a reason to combine accompanied by a reasonable expectation of achieving what is claimed in the challenged patent. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR, 550 U.S. at 419–20.” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,904,030 - PTAB · Jan 14, 2026 · PGR2025-00059 · APJ Devon Zastrow Newman · PGR · Institution
The Board instituted post-grant review of claims 1–4 on all four asserted grounds, finding a sufficient preliminary showing of obviousness and lack of enablement.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner has, at this stage, established that it will more likely than not prevail in showing that at least one of the challenged claims is unpatentable. This determination is, however, based on a preliminary record and is not final on any issues of patentability. We will make a final determination on the patentability of the challenged claims, as necessary and applying the preponderance of the evidence standard, based on a fully developed record through trial. VI. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 324(a) post grant review of claims 1–4 of the ’233 patent is hereby instituted on the grounds set forth in the Petition, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 324(d) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; and” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not proffer a description of a POSA. See generally, Prelim. Resp. For the purposes of this decision, on the record at this time, we find that Petitioner’s definition appears consistent with the level of skill shown in the prior art references of record, and apply it herein. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). We invite the parties to further address the definition of a POSA during trial should they find it necessary.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“In addition, the opinion stated in the Pomper Declaration that “the term of ‘low molecular weight’ is well accepted in the chemical arts” and the declarant “recognize[s] that low molecular weight compounds would have a molecular weight of typically from about 50 Daltons to about 1,500 Daltons” is offered by a co-inventor. We, as factfinder, have discretion to weigh the credibility of expert witnesses and to give each item of evidence such weight as appropriate. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”). In this case, we find that the published references on metabolites do not support the opinion. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d at 1368 (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”) US-121, of which Dr. Pomper is lead inventor, also uses the term “low molecular weight”—without further characterization of the term—and is uninformative as to the meaning of the term. See Ex. 1006, ¶ 12. In addition, Patent Owner’s definition does not appear to apply to all compounds claimed in US-121.5” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“limited to Patent Owner’s proposed “from about 50 Daltons to about 1,500 Daltons.” The cited evidence relied on in the Pomper Declaration to define “low molecular weight” as a term well accepted in the chemical arts relates to metabolomics and metabolites. See Ex. 1002, 169, (specifically, ¶ 17 of Dr. Pomper’s declaration). Patent Owner admits that Dr. Pomper’s testimony is about molecules that differ from the claimed imaging and radiotherapeutic agents targeting FAP-α, but argues that the testimony is still relevant for purposes of explanation. Prelim Resp. 21. While it may be relevant, the testimony is not persuasive in light of the Specification. We find the uncontested fact that several of the B moieties alone—without the A moiety or L linker—specifically identified in the ’233 patent fall outside of Patent Owner’s proposed definition persuasive, as we normally do not interpret claim terms in a way that excludes examples disclosed in the specification. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1305 (Fed. Cir. 2007) (rejecting proposed claim interpretation that would exclude disclosed examples in the specification). The cases cited by Patent Owner supporting that a claim term may be construed to exclude embodiments where the prosecution history supports such construction are factually distinguishable from the instant case as they regard instances of specific prosecution history disclaimer, clear prosecution disavowal, or relate to a specific definition of the terms in the Specification for the term being construed. Here, “low molecular weight” is not defined in the Specification, but, as Petitioner argues (see Pet. 21–25) is characterized as “demonstrat[ing] faster pharmacokinetics and a higher specific signal within clinically convenient times after administration” and that it “can be synthesized in radiolabeled form more easily.” Ex.1001, 13:33–50, 14:56– 16:14, 17:9–20. We are persuaded by the testimony of Dr. Zeglis, Petitioner’s declarant, that compounds weighing over 1500 Da may share those same behaviors, along with certain identified B moieties disclosed as embodiments. See Ex. 1003 ¶ 83.” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 12,115,233 - PTAB · Aug 13, 2025 · IPR2025-00147 · APJ Linda E Horner · IPR · Institution
The Board instituted inter partes review of claims 1–6 and 8–20 after finding a reasonable likelihood that Samsung would prove at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we grant the Petition and institute an inter partes review of claims 1‒6 and 8‒20 of the ’124 patent.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art.7 Based on the testimony of Dr. Anthony, we determine that a person of ordinary skill in the art would have had at least a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, or equivalent experience, and at least two years’ experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A person of ordinary skill in the art would have also been familiar with, for example, sensor system design, including inertial and other motion sensor system design, signal processing, and human-machine interfaces. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’124 patent Specification and the asserted prior art references, based on our review of the limited record.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notNot reached
“We need not reach the issue of whether the preamble is limiting for purposes of determining institution. Even were we to agree with Patent Owner that the preamble is limiting and the claims are limited to a fingerworn ring, at this stage Petitioner has demonstrated that the cited art teaches or suggests such a limitation. That is, Petitioner relies on the fingerring of Schroder for the claimed form factor of a “wearable computing device configured to be worn around a finger of a wearer.” Pet. 22 (Ground 1), 45 (Ground 2, relying on Yuen for adding the functionality of light sources with a photodetector, temperature sensors, and varying the sampling frequency of sensor data acquisition), 56 (Ground 3). Further, to the extent Petitioner contends that Yuen’s toe band or earring is structurally and functionally equivalent to a finger-ring (Pet. 45, 57), Patent Owner has not, at this stage of the proceeding, structurally distinguished a device configured to worn around a finger from a toe band or earring. For instance, Patent Owner has not explained how a device to be worn around a finger differs in size, configuration, or design from a toe band or earring. And the ’124 patent recognizes that “a human being’s finger can come in various different sizes and so should the [wearable computing device].” Ex. 1001, 12:64‒65. For instance, challenged dependent claim 10 recites that the width of the external housing of the wearable computing device is within a range of 3 mm to 8 mm and a thickness of the device is within a range of 1.5 to 3 mm. Id. at 35:8‒12. Should Patent Owner pursue this argument during the proceeding, the record would benefit from further development on the structural similarities and dissimilarities between a fingerworn ring and a toe band.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“After considering the parties’ arguments and evidence, we determine that Petitioner’s showing of reasons to combine Mestas and Schröder is sufficient for purposes of granting institution of an inter partes review. Although general similarities between the references are usually not by themselves sufficient to show a reason to combine particular teachings, Petitioner here also provides more particularized contentions, such as “[i]mplementing Mestas’s device in Schröder’s ‘finger-ring’ form factor would ensure a tighter fit than a device worn, e.g., on the user’s arm or wrist, reducing motion artifacts, providing better shielding against ambient light, and permitting higher quality reading from device sensors (e.g., accelerometer, heart rate, temperature)” and that Mestas’s concern with “slippage around a user’s wrist or other body part” would have motivated a person of ordinary skill in the art “to consider placing the device on the finger, as in Schröder, to improve traction and prevent slippage.” Pet. 19‒20 (citing Ex. 1002 ¶ 169; Ex. 1010 ¶ 152). These reasons are sufficient to present a reasonable likelihood of prevailing as to at least one challenged claim based on the proposed combination of Mestas and Schroder for purposes of institution. Patent Owner will have an opportunity to further address Petitioner’s reasoning during the proceeding.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,188,124 - PTAB · Mar 13, 2025 · IPR2024-01467 · APJ Michael A Valek · IPR · Institution
Instituted IPR on claims 1–8 and 11–22 based on the §103(a) challenge over Xu-752 and Jones, after finding a reasonable likelihood of success on claims 16–22.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reviewed Petitioner’s showing, we find that it demonstrates a reasonable likelihood that Petitioner will prevail in demonstrating that claim 16 is unpatenable over Xu-752 and Jones. Patent Owner’s arguments in the Preliminary Response are unavailing on the current record. We address those arguments below.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Having reviewed Petitioner’s showing, we find that it demonstrates a reasonable likelihood that Petitioner will prevail in demonstrating that claim 16 is unpatenable over Xu-752 and Jones. Patent Owner’s arguments in the Preliminary Response are unavailing on the current record. We address those arguments below.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We agree with Petitioner that Oka is not cumulative of Jones. Jones discloses an impedance measuring system for measuring the impedance of each well of a multiwell plate. Ex. 1006, code (57). Moreover, Jones clearly teaches that the daughter boards in its system “may be equipped with multiple analog-to-digital converters.” Id. ¶ 18. Oka, in contrast, does not. As Patent Owner acknowledges, “Oka is a planar multielectrode array that 11 Oka et al., “A new planar multielectrode array for extracellular recording: application to hippocampal acute slice,” 93 J. of Neuroscience Methods 61– 67 (1999) (Ex. 1026) (“Oka”). measures via extracellular recording instead of impedance.” Prelim. Resp. 51 n. 10 (emphases added). This is consistent with the applicants’ arguments during prosecution that Oka does not disclose a multiwell plate, plurality of wells, or even measuring cell-substrate impedance. See, e.g., Ex. 1002, 191–193. Moreover, as Petitioner points out, Oka appears to disclose only a single ADC connected to a switch. See Ex. 1026, 63 (Fig. 2); see also Ex. 1002, 188 (applicant urging that “Oka uses a switch to connect the AD-C to different electrodes at different times” and therefore is not performing measurements for individual electrode arrays). Thus, unlike Jones, Oka does not disclose a plurality of ADCs, much less multiple ADCs arranged and operated in parallel such that impedances for multiple wells are measured at a time.12” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of May 2009 “would have had a B.S. in electrical/mechanical/biomedical engineering or biological science, or a related field, and approximately 2 years of relevant experience or equivalent study in systems and methods for bioanalysis of cells.” Pet. 14 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not dispute or otherwise respond to Petitioner’s description of a POSA in its Preliminary Response. At this stage, we find Petitioner’s description of the level of ordinary skill in the art to be sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,906,508 - PTAB · Jan 28, 2025 · IPR2024-01077 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1, 11, and 13–20 based on the Schröder and Mestas obviousness challenge; it did not decide whether the Yuen and Mestas challenge met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . 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(a). For the reasons that follow, we determine that the reasonable likelihood standard is met, and we institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’859 Patent Specification and the asserted prior art references.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute an inter partes review. Pet. 8; Prelim. Resp. 21. Nevertheless, there appears to be a dispute about the meaning of the term, “ring,” which we discuss below for purposes of providing guidance.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,139,859 - PTAB · Jan 28, 2025 · IPR2024-01078 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–6, 11–15, and 38–43 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Schröder and Mestas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response 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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–6, 11–15, and 38–43 based on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In view of the parties’ arguments and evidence, we do not agree with Patent Owner’s characterization of Mestas as cumulative. Noting that the Office allowed claims of the ’686 Application over U.S. Patent Application Publication No. 2013/0106603 (Ex. 2006, “Weast”), Patent Owner argues that Mestas discloses the same wristband as Weast. Prelim. Resp. 10–12, 58. Patent Owner overlooks that the Office’s consideration of Weast in the prosecution of the ’686 Application occurred after the ’953 patent issued, which does not show consideration of Weast’s or Mestas’s wristband configuration in the allowance of the ’953 patent’s claims. Ex. 2009, 1, 3; Ex. 1001, code (45); Prelim. Resp. 10–12, 58.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (Ex. 1002 ¶ 29). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See Prelim. Resp. 12. Based on the testimony of Dr. Anthony, we agree with Petitioner’s stated understanding of the level of ordinary skill in the art. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’953 Patent Specification and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner expresses that it “does not believe that any term requires express construction.” Pet. 8. Patent Owner does not dispute this assertion. See generally Prelim. Resp. At this stage, we need not and do not construe expressly any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,281,953 - PTAB · Dec 12, 2024 · PGR2024-00039 · APJ Elizabeth M Roesel · PGR · Institution
The Board instituted PGR on claims 1–17, finding the Schröder obviousness challenge to claim 1 met the institution threshold; it did not reach the remaining challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the parties’ arguments and evidence, we determine that Petitioner’s showing for the printed circuit board of claim element 1[c], as summarized above, is sufficient for purposes of granting institution of a post-grant review. For purposes of institution, Petitioner’s contentions are adequately supported by Schröder, which describes inlay 12 as a “flexible carrier material, e.g. PET, Kapton, etc.” and a “carrier” for the antenna, chip module, and “at least one further electronic component,” as well as Schröder’s Figures 7 and 8, which depict inlay 12 between ring halves 16 and 18. Ex. 1007, 12:28–42, 12:48–52, 12:61–65, 13:23–25. We have considered Patent Owner’s argument that Schröder’s inlay 12 “is merely a substance for holding the coil in place, not a printed circuit board,” as well as Patent Owner’s argument contrasting Schröder’s description of inlay 12 with the express disclosure of “a circuit on a circuit board” elsewhere in the reference. Prelim. Resp. 29–30 (emphasis omitted; citing Ex. 1007, 8:57–59, 22:48–50; Ex. 20119). These arguments raise a serious issue about whether a POSITA would have understood Schröder’s inlay 12 as teaching a printed circuit board. This issue would benefit from further development at trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“E. Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’702 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 7; Prelim. Resp. 21.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,874,702 - PTAB · Dec 6, 2024 · IPR2024-00928 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–5, 11–13, and 16–18 on all grounds, finding a reasonable likelihood that the LeBoeuf challenge to claim 1 would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). 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). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–5, 11–13, and 16–18 based on the grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusNot reached
“For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence.” Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202, 1210 (Fed. Cir. 2023). “A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention.” Id. slip op. at 16
§ 103 obviousnesscites PhillipsPatents in suitUS 9,582,034 - PTAB · Dec 6, 2024 · PGR2024-00030 · APJ Elizabeth M Roesel · PGR · Institution
Instituted PGR of claims 1–10 and 12–18; Petitioner met the institution threshold for claim 1 based on obviousness over Schröder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In applying § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal experience, and vice versa. Ex. 1002 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’178 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 8; Prelim. Resp. 25.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“Petitioner relies on Dr. Anthony’s testimony that a POSITA would have understood Figures 6–8 as showing a cavity as recited in claim 1 and the battery must be arranged within that cavity because “[o]therwise, if the battery did not fit within the ‘finger-ring,’ the ‘finger-ring’ either has (1) a battery that sticks out or is exposed to the environment or (2) a wired connection to power its components, which is contrary to the intent of having a portable, wearable device.” Ex. 1002 ¶ 166. Dr. Anthony opines that “[a] POSITA would have understood that the battery’s location within the cavity is the ‘first portion’ of the cavity because the battery necessarily occupies space in the cavity.” Id. ¶ 168. Such testimony, when viewed along with the rest of Petitioner’s showing, provides sufficient basis for institution.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,868,178 - Tiktok Inc. v. Cellspin Soft, Inc.InstitutedPTAB · Oct 1, 2024 · IPR2024-00768 · APJ Cynthia M Hardman · IPR · Institution
The Board instituted IPR on claims 1–10 because Petitioner showed a reasonable likelihood of prevailing on both obviousness grounds: Hiroishi, Kahn, Endsley, and Bluetooth; and Singh129 with Singh906.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of Petitioner’s Sotera stipulation, we will not exercise discretion to deny institution under 35 U.S.C. § 314(a). The Director has 9 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential) (“Fintiv”). 10 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (Dec. 1, 2020) (“Sotera”). issued guidance stating that, when such a stipulation is presented, the PTAB will not discretionarily deny institution in view of the parallel litigation. See Ex. 1034 (Guidance) 3. That guidance is unequivocal and dispositive of the Fintiv analysis here.” slip op. at 10
- Other 314aDenied
“Patent Owner’s argument for discretionary denial under § 316(b) is unavailing. The statute provides that “[i]n prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.” 35 U.S.C. § 316(b). However, Patent Owner identifies no regulation, rule, or Office guidance that supports its argument here. In the absence of such, we decline to apply any discretion the Director may have under § 316(b) to deny the Petition based on the policy considerations and concerns alleged by Patent Owner.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“On this record, we find that Petitioner has adequately demonstrated that the Examiner erred in a manner material to patentability. This follows from our finding that on the current record, Petitioner has shown a reasonable likelihood that the challenged claims are not entitled to a priority date earlier than August 6, 2019, and would have been obvious over Singh129 and Singh906. See infra Section III.F. We find Patent Owner’s assertion that the Examiner understood that “[a]dding the Bluetooth feature to the existing mobile application is the reason for [the] ‘incorporated reference’ in Cellspin’s disclosure” is not supported on this record, including because Patent Owner does not cite any portion of the prosecution history that reflects this alleged understanding. Prelim. Resp. 21. For the above reasons, we decline to exercise our discretion to deny inter partes review under § 325(d).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time the invention was made. See Graham, 383 U.S. at 17–18. Petitioner contends that a person of ordinary skill in the art (sometimes abbreviated herein as “POSITA”) would have had: at least a bachelor’s degree in electrical engineering, computer engineering, or computer science, and two years of experience in the field consumer electronics, with exposure to digital camera technology and wireless communications. Superior education could compensate for a deficiency in work experience, and vice-versa. Pet. 6–7 (citations omitted) (citing Ex. 1030 (Lett Decl.) ¶¶ 94–95). Patent Owner does not provide an explicit definition of a POSITA. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be 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 18
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,234,121
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.