- Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims under §325(d), finding the petition relied on previously presented art and did not show material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (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 Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“single §102 rejection based solely on Nishida.” Pet. § 325(d) Reply 3 (emphasis omitted). Specifically, Petitioner argues that: The examiner seemingly failed to consider how it would have been obvious to combine Nishida (or any other reference of record, such as Orei) with knowledge in the art, including the fact that it was “well known to use double needle-bar raschel machines . . . to knit textile elements simultaneously with surrounding textile structures” (Pet., 37–38), and that simultaneous knitting would be obvious because it would “increase yield and reduce manufacturing steps,” as explained in the Petition and supporting evidence. See Pet., 42–44. Id. (alterations in original); see also id. at 4 (Petitioner arguing that the Examiner clearly erred for “failing to seemingly even consider if it would 10 We quote here, to give context to “otherwise,” both aspects that a petitioner must demonstrate in order to meet its burden. In order to determine whether Petitioner has met its overall burden, we need not and do not reach the issue of whether “the previously presented art [Nishida] teaches the limitations of the challenged claims.” Ecto World, Paper 13 at 6. have been obvious to combine Nishida with other prior art, or to implement Nishida using well-known techniques for simultaneously knitting textile elements and surrounding structures having differing textures.”). We do not find this argument persuasive. The cited portion of the Petition is the contention that Orei—not Nishida—would render obvious claim 1. See Pet. 37–38, 42–44 (Ground 1A). Thus, Petitioner has not shown persuasively that the Examiner erred in not making an obviousness rejection based on Nishida because the disputed limitation was purportedly well-known. Additionally, Petitioner’s support for the assertion that this limitation is well-known is not persuasive. The Petition parenthetically quotes from a source stating that plural “articles . . . can be simultaneously knitted side-by-side,” not that an article (a textile element) and surrounding textile structure are known to be simultaneously knitted. See Pet. 38 (quoting Ex. 1050, 201) (emphasis added); see also Pet. § 325(d) Reply 3 (Petitioner quoting its own argument and characterizing it as a “fact” (“The examiner seemingly failed to consider . . . the fact that it was ‘well known . . . “)).” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,266,749 - PTAB · Jul 31, 2024 · IPR2023-00682 · APJ Thu A Dang · IPR · Remand
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In light of these similarities, we find that the Petition relies on art that is substantially the same as art previously evaluated by the Office. 3. Advanced Bionics Part II: Office Error Because the first part of the Advanced Bionics framework is satisfied, we next determine whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 32
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“7 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 34
Discretionary denialPatents in suitUS 10,771,181 - PTAB · Jul 31, 2024 · IPR2023-00681 · APJ Thu A Dang · IPR · Remand
On remand, the Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“(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 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.” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.7 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted. 7 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 35
Discretionary denialPatents in suitUS 10,263,723 - PTAB · Jul 31, 2024 · IPR2023-00680 · APJ Thu A Dang · IPR · Remand
On remand, the Board denied institution for all challenged claims under § 325(d), finding substantially the same art and arguments had been presented and no material Office error shown.
RulingsRemand decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“1. Framework In evaluating the exercise of discretion to deny institution under Section 325(d), the Board uses the following two-part framework: (1) determining 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, determining 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) (“Advanced Bionics”). Within this two-part framework, the Board considers a number of non-exclusive factors in evaluating whether to exercise its discretion under § 325(d). See Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first para.) (“Becton, Dickinson”); see also Advanced Bionics at 9–11. The factors set forth in Becton, Dickinson are as follows: (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. Becton, Dickinson, Paper 8 at 17–18. Becton, Dickinson factors (a), (b), and (d) relate to whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics, Paper 6 at 10. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023) (“Wolfspeed”). Factors (c), (e), and (f) “relate to whether the petitioner has” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“4 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 52–59; Sur-reply 1–5. Nor do we reach the parties’ merits arguments.” slip op. at 37
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review.4 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 36
Discretionary denialPatents in suitUS 9,887,795 - Parse Biosciences, Inc. v. 10x Genomics, Inc.Institution deniedPTAB · Dec 19, 2023 · IPR2023-01033 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution of IPR challenging claims 1–30, finding substantially the same art had been presented to the Office and no material error was shown under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“the following two-part framework: (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 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, 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8, 17– 18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“enzyme complex” and “nucleic acid insert element.” Pet. 21. Patent Owner, for its part, states that “[n]o terms require construction for considering institution.” Prelim. Resp. 18. We determine that neither of the two limitations identified by Petitioner requires an express construction for purposes of this Decision. It bears mentioning, however, that the ’357 patent states that “[t]he insertional enzyme can be a transposase.” Ex. 1001, 3:47–48. There is no dispute that Grunenwald discloses the use of a transposase and, thus, an insertional enzyme complex. See Pet. 16 (citing Ex. 1003 ¶¶ 17, 93–94, 162); Prelim. Resp. 13 (“Grunenwald further defines ‘transposase’ to mean ‘an enzyme that is capable of forming a functional complex . . . and catalyzing insertion or transposition of the transposon end-containing composition into the double-stranded target DNA with which it is incubated in an in vitro transposition reaction.” (citing Ex. 1003 ¶ 93)).” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“express construction of the term “chromatin.” The ’357 patent itself provides a definition, stating: The term “chromatin,” as used herein, refers to a complex of molecules including proteins and polynucleotides (e.g. DNA, RNA), as found in a nucleus of a eukaryotic cell. Chromatin is composed in part of histone proteins that form nucleosomes, genomic DNA, and other DNA binding proteins (e.g., transcription factors) that are generally bound to the genomic DNA. Ex. 1001, 12:61–67. This is the meaning that we apply in this Decision.” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 10,738,357 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00680 · APJ Thu A Dang · IPR · Institution
The Board denied institution for all challenged claims under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“5. 35 U.S.C. § 325(d) Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 28
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review.3 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29
Discretionary denialPatents in suitUS 9,887,795 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00681 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and Petitioner had not shown material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“In light of these similarities, we find that the Petition relies on art and arguments that are substantially the same as previously evaluated by the Office.” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted. 5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,263,723 - Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Nov 3, 2023 · IPR2023-00682 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution under § 325(d), finding substantially the same art had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”), the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 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 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 at 8.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied
“D. Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition. III. CONCLUSION For the foregoing reasons, we exercise discretion under 35 U.S.C. § 325(d) to deny institution of an inter partes review.5 IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“5 Because we deny the Petition under 35 U.S.C. § 325(d), we do not reach Patent Owner’s request that we deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential). See Prelim. Resp. 53–60. Nor do we reach the parties’ merits arguments.” slip op. at 26
Discretionary denialPatents in suitUS 10,771,181 - Ii-Vi, Inc. v. Nextgen Innovations, LLCInstitution deniedPTAB · Feb 15, 2022 · IPR2021-01358 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution of review of claims 1–21 under § 325(d), finding the grounds presented substantially the same art and arguments previously considered and no material Office error.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating the exercise of discretion to deny institution under Section 325(d), the Board uses the following two-part framework: (1) determining 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 18
Discretionary denialPatents in suitUS 9,887,795 - Ii-Vi, Inc. v. Alexander Soto And Walter SotoInstitution deniedPTAB · Feb 15, 2022 · IPR2021-01361 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution on all challenged claims under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material Office error was shown.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied
“to the first part of the Advanced Bionics framework support the finding that substantially the same art and substantially the same arguments were previously presented to the Office. With respect to the second part of the Advanced Bionics framework, we find that Petitioner has not demonstrated that the Office erred in a manner material to the patentability of challenged claims. As discussed below, Petitioner does not meaningfully assess the record of examination or explain sufficiently how or why Becton, Dickinson factors (c), (e), or (f) support its positions.” slip op. at 26
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“III. CONCLUSION We conclude that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review. IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 34
Discretionary denialPatents in suitUS 10,771,181
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.