- Ascentcare Dental Product, Inc. v. Solmetex, LLCInstitution deniedPTAB · Dec 23, 2025 · IPR2025-01104 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art combinations.
In the decision…needs, failure of others, etc.” Id. at 17–18; KSR, 550 U.S. at 406. “Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted). “[W]here a party…
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) (2025). 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 institution of inter partes review, the review proceeds “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Based on our consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“the ’329 patent was filed would have had “at least a B.S. degree in mechanical engineering or a related field with at least two years’ experience designing dental devices” and that “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree, and vice versa.” Pet. 32. Patent Owner contends that Petitioner’s definition is overly narrow and argues that “[n]othing in the claims of the ’329 Patent requires experience designing ‘dental devices.’” Prelim. Resp. 19. According to Patent Owner, “the claims are directed to the structural components of a dental isolation mouthpiece, and an individual with a mechanical engineering degree and experience designing medical devices would be a [person of ordinary skill in the art] for purposes of the ’329 Patent.” Id. (citing Ex. 2030 ¶ 83). We adopt Patent Owner’s proposed level of skill for purposes of this Decision. We determine that this level of ordinary skill in the art—i.e., an individual with a mechanical engineering degree and experience designing medical devices—is consistent with the level of technical understanding and competence reflected in the ’329 patent Specification and the asserted prior art references, based on our review of the current record. Moreover, our determination in this Decision would be the same were we to adopt Petitioner’s proposed level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner asserted “[p]lain and ordinary meaning” for “a plurality of protrusions” in claims 9 and 30, whereas Petitioner proposed “an internal structure attached to the second wall that prevents the collapse of the first and second wall during suction.” Prelim. Resp. 20 (citing Ex. 2039). Here, Patent Owner argues that “protrusion” should be construed to mean “a structure attached to the second wall but not the first wall,” with respect to claims 1, 9, and 30, and to mean “a structure attached to the first wall but not the second wall,” with respect to claim 21. Id. at 24. Patent Owner also argues that structure attached to both the first wall and the second wall is inconsistent with “the plain and ordinary meaning of ‘protrusions’ in light of the specification.” Id. at 21 (citing Ex. 2030 ¶¶ 111–112). We address Patent Owner’s arguments in the context of our analysis of Petitioner’s contentions below.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“combination deficient. Petitioner argues that Park’s walls are “likely to collapse under the suction force,” based not on Park, but on Baughan, which states that “discs” in Baughan are used to prevent the “flexible sleeve” of Baughan from collapsing. Pet. 89. (citing Ex. 1007, 3:46–48). Petitioner reasons that because Park uses silicone, a flexible material, Park’s walls must also collapse like Baughan. Id. (citing Ex. 1006 ¶¶ 32, 34). Petitioner, however, directs us to no disclosure in Park to suggest that the material used in Park or the arrangement of Park would collapse in the same manner as Baughan. Indeed, if Park’s mouthpiece collapses as Petitioner speculates, it would appear likely to render Park inoperable. See Ex. 2030 ¶ 205. Additionally, Petitioner recognizes that in Park “the sidewalls and the insertion part 111 would help resist this collapsing force,” and states that in Park it “is unclear whether the mouth prop 100 includes a spine or other rigid structure running through the middle of the mouth prop 100.” Pet. 89– 90. Thus, whether Park is susceptible to collapse is, at best, unknown. See Prelim. Resp. 48 (asserting that a person of ordinary skill would have known “that silicone can have varying degrees of hardness, tensile strength, and elasticity such that Park’s mouthpiece would not necessarily collapse under suction”) (citing Ex. 2030 ¶¶ 189–90; Ex. 2036; Ex. 2037). Even assuming, as Petitioner asserts, that “additional anti-collapsing structure would assist at the weakest areas of the tongue retractor” in Park, Petitioner offers insufficient reasoning for why a person of ordinary skill would have turned to Baughan and modified the structure taught by Baughan to instead conform to what is recited in claim 1. Petitioner’s suggestion that “common sense” would have led a person of ordinary skill in the art to modify the structures of Baughan to solve a problem with collapse in Park that Park does not suggest was a problem is likewise unpersuasive and insufficient. Pet. 93 (further asserting that “it was well known in the art how to make projections on a flat surface”). Petitioner’s reliance on Johnson as generically teaching that protrusions can be on flat surfaces does not supply a reason why a person of ordinary skill in the art would have made the proposed modifications outside of improper hindsight. See also Prelim. Resp. 58, 59 (arguing that the projections in Johnson are on a semicircular surface, not on a flat surface as Petitioner asserts) (citing Ex. 1008 Figs. 4, 5). Based on the evidence and arguments presented, we determine that Petitioner fails to show sufficiently for purposes of instituting inter partes review that the asserted combination of Park, Baughan, and Johnson, or in further combination with Zheng, teaches “protrusions protruding from an interior surface” of one wall of the mouthpiece “towards” an opposing wall of the mouthpiece, as required by claim 1, or that a person of ordinary skill in the art would have had reason to combine the asserted references in the manner alleged by Petitioner.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,011,329 - PTAB · Nov 18, 2025 · IPR2025-00782 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.
In the decision…question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’469 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: [A] POSITA would have had at least a bachelor’s degree in computer science, computer engineering, business information systems, software engineering, or systems engineering and at least two years of experience in computer networking or telecommunications. Ex.1002 ¶21; see also Ex.1001 (1:14-31). Additional education could substitute for professional experience. Ex.1002 ¶21. Significant work experience could substitute for formal education. Ex.1002 ¶21. Pet. 7–8. Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it “do[es] not believe explicit construction is required to resolve this Petition.” Pet. 7. Patent Owner proposes constructions for “Internet,” “access the Internet,” “subscriber access website.” Prelim. Resp. 12–15. On this record and for purposes of this decision, we determine that no claim terms require express construction. D. Alleged Anticipation of Claims 1, 2, 10, 11, and 24–28 by Bruner and” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We find Patent Owner’s argument to be persuasive. Petitioner does not explain adequately how Bruner discloses the positional requirement of a subscriber access unit being coupled between the satellite dish and the router. Accordingly, Petitioner has not shown sufficiently for purposes of institution that Bruner anticipates independent claim 24. Although, for the obviousness challenge, Petitioner contends that Clark discloses a wireless router (for limitation 24c), Petitioner relies solely on Bruner for the “between” limitation. See Pet. 17 (“Bruner and/or Bruner in view of Clark both disclose each limitation of claim 24c, including a router (e.g., Bruner’s ‘ADS’ and Clark’s ‘wireless router’)”); id. at 18–19 (the discussion of the “between” limitation 24d asserting that “Bruner discloses claim 24d,” with no mention of Clark). Furthermore, Petitioner merely asserts that both Bruner and Clark disclose a router. See id. at 17–18. Petitioner, however, does not indicate clearly which is used in the proposed combination, does not describe the configuration of a proposed combination or a proposed modification of Bruner’s system, and fails to set forth an adequate and persuasive reason with rational underpinning as to why a person of ordinary skill in the art would have modified Bruner’s system to arrive at the positional requirement of the subscription access unit being coupled between the satellite dish and a router. See id. at 13–14 (motivation section for this ground); id. at 18–19 (addressing the “between” limitation 24d). Accordingly, Petitioner has not shown a reasonable likelihood of prevailing on its challenge to independent claim 24 as obvious over Bruner in view of Clark.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,324,469 - Clearcorrect Operating, LLC v. Align Technology Inc.Institution deniedPTAB · Oct 23, 2025 · IPR2025-00815 · APJ Cynthia M Hardman · IPR · Institution
The Board denied institution because ClearCorrect did not show a reasonable likelihood that claims 1–24 would have been obvious over Chishti-511, Chishti-876, Sachdeva, and Becker.
In the decision…least three reasons. Prelim. Resp. 8–27. First, Patent Owner argues that “[t]he petition is incurably defective for failing to address Chishti-876’s teaching away from the modification the petition proposes in its combination.” Id. at 10. Specifically, Patent Owner explains that in the ’444 IPR,…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“3. Analysis In view of the arguments and cited evidence, we find on this record that Petitioner has not demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine Becker’s round-tripping with the teachings of the Chishti patents and Sachdeva.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party indicates that any other claim term requires express construction. Only claim terms in controversy need be construed. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). For purposes of this Decision, we determine that no other claim term requires construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITA
“Court for the Western District of Texas (see supra Section I.B), they jointly adopted the definition of “round-tripping” set forth in the ’879 patent Specification. Pet. 9; Prelim. Resp. 8; Ex. 1013, 8. The ’879 patent Specification defines “round-tripping” as moving a first tooth out of the path of a second tooth, and once the second tooth has moved sufficiently, moving the first tooth back to its previous position before proceeding to a desired final position of that first tooth. See Ex. 1001, 13:9–13. We adopt this agreed-upon construction for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,524,879 - Western Digital Technologies, Inc. v. Godo Kaisha IP Bridge 1Institution deniedPTAB · Oct 8, 2025 · IPR2025-00701 · APJ Sheila F Mcshane · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–14 were obvious over the asserted combinations.
In the decision…layers are each “entirely crystallized” when Petitioner relies only a thin layer, that is, a portion, of the 115 and 175 layers for the teaching that the respective layers are entirely crystallized. Put another way, Petitioner’s mapping is inconsistent: Petitioner relies upon the full…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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(a) (2018). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’138 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 1–14 of the ’138 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “the claim terms should be given their plain and ordinary meaning and no claim construction is necessary to find the claims unpatentable.” Pet. 6. Patent Owner does not address claim construction. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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
- Skill levelSkill level petitioner adoptedOther
“a Ph.D. or master’s degree in electrical engineering, physics, materials science, or a related field, and at least one year or four years, respectively, of experience in the research, design, and/or development of magnetic/spintronic devices, or the equivalent. Pet. 8 (citing Ex. 1024 ¶¶ 25–29). Petitioner contends that less work experience can be compensated for by a higher level of experience and vice versa. Id. (citing Ex. 1024 ¶ 25). Petitioner also asserts that the proposed level of skill would be the same under any of the United States, Japanese, or PCT application dates. Id. at 8–9 (citing Ex. 1024 ¶¶ 24–25). Patent Owner does not challenge Petitioner’s proposed level of qualifications for one of ordinary skill in the art. Prelim. Resp. 20. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’138 patent and the asserted prior art of record.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“As discussed above, Petitioner relies upon Parkin, and its layers 115 and 175, as the claimed first and second ferromagnetic material layers, respectively. See Pet. 10, 16. Petitioner admits that these layers are 8 In the Petition, Petitioner refers to the lower electrode “ferromagnetic layer 110’ as discussed in Claim 1[a]” in the discussion of limitation 1[d]. Pet. 18. Petitioner’s reference to “layer 110’” appears to be in error because the Petition’s discussion for limitation 1[a] refers to layer 115 of Parkin, as does Dr. Bokor’s testimony related to limitations 1[a] and 1[d]. Pet. 10; Ex. 1024 ¶¶ 109, 136. amorphous, but contends that, as Parkin discloses, these layers may be annealed. Id. at 17. Petitioner, however, refers to Parkin’s disclosure that only “a portion of the storage layer 175” is crystallized after annealing. Id. at 17–18 (citing Ex. 1062, 18:51–55) (emphasis added). Petitioner also relies upon Parkin’s “thin crystalline ferromagnetic layer” that is crystallized to teach limitation 1[d]. Id. at 18 (citing Ex. 1062, 18:55–59; Ex. 1024 ¶¶ 131–132) (emphasis added). Dr. Bokor additionally testifies that it is “Parkin’s ‘thin crystalline ferromagnetic layer’ of CoFeB” that meets the “entirely crystallized” requirement of limitation 1[d]. Ex. 1024 ¶ 132. Parkin, however, states that a thin crystalline ferromagnetic layer is formed, but “the bulk of storage layer 175 remains amorphous.” Ex. 1062, 18:55–60 (emphasis added). Petitioner fails to reconcile how its assertions that the first and second ferromagnetic layers, which are mapped to the totality of layers of 115 and 175, meet the limitation that the first and second ferromagnetic layers are each “entirely crystallized” when Petitioner relies only a thin layer, that is, a portion, of the 115 and 175 layers for the teaching that the respective layers are entirely crystallized. Put another way, Petitioner’s mapping is inconsistent: Petitioner relies upon the full depth of certain “layers” of Parkin for the teaching of the ferromagnetic layers, but then only relies upon thin portion of that depth for the assertion that the “layers” are entirely crystallized.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,367,138 - Alliance Laundry Systems, LLC v. Payrange LLCInstitution deniedPTAB · Oct 1, 2025 · IPR2025-00573 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 7 or 11 were unpatentable under the asserted obviousness grounds.
In the decision…prompted one of skill in the art “to combine . . . known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the specific subject matter of a challenged claim is not necessary to establish obviousness. Id. Rather, “any need or problem…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” After considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’772 patent. Accordingly, we do not institute an inter partes review of claims 7 and 11 of the ’772 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person having ordinary skill in the art (“POSA”) pertaining to the ’772 patent “would have had an educational background of, engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems.” Pet. 19–20; Ex. 1003 ¶¶ 20–26. “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 20; Ex. 1003 ¶ 22. Patent Owner does not oppose Petitioner’s formulation of ordinary skill. See Prelim. Resp. generally. On this record, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’772 patent and the asserted prior art. 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
“In this inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be 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. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms expressly to determine whether or not to institute a trial. See Realtime Data LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,481,772 - New Balance Athletics, Inc. v. Nike, Inc.Institution deniedPTAB · Jun 9, 2025 · IPR2025-00020 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 11–15 were unpatentable over the asserted obviousness grounds.
In the decision…prompted one of skill in the art “to combine . . . known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the specific subject matter of a challenged claim is not necessary to establish obviousness. Id. Rather, “any need or problem…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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 [one] of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of the instant Decision, “Nike applies New Balance’s definition for a person of ordinary skill in the art.” Prelim. Resp. 11. Based on the record presented, we determine that Petitioner’s definition of a person of ordinary skill in the art is consistent with the scope and content of the ’932 patent and the asserted prior art, and, at this stage, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner acknowledges that it agreed to the constructions identified by Petitioner. Prelim. Resp. 12. Patent Owner also notes that it agreed to these proposed constructions in the Related Litigation. Id. at 13. However, Patent Owner argues that for purposes of this Preliminary Response, “no terms require construction.” Id. (citing Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)). Based on the record before us, we need not expressly construe any claim terms.” slip op. at 10
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“limitation would have been obvious because one of ordinary skill in the art would have understood that Becker’s stiffer outer lining would have “restrict[ed] the mobility of the ankle, “not allow[ed] for tightening,” and known to “hav[e] the inner lining extend up above the outer lining.” Pet. 33 (citing Ex. 1003 ¶¶ 122–123). Petitioner relies on conclusory reasoning grounded in hindsight to assert that it would have been obvious for “the skin layer [to be] absent from the ankle part of the knitted component,” as required by limitation [11.d]. The difficulty with Petitioner’s position is that neither Becker nor the other cited references disclose, teach, suggest, or otherwise provide motivation for “the skin layer being absent from the ankle part of the knitted component,” as claimed.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,898,932 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 9, 2025 · IPR2025-00151 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–27 unpatentable on the asserted anticipation and obviousness grounds.
In the decision…[i]s whether one skilled in the art would reasonably understand or infer from the 6 IPR2025-00151 Patent 9,510,636 B2 [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’636 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“25:5 (limitation 1a1: “a portion of the knitted component defining the upper”). “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)) (alteration in original). Thus, the claim language suggests that the “integral knit tongue” is a component distinct, at least to some degree, from the “upper.” See also Ex. 1001, 2:27–28 (the Specification stating that “[a] knitted component including the upper and an integral knit tongue is incorporated into the article of footwear.”). Limitation 1d reinforces this understanding by requiring the tongue to be joined to a portion of the throat area of the upper. See id. at 6:35–38 (the Specification indicating that the “throat area” is an area of the upper); cf. Ex. 2014, 18–19 (defining “Throat”: “The main opening of a shoe extending from the vamp [(the front part of a shoe upper that covers the toes and part of the foot)] to the ankle.”). In addition to suggesting that the tongue is a component distinct from the upper, the claim language indicates that the integral knit tongue extends through a throat area. See Ex. 1001, 25:10–11 (limitation 1b: “an integral knit tongue . . . extending through a throat area of the knitted component”). With that context, we turn to the parties’ arguments.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“claim language does not specify it, both parties contend that the “portion of the knitted component” constitutes the majority of the upper. See Pet. 25– 26, 30 (Petitioner applying in this ground that which it characterizes as Patent Owner’s claim construction position); Prelim. Resp. 43 (Patent Owner noting that the Specification states that “a majority of upper 120 is formed from a knitted component 130,” and contending that limitation 1a1 means that “a majority of the upper must be knitted.” (quoting Ex. 1001, 6:57–59)). Nevertheless, we determine for the following reasons that Petitioner has not shown sufficiently that central textile element 60 of Dua-956 defines an upper within the meaning of the claims. See Pet. 26. Petitioner contends that, “[w]ith respect to what defines the upper, the ’636 patent discloses that the ‘upper generally extends over the instep and toe areas of the foot, along the medial and lateral sides of the foot, under the foot, and around the heel area of the foot.’” Pet. 27 (citing Ex. 1001, 1:44–46, 6:66–67). Petitioner reasons that, “[a]s such, the ’636 patent describes the upper as extending around six parts of the foot: (1) the instep area, (2) the toe area, (3) the medial side, (4) the lateral side, (5) under the foot, and (6) the heel area.” Id. Applying this reasoning to the reference, Petitioner contends that, “[o]f the six upper parts identified in the ’636 patent, only two of them—the medial and lateral sides—are not formed by the central textile element 60,” and therefor “the majority of the parts of the upper are formed by the central element 60.” Id. at 30 (citing Ex. 1002 ¶¶ 103–109). Petitioner provides an annotated versions of Figures 8B and 8C of Dua-956, reproduced below, to depict its contentions. Id. at 30. Above are Figures 8B and 8C of Dua-956—which are, respectively, perspective views depicting a second step and a third step in assembling the article of footwear (Ex. 1029, 3:41–45)—with central textile element 60 shaded green. As Petitioner concedes (Pet. 30) and as the annotated figures above show, central textile element 60 does not form the medial and lateral sides of the footwear. Thus, even if central textile element 60 constitutes the majority of parts of the upper, the sides of the upper remain undefined by the central textile element. Petitioner does not explain adequately how the upper is defined when the side components are missing. We determine that Petitioner has not demonstrated adequately for institution that Dua-956 discloses “a portion of the knitted component defining the upper,” as recited in independent claim 1.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Petitioner contends that “both upper 70 and 30' are constructed as a single, unitary knit element that defines the upper, and it would have been obvious to construct upper 30 in the same manner.” Pet. 65. Petitioner next turns to Horii, asserting that “Horii discloses “shoes 1 that are characterized by the fact that the entire upper is constructed of a single piece of upper member 2 that is made through weft knitting or circular knitting.’” Id. at 67 (citing Ex. 1017, 9) (emphasis omitted). Petitioner reasons that “[a] POSITA would have been motivated to manufacture Dua-956’s upper 30, for example, using the multilayer, single fabric of Horii because Horii’s single-piece knit upper would have provided upper 30 with a seamless structure.” Id. at 68. We disagree with Petitioner’s assertion that “[c]onstructing Dua-956’s upper 30 as a single, unitary knit component would not materially change the analysis under Ground 1A.” Pet. 70. In Ground 1A, Petitioner contends that “‘forward portion 61’ of the central textile element 60 is an integral knit tongue that extends through a throat area of the knitted component in the assembled upper 30.” Id. at 34. During the assembly of footwear 10, forward portion 61 is flipped over the top of the footwear and the separate textile elements 40 and 50 (the sides of the footwear) are stitched to the lateral and medial edges (64a and 64b) of forward portion 61—the purported tongue. See Ex. 1029, 9:5–11, Figs. 8B, 8C. Petitioner does not explain adequately how, when modifying the embodiment used in Ground 1A to have a seamless top portion, the purported integral knit tongue is retained in that combination. See Pet. 70 (Petitioner asserting that the proposed combination would still have an exterior surface, an inner surface, lace elements 33, channels 44/54, and loops 35, “along with the other structures identified under Ground 1A,” but not specifically discussing the purported integral knit tongue.). We determine that Petitioner has not demonstrated a reasonable likelihood of demonstrating that claims 1–6, 8–17, and 19–27 would have been obvious over Dua-596 alone or in combination with Horii.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,510,636 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 9, 2025 · IPR2025-00150 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Skechers did not show a reasonable likelihood that claims 1–23 were unpatentable, principally because the asserted art did not disclose the construed integral knit tongue.
In the decision…question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (second and third alterations in original) (quoting In re Baxter Travenol…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’562 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’562 patent in February 2012 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 22. Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Nike applies Petitioner’s proposed level of skill in the art.” Prelim. Resp. 15. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“inquiries.” Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003). “The first step in both analyses is a proper construction of the claims . . . [and t]he second step in the analyses requires a comparison of the properly construed claim to the prior art.” Id. Although an explicit claim construction analysis by a petitioner is not required in every case, a petition nonetheless must identify how the challenged claims are to be construed and how, as so construed, they are unpatentable under the statutory grounds asserted. 37 C.F.R. § 42.104(b)(3)–(4). And, being part of a prima facia case, such an analysis is part of Petitioner’s burden to demonstrate a reasonable likelihood of prevailing on its patentability challenges. Petitioner has failed to satisfy the threshold burden for every ground based on this construction.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We do not find Petitioner’s contentions regarding the two annotated figures to be persuasive. First, those contentions, and the cited opinions of Dr. Adanur, are based on a claim construction that, as discussed above, we reject and for which neither party advocates. Second, Petitioner does not explain adequately why a person of ordinary skill in the art would discern, even with Petitioner’s added red ovals, a tongue distinct from the upper and tongue extending through the throat area. We also do not find persuasive Petitioner’s contentions regarding differing textures. See Pet. 32–33. Even if differing textures could rise to the level of distinguishing an integral knit tongue from the upper, the purported tongue texture 48" is not confined to the area identified by Petitioner as the tongue. See Pet. 31 (annotated Figure 11, reproduced above). For example, texture 48" outside of Petitioner’s oval appears to wrap approximately halfway around the ankle opening, which is not argued to be consistent with an ordinary artisan’s understanding of a tongue. Or, put another way, there is no indication that the portion of the 48" texture within Petitioner’s red oval, which purportedly represents the tongue, is distinguishable from the remaining portion of the 48" texture outside of the red oval. We are not persuaded that Petitioner has demonstrated a reasonable likelihood of proving that a person of ordinary skill in the art would consider the relatively large area depicted as having texture 48" to be an “integral knit tongue.” In light of the above, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and its dependent claims 2–4 as anticipated by Dua-592.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,060,562 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. KP Innovations 2, LLCInstitution deniedPTAB · May 12, 2025 · IPR2025-00101 · APJ Jameson Lee · IPR · Institution
The Board denied institution of review of claims 18–21, finding no reasonable likelihood on three grounds and declining institution in view of the limited potential reach of the remaining ground.
In the decision…fifth embodiment already includes a video conferencing camera facing the user, mounted in the hinge connecting case bodies 1 and 2. In light of that teaching, there is little reason to add a camera to the inward facing side of Nagasawa’s case body 1. For the foregoing reasons, Petitioner has not…
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Regarding the alleged anticipation by Okaya, Petitioner has not adequately shown that Okaya discloses that the audio and video outputs of carousel 10 connect to a communication network without the intervening use of a computer or video conferencing system to which the carousel is connected. Okaya specifically describes that “the multimedia carousel 10 includes several input and output terminals for integrating with a multimedia computer or video conferencing system.” Ex. 1006, 3:1–4. The specific scenario described in Okaya, in column 3, lines 43 to 61, also has carousel 10 connected to a notebook PC. Thus, Petitioner’s arguments based on carousel 10 itself as the device of limitation [18a] is inadequate. See also” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“For reasons discussed below, we find Petitioner’s reasoning to be insufficient for one of ordinary skill in the art to add two cameras to Nagasawa’s case body 1, one on each side of case body 1. Petitioner does not adequately address the issue of sufficient spacing on Nagasawa’s case body 1, which includes two back-to-back mounted displays 4 and 8 (Figure 1A), to include two additional cameras, one facing inward and the other facing outward, particularly as one side of case body 1 is used for gaming (Fig. 1B, Ex. 1007, 3:53–65). In Nagasawa’s fifth embodiment, which includes a camera for video conferencing, the camera is placed in the hinge connecting case bodies 1 and 2, and not within case body 1. That is an indication that there is not enough room in Nagasawa’s case body 1 to incorporate a camera, much less two cameras as Petitioner has proposed to meet limitations [18c] and [18d]. Nagasawa’s Figure 12B is reproduced below: Figure 12B is a front view of a fifth embodiment of Nagasawa’s foldable phone in the unfolded position. Ex. 1007, 3:24–26. Nagasawa describes: “Video conference display may be provided where the photo sticker 51 is to be affixed in order to provide folding portable apparatus equipped with a small-sized TV camera 53 at the hinge.” Id. at 7:36–39. Nagasawa’s design already dictates where a camera would be mounted, and omits discussion of any other locations of that camera, much less a placement of it on the phone case body. Id.” slip op. at 23
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Additionally, Dr. Theogarajan testifies: “A person using [Nagasawa’s] pocket game would cover any camera placed on the outer surface of the first case body. Any camera placed in such a position would be abused with dirt and oil from a game player’s hand.” Ex. 2001 ¶ 145. We credit the testimony. It further undermines Petitioner’s proposed addition of two cameras to Nagasawa’s case body 1. Also, Nagasawa’s fifth embodiment already includes a video conferencing camera facing the user, mounted in the hinge connecting case bodies 1 and 2. In light of that teaching, there is little reason to add a camera to the inward facing side of Nagasawa’s case body 1.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner asserts: “[T]he Board need not construe any term because the prior art invalidates the claims under any plausible construction.” Pet. 12. Petitioner has not proposed an express construction for any claim term. Patent Owner asserts that “[t]he term ‘receive and transmit information’ [in claim 18] means real-time or near real-time audio and visual information.” Prelim. Resp. 15–16. Patent Owner further argues that “Petitioner accepts Patent Owner’s construction because the construction is a plausible construction, and Petitioner stated that they believe their art invalidates the claims under any plausible constructions.” Id. at 16. For purposes of this Decision, however, we need not decide whether to adopt Patent Owner’s proposed construction. C.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,499,168 - Intel Corporation v. Interdigital, Inc.Institution deniedPTAB · Apr 1, 2025 · IPR2024-01441 · APJ Lisa A Murray · IPR · Institution
The Board denied institution on all four grounds for claims 1–8 under § 325(d), finding the art or arguments previously presented and no material Examiner error shown.
In the decision…filter is a sparse filter.” Ex. 1005, 304; Prelim. Resp. 4. The Examiner then stated that even so, “it would have been obvious . . . to use the teachings of the Applicant’s Admitted prior art to modify the apparatus of Lee by using a sparsity based de-noising filter[.]” Ex. 1005, 304; Pet. 10;…
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework for evaluating arguments under Section 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were 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” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“CLAIM CONSTRUCTION Both Petitioner and Patent Owner argue that the Board can determine whether to grant or deny institution without construing any claim terms. Pet. 16; Prelim. Resp. 17. They represent, however, that the construction of the term “sparse de-noising filter” is contested in the co-pending investigation under 19 U.S.C. § 1337 at the U.S. International Trade Commission (“ITC”). Pet. 13; see Prelim. Resp. 6–8. In that litigation, four constructions were proposed for that term: ITC Complainants’ proposal, ITC” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 9,674,556
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.