- PTAB · May 26, 2026 · IPR2025-00425 · APJ Kristina M Kalan · IPR · Remand
The Board denied institution of IPR2025-00425 because it instituted the earlier-considered IPR2025-00424 challenging the same patent.
RulingsRemand decision- RemandOther
“Request for Director Review. See Paper 35; IPR2025-00424, Paper 35. The request was denied without prejudice and the cases were remanded to the Board to “allow discovery, narrowly tailored to resolve the RPI and privity issues.” Paper 41, 4. Following such discovery, we were instructed to “then determine on the full record whether Petitioners have met their burden of demonstrating that the Petitions are not time-barred under § 315(b), applying the framework set forth in Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242– 44 (Fed. Cir. 2018).” Id. A later-issued Order Supplementing Director Review Decision instructed that “if the Board determines that Petitioners met their burden to identify all RPIs in the Petitions, then the Board should maintain at most one IPR challenging” the ’225 patent. Paper 64, 3. Concurrently herewith, we issue a decision in IPR2025-00424 finding that Petitioner has met its burden of demonstrating that the Petition in that case is not time-barred under 35 U.S.C. § 315(b).” slip op. at 3
- Other 314aInstitution denied discretionary otherInstitution denied
“In connection with the ’225 patent, Petitioner filed two petitions requesting inter partes review: the petition in this proceeding (IPR2025- 00425), and the petition in IPR2025-00424. In this proceeding and in IPR2025-00424, Petitioner filed an Explanation regarding the necessity of multiple petitions. Paper 2; IPR2025-00424, Paper 2. Petitioner requested that, “if the Board uses its discretion to institute the Petitions, the Board consider the merits of IPR2025-00424 . . . before IPR2025-00425.” Paper 2,” slip op. at 2
Discretionary denialPatents in suitUS 10,589,225 - PTAB · Feb 10, 2026 · IPR2025-00688 · APJ Kristina M Kalan · IPR · Remand
On remand, the Board denied institution of IPR on claims 1–18 because this was the second-ranked petition and the Director directed institution of only one petition.
RulingsRemand decision- RemandDecided for patent owner
“Remand, do not institute inter partes review based on the second-ranked petition on this complete record. As stated in the Remand, “Petitioners present ten total grounds challenging the claims of the ’370 patent and thirteen total grounds challenging the claims of the ’218 patent [in IPR2025- 00717 and IPR2025-00718].” Remand 3. The Remand cites to the Board’s Trial Practice Guide, which “explains that ‘one petition should be sufficient to challenge the claims of a patent in most situations’ and ‘multiple petitions by a petitioner are not necessary in the vast majority of cases.’” Id. (citing Patent Trial and Appeal Board Trial Practice Guide (“TPG”) § II.D.2 (Dec. 12, 2025)). The Remand states: “The TPG further explains that dispute requiring arguments under multiple prior art references.’ TPG § II.D.2.” Id. at 2–3. The Remand determines: “Given that Petitioners had ample room in each petition to present multiple grounds challenging the claims of each patent, this was not a ‘rare’ circumstance that justified the filing of multiple petitions against each patent.” Id. at 3. The Remand explains that “absent exceptional circumstances, in a case where there is a dispute over priority date, the Board should either resolve the priority date issue or institute, at most, the first-ranked petition.” Id. The Director instructed the Board panel “to determine which of the two petitions” to institute. Id. at 4. We interpret the Remand as stating that the Director has determined that only one petition for each patent should have been instituted, and as delegating the discretionary authority to the panel to determine which of the two petitions to institute. Accordingly, in view of the foregoing and in view of Petitioner’s ranking of this Petition as the second-ranked petition, we deny institution of inter partes review.” slip op. at 11
- Parallel petitionsInstitution denied discretionary otherInstitution denied
“Remand, do not institute inter partes review based on the second-ranked petition on this complete record. As stated in the Remand, “Petitioners present ten total grounds challenging the claims of the ’370 patent and thirteen total grounds challenging the claims of the ’218 patent [in IPR2025- 00717 and IPR2025-00718].” Remand 3. The Remand cites to the Board’s Trial Practice Guide, which “explains that ‘one petition should be sufficient to challenge the claims of a patent in most situations’ and ‘multiple petitions by a petitioner are not necessary in the vast majority of cases.’” Id. (citing Patent Trial and Appeal Board Trial Practice Guide (“TPG”) § II.D.2 (Dec. 12, 2025)). The Remand states: “The TPG further explains that dispute requiring arguments under multiple prior art references.’ TPG § II.D.2.” Id. at 2–3. The Remand determines: “Given that Petitioners had ample room in each petition to present multiple grounds challenging the claims of each patent, this was not a ‘rare’ circumstance that justified the filing of multiple petitions against each patent.” Id. at 3. The Remand explains that “absent exceptional circumstances, in a case where there is a dispute over priority date, the Board should either resolve the priority date issue or institute, at most, the first-ranked petition.” Id. The Director instructed the Board panel “to determine which of the two petitions” to institute. Id. at 4. We interpret the Remand as stating that the Director has determined that only one petition for each patent should have been instituted, and as delegating the discretionary authority to the panel to determine which of the two petitions to institute. Accordingly, in view of the foregoing and in view of Petitioner’s ranking of this Petition as the second-ranked petition, we deny institution of inter partes review.” slip op. at 11
Discretionary denialPatents in suitUS 10,933,370 - PTAB · Feb 10, 2026 · IPR2025-00718 · APJ Zhenyu Yang · IPR · Remand
On remand, the Board denied institution of IPR on claims 1–4 and 6–26 because it instituted the higher-ranked competing petition, IPR2025-00717.
RulingsRemand decision- Director reviewDirector review, grantedOther
“The Director granted Director Review, finding that the panel “abused its discretion in granting institution of two petitions that each challenge the same claims” of the ’218 patent. Paper 38 (“Remand Order”), 2. The Director vacated the DI and remanded the case to the Board “to determine which of the two petitions” to institute. Id. at 4.” slip op. at 4
- Parallel petitionsInstitution denied discretionary otherInstitution denied
“In its Explanation regarding the necessity of multiple petitions, Petitioner requests that, “if the Board uses its discretion to institute the Petitions, the Board consider the merits of IPR2025-00[71]7 (“Vosteen589/Lissianski Petition”) before IPR2025-00[71]8 (“Sjostrom/Baldrey Petition”).” Paper 2, 3. Because we institute trial in IPR2025-00717 (see IPR2025-00717, Paper 41), under the Director’s instruction in the Remand Order, and based on Petitioner’s ranking of the petitions of IPR2025-00717 and IPR2025-00718, we deny institution in this case.” slip op. at 12
Discretionary denialPatents in suitUS 10,926,218 - PTAB · Feb 10, 2026 · IPR2025-00687 · APJ Kristina M Kalan · IPR · Remand
On remand, the Board instituted IPR on claims 1–8 and 10–18 over all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRemand decision- RemandInstituted
“Paper 34, 1 (requesting “Director Review of the Director’s August 22, 2025 Decision Referring the Petition to the Board (‘Referral Decision’)”). Patent Owner argued that institution of IPR2025-00687 and IPR2025-00688 “should be discretionarily denied.” Id. at 5. Petitioner opposed. Paper 37. The Director granted review and found that “granting institution of two petitions that each challenge the same claims of the ’370 patent and ’218 patent 2” was an “abuse[] of discretion.” Paper 40, 1. The Director remanded the cases “to the Board panel to determine which of the two petitions challenging each of the ’370 and ’218 patents to institute.” Id. at 3. Pursuant to the Director’s instruction that we choose only one of the two petitions challenging the ’370 patent to institute, and for the reasons set forth below, we choose to institute review of the ’370 patent in this Petition, and not in IPR2025-00688.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Petitioner bears the burden of demonstrating compliance with 35 U.S.C. § 312(a)(2) and § 315(b). See, e.g., Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 (PTAB Jan. 24, 2019)” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “[does] not, at this time, contend that any term requires construction,” and instead, states that “[a]ll terms have been accorded their plain and ordinary meaning.” Pet. 11 (citing Ex. 1002 ¶¶ 212–215). Patent Owner asserts that it “does not presently propose any constructions,” but discusses the Board’s claim construction in IPR2020- 00834, Paper 18, 7–8. Prelim. Resp. 7. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,933,370 - PTAB · Feb 10, 2026 · IPR2025-00717 · APJ Zhenyu Yang · IPR · Remand
On remand, the Board instituted IPR of claims 1–4 and 6–26 on all six asserted obviousness grounds, finding a reasonable likelihood of prevailing.
RulingsRemand decision- Director reviewDirector review, grantedOther
“The Director granted Director Review, finding that the panel “abused its discretion in granting institution of two petitions that each challenge the same claims” of the ’218 patent. Paper 39, 2. The Director vacated the DI and remanded the case “to the Board panel to determine which of the two petitions” to institute. Id. at 4.” slip op. at 4
- Parallel petitionsDecided for petitioner
“On November 4, 2025, we instituted inter partes review of all challenged claims based on all the grounds raised in the Petition. Paper 35 (“DI”). In the DI, we noted that “Petitioner filed an explanation regarding the necessity of multiple petitions,” and “Patent Owner d[id] not challenge that multiple petitions are necessary” in the Preliminary Response. Paper 23, 3 n.3.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Therefore, we institute inter partes review of all challenged claims based on all the grounds raised in this Petition.3” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’218 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,926,218 - Pacificorp v. Birchtech Corp.InstitutedPTAB · Nov 4, 2025 · IPR2025-00718 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on all challenged claims, claims 1–4 and 6–26, on all asserted grounds because Petitioner showed a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). We institute inter” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“On the current record, it is unclear to what extent, if at all, the alleged “scientific basis for the invention” describes adding bromine to coal. Written description requires more than that the disclosure renders the claimed subject matter obvious. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997) (“The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention.”); PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (“Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.”).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The standard for public accessibility is one of “reasonable diligence,” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016), to locate the information by “interested members of the relevant public.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1569 (Fed. Cir. it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.’” Blue Calypso, 815 F.3d at 1348 (quoting Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)). Patent Owner argues that “Petitioners rely on their paid technical expert’s largely uncorroborated fact testimony regarding a conference that took place twenty years ago.” Prelim. Resp. 27. Patent Owner asserts that “Petitioners have not corroborated the number of people in attendance at this track during the relevant time, nor whether those people were skilled in the art.” Id. Thus, Patent Owner concludes that “Petitioners have not provided sufficient evidence that Sjostrom was disseminated or otherwise made available to . . . persons interested and ordinarily skilled in the subject matter or art.” Id. (quotation marks omitted). We are not persuaded by Patent Owner’s argument. Petitioner relies on the testimony of Dr. Niksa, who attended and delivered a presentation at the 2005 EUEC. Ex. 1002 ¶¶ 125, 242–251; Ex. 1030, 3, 7, 23, 32, 106–118; Ex. 1031. Dr. Niksa testifies that there were over 800 attendees. Ex. 1002 ¶ 250. Other evidence corroborates Dr. Niksa’s testimony. Ex. 1030, 103–118 (list of attendees); Ex. 1031. Petitioner’s evidence does not indicate that attendance of the 2005 EUEC was restricted, and the evidence indicates that the CD appears to have been disseminated without any apparent restriction or expectation of confidentiality. Ex. 1002 ¶¶ 243, 244, 248; Ex. 1010; Ex. 1030, 103–118; Ex. 1031; GoPro, 908 F.3d at 694–95. reasonable likelihood that Sjostrom was publicly available, and thus, qualifies as printed publications. See Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 28 (PTAB Dec. 20, 2019) (Paper 29) (precedential).” slip op. at 28
§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 10,926,218 - PTAB · Nov 4, 2025 · IPR2025-00717 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–26 on all six asserted obviousness grounds, finding a reasonable likelihood that PacifiCorp would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). We institute inter” slip op. at 2
- PTAB / AIA Trials › Discretionary denialOther
“1 Birchtech Corp. was formerly known as Midwest Energy Emissions Corp. (“ME2C”) (Paper 9, 2), 2 The parties also filed briefs, arguing for and against discretionary denial. Papers 16, 18. The Acting Director determined that discretionary denial was not appropriate and referred the Petition to the Board. Paper 24.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Vosteen589’s system to include Starns’s activated charcoal injection, because activated charcoal injection was “a ‘mature’ technology [and] the combination of Vosteen589 and Starns represents [nothing more than] combining prior art elements according to known methods to yield predictable results of removing mercury.” Id. at 29 (citing Ex. 1002 ¶¶ 285–288). Petitioner further explains that this combination results in “improved mercury removal (compared to activated carbon alone) with lowered sorbent costs.” Id. at 27–28 (citing Ex. 1002 ¶¶ 287). Similarly, Petitioner asserts that “the combination of Vosteen589 and Mass-EPA represents [nothing more than] combining prior-art elements according to known methods to yield predictable results of removing mercury,” because activated carbon injection “was ready for commercialization by 2002, years before the ’218 Patent’s earliest possible priority date.” Id. at 30 (citing Ex. 1002 ¶¶ 289–293). As support, Petitioner points to Mass-EPA’s teaching that activated carbon, as “the most extensively studied sorbent for mercury adsorption,” was “the most likely candidate to reach commercialization for mercury removal in the near future.” Id. at 29 (citing Ex. 1009, 32); see also Ex. 1009, 32 (“Increased removal of mercury from gas has been demonstrated by co-injection of activated carbon and calcium-based sorbents in spray dryer adsorber systems in full-scale coal-fired power plants.”). Petitioner also alleges that Mass-EPA provides an express motivation to combine the teachings of these references, that is, to “improv[e] mercury adsorption efficiency of activated carbons . . . with the goal of improving carbon to mercury injection rates and reducing control costs.” Pet. 30 (citing Ex. 1009, 39); see also id. at 29 (“Availability of low-cost and efficient sorbents and effective particulate collection are key in implementation of this type of mercury control.”) (citing Ex. 1009, 32); id. at 29–30 (“[E]stimated costs for powdered activated carbon injection-based technology, which most likely will reach commercialization for mercury control before other technologies, is within the current control costs for NOx.”) (citing Ex. 1009, 58). Petitioner contends that using Mass-EPA’s activated carbon injection in Vosteen589’s method would result in “improved mercury-adsorption efficiency, achieving the Mass-EPA’s stated goal of ‘reducing control costs.’” Id. at 30 (citing Ex. 1002 ¶ 294). The current record supports that Petitioner’s combination of Vosteen589 with Starns and with Mass-EPA would have been “the mere application of a known technique to a piece of prior art ready for the improvement.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). Indeed, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id. Patent Owner does not allege that the combination was beyond the skill level of a POSITA at the time of the alleged invention. See generally Prelim. Resp. Thus, for purposes of this Decision, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a POSITA would have modified the teachings of the applied references, with a reasonable expectation of success. See KSR, 550 U.S. at 418.” slip op. at 15
- Expert testimonyPetitioner expert creditedOther
“To the extent that any portions of Dr. Niksa’s testimony may be contradictory, Patent Owner will have the opportunity to test the veracity of Dr. Niksa’s opinions over the course of trial. Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 596 (1993) (“Vigorous cross-examination [and] presentation of contrary evidence . . . are the traditional and appropriate means of attacking shaky but admissible evidence.”).” slip op. at 17
§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,926,218 - PTAB · Oct 14, 2025 · IPR2025-00688 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1–18 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“The mere existence of some relationship between a petitioner and another entity, however, is not sufficient to place that petitioner in privity with that entity. Google LLC v. DDC Technology, LLC, IPR2023-00707, Paper 27 at 37 (PTAB Oct. 25, 2023). Instead, that relationship must be related to an earlier lawsuit and be “sufficiently close that it can be fairly said that the petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit” or the evidence must show “the petitioner is simply serving as a proxy to allow another party to litigate the patent validity question that the other party raised in an earlier-filed litigation.” WesternGeco, 889 F.3d at 1319.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the art because it is consistent with the skill level reflected in the disclosures of the ’370 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “do[es] not, at this time, contend that any term requires construction,” and instead, states that “[a]ll terms have been accorded their plain and ordinary meaning.” Pet. 10 (citing Ex. 1002 ¶¶ 212–215). Patent Owner does not propose any constructions at this time. See generally Prelim. Resp. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“We are not persuaded by this argument. The Federal Circuit has instructed that [e]ntitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed. While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. Lockwood, 107 F.3d at 1571–72. Here, what “a POSITA would understand,” without disclosure in the specification, is insufficient to show written-description support. Prelim. Resp. 24. Thus, on this record, and for purposes of institution, Patent Owner has not shown that the Provisional Application provides sufficient support for adding the claimed genus to the coal. 3. Summary In sum, on this record, Patent Owner has not shown that either the Provisional Application or the Pre-2018 Applications provide sufficient written-description support for the challenged claims. As a result, we determine that the ’370 patent cannot claim priority to the Provisional Application. Thus, all asserted prior art qualifies as prior art.” slip op. at 25
Claim construction§ 102 anticipation§ 112 disclosurecites PhillipsPatents in suitUS 10,933,370 - PTAB · Oct 14, 2025 · IPR2025-00687 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1–8 and 10–18 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Based on the current record, we determine that the Petition is not time-barred. The ’370 patent was not part of the 2019 Delaware lawsuit that forms the basis of Patent Owner’s time-bar allegations. And, as Petitioner explains, when the ’370 patent was asserted in July 2024, Petitioner filed this request for inter partes review about seven months later, i.e., within the one-year period. Furthermore, Patent Owner does not allege which unnamed entity is in privity with Petitioner or provide any details of the relationship that establishes privity. Nor does Patent Owner direct our attention to record evidence that would support its allegations. Therefore, without more, we determine that the Petition is not time-barred.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“The current record supports that Petitioner’s combination of Vosteen589 with Starns and with Mass-EPA would have been “the mere application of a known technique to a piece of prior art ready for the improvement.” KSR, 550 U.S. at 401. Indeed, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill.” Id. Patent Owner does not allege that the combination was beyond the skill level of a person of ordinary skill in the art at the time of the alleged invention. See generally Prelim. Resp. Thus, Petitioner has provided sufficient reasoning with rational underpinnings to explain why a skilled artisan would have modified the teachings of the applied references. See KSR, 550 U.S. at 418.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,933,370 - PTAB · Oct 9, 2025 · IPR2025-00425 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“After reviewing the evidence of record, we are persuaded the instant Petition is not time-barred as to the Chem-Mod Purchasers. Generic indemnity agreements are insufficient, without more, to establish privity. 9 Petitioner asserts that the supply agreements between the Chem-Mod Purchasers and Chem-Mod expired in 2021. For the reasons discussed herein, we determine that the language of these agreements does not establish privity. In the event Patent Owner maintains its argument that the Chem-Mod Purchasers are in privity with Chem-Mod, the parties should address the legal impact, if any, of the expiration of these agreements on Patent Owner’s arguments. WesternGeco LLC, 889 F.3d at 1321 (a “contractual and fairly standard customer-manufacturer relationship regarding the accused product” does not suggest, “without more, that the parties were litigating . . . [an] IPR[] as proxies for the other.”). The only relationship alleged to exist between Chem-Mod, its affiliates, and the Chem-Mod Purchasers is that of a supplier-customer relationship. As part of that relationship, the parties entered into supply agreements that included an indemnification provision for the purchased products. Exs. 2037–2042 (discussed at Sur-reply 7–8). We acknowledge, but disagree with, Patent Owner’s argument that the terms of the indemnity “specifically targeted” the activities at the “heart of the alleged infringement.” Sur-reply 7–8. Rather, the indemnification language in these agreements appears to be standard and typical of supply agreements. See Ex. 2037, 26;10 Ex. 2038, 10–12; Ex, 2039, 10–12; Ex. 2040, 10–12; Ex. 2041, 10–12; Ex. 2042, 24–27. Such language, without more, “does not amount to a sufficiently-close relationship to warrant finding . . . privity.” WesternGeco LLC, 889 F.3d at 1321–22.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner does not point to any record evidence that suggests the parties to the Delaware Action adequately represented the Chem-Mod Purchasers’ interests or that the Chem-Mod Purchasers controlled, directed, or funded the Delaware Action. See generally Prelim. Resp.; Sur-reply. Nor does Patent Owner suggest that the indemnified Petitioners are acting as a proxy for Chem-Mod and its affiliates in this case. Thus, the relationship with Chem-Mod, its affiliates, and the indemnified Petitioners was not “sufficiently close that it can be fairly said petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit.” Google, IPR2023-00707, Paper 27 at 37. In sum, Petitioner bears the burden of demonstrating compliance with 35 U.S.C. § 312(a)(2) and § 315(b), but the current record does not provide sufficient reason to doubt Petitioner’s assertion that Chem-Mod was not “funding this petition, advising on strategy for this petition, or exercising any control over Petitioner’s decision to file the petition (or the arguments included therein).” Pet. 2; see also Reply 1–2. Indeed, the current record supports that the relationship between Chem-Mod and the Chem-Mod Purchasers was a standard supplier/customer relationship. Exs. 2037–2042. The evidence does not support that Chem- Mod negotiated a license on behalf of the Chem-Mod Purchasers or that the Chem-Mod Purchasers owned power plants that were at issue in the Delaware Litigation. Ex. 2009, 91; Ex. 2010, 107. Therefore, on this record, we determine that the relationship between Chem-Mod and the Chem-Mod Purchasers does not support that the Petition is time-barred.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 12 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’225 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner discusses the term “pyrolysis char” and states that, for the purposes of the Petition, it adopts and applies the Delaware court’s construction that “allow[s] for the pyrolysis char to be created within the combustor, so long as it is then present (and combusted) with the coal and the bromine compound.” Pet. 11–12 (citing Ex. 1071). Patent Owner does not appear to propose any express claim constructions. See generally Prelim. Resp. 7. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,589,225
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.