By Jake Earl and Jacob Hinish
So, what’s happening at the PTAB? Claim construction even when the parties agree it is not necessary, overly general citations, design choice, and more!
Parties agree no claim construction is necessary; Board says not so fast. PLR Worldwide Sales Limited v. Flip Phone Games, Inc., IPR2024-00132, Paper 29 (April 24, 2025) (McKone, joined by Galligan and Howard) (construing claim term despite parties’ agreement that no claim construction was necessary because Patent Owner’s arguments “clearly implicate claim construction”).
What am I looking at here? Dropbox, Inc. et al v. Datanet LLC, IPR2024-00078, Paper 30 (April 25, 2025) (Hoskins, joined by Cocks and Hoang) (Petitioner’s general citation to “large swath of disclosure”—more than four columns—failed to identify supporting evidence with particularity).
A fork in the road provides two obvious paths. Satco Products, Inc. v. The Regents of the University of California, IPR2021-00662, Paper 67 (April 28, 2025) (Bisk, joined by Smith and Amundson) (where it is undisputed that there are only two conventional methods for creating an element, a design choice of either method would have been obvious).
Patent Owner watches their objective indicia of non-obvious “drift” away. Cirrus Logic, Inc. et al v. Greenthread, LLC, IPR2024-00016, Paper (April 29, 2025) (Tornquist, joined by Ullagaddi and Heaney) (finding Patent Owner’s licensing revenue evidence unpersuasive to show objective indicia of non-obviousness for a claim involving a “drift field to sweep…unwanted carriers,” emphasizing the heightened burden of requiring a specific nexus between licensing revenue and the merits of a claimed invention).
Why watch when you know the ending? Hulu, LLC v. Piranha Media Distribution, LLC IPR2025-00081, Paper 12 (May 1, 2025) (Easthom, joined by Moore and O’Hanlon) (denying institution of an IPR, finding it unnecessary to initiate a proceeding to assess patentability where the claims had already been held invalid under §101 by a parallel district court proceeding).
Aww spud! Aardevo North America, LLC v. Agventure BV, IPR2025-00136, Paper 9 (May 1, 2025) (Fredman, joined by Mitchell and Newman) (denying institution of an IPR petition challenging claims directed to a new potato line, finding the Petitioner’s reliance solely on the experimental results of two physical potato samples as prior art to support specific grounds do not qualify as a printed publication under 35 U.S.C. §311(b)).
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Posted: May 16, 2025
