• Skechers U.S.A., Inc. v. Nike, Inc.Institution denied
  PTAB · 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 · Graham
  Patents in suitUS 9,510,636
• Skechers U.S.A., Inc. v. Nike, Inc.Institution denied
  PTAB · 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 · Graham
  Patents in suitUS 9,060,562
• Formycon AG v. Regeneron Pharmaceuticals, Inc.Institution denied
  PTAB · Jun 2, 2025 · IPR2025-00233 · APJ Michael A Valek · IPR · Institution

  The Board denied institution under § 314(a) based on the Fintiv factors and denied joinder; it did not reach the merits of the asserted grounds.

  In the decision

  …both sides, aflibercept . . . can be produced from different cells, only some of which result in glycosylation of aflibercept.”); see also Ex. 1029 (teaching expression in systems other than CHO cells); Ex. 1039 ¶ 38 (teaching glycosylation may be eliminated by using mutant CHO cell lines).…

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “B. The Fintiv Factors and Related Guidance The Board’s precedential decision in Fintiv outlines factors that balance considerations of system efficiency, fairness, and patent quality when a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, such as the MDL proceeding here. Fintiv 5–6. These factors are: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. “[I]n evaluating the factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied

    “III. DISCRETION UNDER 35 U.S.C. § 314(A) We begin by addressing Patent Owner’s arguments for discretionary denial. As explained below, we find those arguments persuasive. Thus, we exercise discretion to deny institution of the Petition under 35 U.S.C. § 314(a) without reaching the merits of Petitioner’s asserted grounds of unpatentability.” slip op. at 8

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “35 U.S.C. § 314(a) to deny institution of the Petition and deny the Joinder Motion.” slip op. at 2

  Discretionary denial
  Patents in suitUS 11,084,865
• Samsung Bioepis Co., Ltd. v. Regeneron Pharmaceuticals, Inc.Institution denied
  PTAB · Jun 2, 2025 · IPR2025-00176 · APJ Michael A Valek · IPR · Institution

  The Board denied institution of IPR on all challenged claims under § 314(a), finding the Fintiv factors—particularly investment, overlap, and merits—weighed against review.

  In the decision

  …. . . and increase risks such as inflammation”). Petitioner attempts to distinguish these and other findings from the district court by pointing to teachings in some of its cited references that differ from those considered in the Mylan case and the reference claims in Petitioner’s ODP defense.…

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “raised by this overlap, but given the circumstances, it does not effectively mitigate them. First, the disputed issues for Petitioner’s ODP defense are the same or substantially similar to those for the obviousness grounds in the Petition, but the Sotera stipulation does not prevent Petitioner from litigating those issues before both the district court (as part of its ODP defense) and here in the event an IPR is instituted.19 Second, the MDL proceeding 19 ODP or nonstatutory double patenting is, as the name implies, not premised on any statute. See, e.g., Ostuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280, 1297 (Fed. Cir. 2012) (“Nonstatutory double patenting is a judicially created doctrine grounded in public policy.”). Accordingly, it is not a ground Petitioner reasonably could have raised in this IPR. See 35 U.S.C. § 311(b) (inter partes review may be requested “only on a ground that could be raised under section 102 or 103”). includes other biosimilar applicant defendants who are similarly motivated to try to invalidate the ’865 patent claims, but who are not subject to any Sotera stipulation. Even if we institute review on Petitioner’s grounds here, those other defendants remain free to litigate the same grounds in the consolidated MDL proceeding. For these reasons and given the particular circumstances of this case, Petitioner’s Sotera stipulation does not sufficiently mitigate the risks of duplicated efforts or inconsistent decisions by making this IPR a “true alternative” to resolution of these issues by the district court. See Motorola Solutions, Inc. v. Stellar, LLC, IPR2024-01205, Paper 19, 3–4 (PTAB Mar. 28, 2005) (determining on Director Review that a Sotera stipulation did not ensure IPR would be a “true alternative” because Petitioner’s invalidity arguments “include combinations of the prior art asserted in these proceedings with unpublished system prior art, which Petitioner’s stipulation is not likely to moot” and thus the same or similar issues would remain in the parallel proceeding); SAP America, Inc. v. Cyandia, Inc., IPR2024-01496, Paper 13, 8–9 (PTAB Apr. 7, 2025) (similar).” slip op. at 19

  Discretionary denial
  Patents in suitUS 11,084,865
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. KP Innovations 2, LLCInstitution denied
  PTAB · 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 Phillips
  Patents in suitUS 10,499,168
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Secure Wi-Fi LLCInstitution denied
  PTAB · Mar 24, 2025 · IPR2024-01367 · APJ Frederick C Laney · IPR · Institution

  The Board denied institution of IPR challenging claims 1–24, exercising discretion under § 314(a) based on the Fintiv factors.

  In the decision

  …1. Merits: Obviousness over Vardi, IEEE802.11, and Jaflon Petitioner advances arguments that map with particularity every limitation of claim 1 to teachings in Vardi, IEEE802.11, and Jaflon, and sufficiently articulates rationales to combine these references. Pet. 22–41, 69–77. At this…

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “same validity issues relating the ’384 patent addressed in this proceeding about five months before we would reach a final determination, we determine that Factor 2 weighs heavily in favor of discretionary denial.” slip op. at 13

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
  § 103 obviousnessDiscretionary denial
  Patents in suitUS 10,694,384
• Deere & Company v. David’S Dozer V-Loc System, Inc.Institution denied
  PTAB · Mar 18, 2025 · IPR2024-01442 · APJ Robert J Silverman · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 unpatentable under any asserted obviousness ground.

  In the decision

  …Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). The Supreme Court has explained that an obviousness determination may consider, the teachings of multiple prior art references, the knowledge and capabilities of persons having ordinary skill in the art (at the relevant time), as well…

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response (including any other authorized submissions) “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.”” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposal for the level of ordinary skill in the art differs from that of Petitioner, primarily because Patent Owner contends that such a person of ordinary skill would have a certain degree of experience relating specifically to skid steers, or similar machinery, and their hydraulic systems. See Prelim. Resp. 8–10 (citing Ex. 2001 ¶ 31). Insofar as we understand the significance of Patent Owner’s concerns about the differences between the parties’ proposals, these differences do not bear upon the issues addressed herein. Accordingly, for the purposes of the present Decision, we adopt Petitioner’s proposed definition of the relevant level of ordinary skill in the art. Further, with regard to the issues addressed in this Decision, Petitioner’s proposed description of the level of ordinary skill in the art appears to be consistent with the level of skill indicated by the ’300 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner. Petitioner argues that “Patent Owner made the deliberate choice to claim broadly,” eschewing “structural limitations that would have expressly or implicitly required the hydraulic of Element [1.4] to differ from the hydraulic of Element [1.5].” Reply 7. Further, Petitioner argues that “Patent Owner chose to generically recite ‘a hydraulic’ in each of Elements [1.4] and [1.5] without distinguishing labels, identifiers, or qualifiers.” Id. To the contrary, the two recited “hydraulic[s]” are distinguished by the language surrounding and modifying each instance in the method of claim 1. Indeed, the recitations of distinct operations performed by each “hydraulic,” in the claimed method, further support the understanding these are distinct and different structures. Additionally, as Patent Owner contends (see Prelim. Resp. 16), each instance of “hydraulic” is introduced with the indefinite article “a” — a signal that the two instances of “a hydraulic” do not refer to the same structure. See Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct components’ of the patented invention.”) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); see also CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable

    “As Patent Owner argues, Petitioner’s proposed combination of Funk and Lewis “would interfere with the intended operation of the Funk control system to move the lift arms up and down in response to inter alia changes in the height signal.” Prelim. Resp. 20. This scenario is similar to that in Tec Air, 192 F.3d at 1356, which involved a claimed injection-molding technique that used screw-threaded adjustable plugs accessed from the inner, cavity-facing, side of the mold. The proposed combination included a prior art reference disclosing adjustment members accessed from the opposite, outer, side of the mold, and having a non-threaded smooth tip that extended through the mold and into the cavity. Id. at 1360. The Federal Circuit held that the prior art reference was properly determined to teach away from the claimed invention, because “no screw driver would be able to turn the smooth-headed screws from the cavity-side of the mold,” hence the proposed “combination would be inoperable for its intended purpose.” Id. Likewise, the proposed combination in the present matter teaches away from the subject matter of claim 1, because it would “immobilize [Funk’s] main arm,” and its associated hydraulic cylinder 18, “leaving just ‘one’ of Funk’s two adjustment mechanisms — blade tilt — available for grade control” (Pet. 10), thereby decreasing the system’s accuracy (see Ex. 2001 ¶¶ 113– 14) and negating the very technique that Funk relies upon to achieve its stated goal. See Ex. 1004 ¶ 7 (“[O]ne object of the present invention is to provide an automatic leveling control system that is sufficiently accurate for preparing the ground prior to the construction of concrete floors and foundations.”)” slip op. at 28

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Markman · KSR · Graham
  Patents in suitUS 10,533,300
• Ningbo Linhua Plastic Co., Ltd. v. Converter Manufacturing, LLCInstitution denied
  PTAB · Mar 10, 2025 · IPR2024-01435 · APJ James A Tartal · IPR · Institution

  Institution was denied for claims 6–10 and 21 because Petitioner did not show a reasonable likelihood that Portelli or Meadors rendered the claims obvious.

  In the decision

  …relies only on the disclosure in Figure 13 of Portelli in this regard. See Pet. 19–30. Moreover, Petitioner directs us to no disclosure in Portelli teaching any method used to generate the profile shown in Figure 13 from the profile shown in Figure 12. See Prelim. Resp. (Patent Owner arguing that…

  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) (2023). 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 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” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Id. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we find that the ’222 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and the ’222 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s asserted level of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Petitioner argues that “the challenged claims are invalid under their plain and ordinary meaning.” Pet. 5. Petitioner further contends that “[t]he scope of the plain and ordinary meaning of certain claim terms must at least encompass the disclosure and accompanying illustrations in the ’222 patent.” Id. at 6 (citing no legal support for its proposition). Petitioner also refers to how Patent Owner applied certain “terms” and “other features to Petitioner’s product” in its district court complaint against Petitioner. See id. at 7–8 (citing Ex. 1007, 7–8; Ex. 1003, ¶¶ 53–57). Patent Owner does not address claim construction and does not dispute the meaning of any claim term in regard to Petitioner’s contentions. See generally Prelim. Resp. Accordingly, in view of the issues we address below, we apply the plain and ordinary meaning of claim terms and further determine that it is not necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); 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.”).” slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Figure 13 of Portelli, however, does not show the profile of an article prior to a method step of impinging to further shape it, but instead shows “a schematic sectional view of the edge of the tray . . . after it has been deformed out of the wrap path in accordance with the invention [of Portelli].” Ex. 1004, 8:11–13 (emphasis added). Petitioner fails to show any method taught by Portelli that further alters the configuration of the profile of the tray shown in Figure 13 of Portelli by, for example, an additional method step of impingement.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,562,222
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Feb 11, 2025 · IPR2024-01249 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution because neither the Hottinen–Lilleberg nor Zimmerman–Lilleberg combination showed the claimed parameter tracking unit or an equivalent for claims 1, 3–5, and 7–9.

  In the decision

  …averaging or its equivalent in the cited prior art. See id. at 24–25 (citing Pet. 28, 63; Ex. 2001, 67). Because Petitioner does not identify any teaching or suggestion of essential elements of the structure corresponding to the recited means—or equivalents thereof—in the asserted prior art, we…

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). We may not institute an inter partes review “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). Upon consideration of the arguments and evidence presented, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to either ground asserted in the Petition. We therefore deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “at the time of the ’505 patent had at least a bachelor’s in EE/CE/CS, physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation,” where “[m]ore education can supplement practical experience and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 51–55). Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. We find Petitioner’s proposal to be consistent with the evidence of record, including the asserted prior art and the ’505 patent, and accordingly, we adopt Petitioner’s proposed definition of the level of ordinary skill in the art for purposes of this Decision.” slip op. at 16

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed

    “for use in conjunction with a signal separation unit, in which each received signal has associated channel transfer functions.” Ex. 1001, 12:42–45. The preamble of independent claim 9 similarly recites “a parameter estimation unit for use in conjunction with a signal separation unit for estimating channel transfer function parameters from channel transfer functions.” Id. at 14:4–7. Petitioner, however, contends that “this claim term is not part of the preamble” and that “the preamble is [only] ‘In a multi-user detection system in which interfering signals are purposely allowed to exist.’” Pet. 14. Regardless, Petitioner further contends, to the extent there is any argument that that recitation is part of the preamble, “it is limiting at least because it provides antecedent basis to the ‘parameter estimation unit’ and ‘associated channel transfer functions’ terms that are used in the remainder of the body of the claims and is ‘essential to understanding the structural limitations’ of the parameter estimation unit.” Id. Apart from arguing that the recited “parameter estimation unit” is limiting, Petitioner does not propose any id. Patent Owner does not respond to Petitioner’s contentions and also does not argue that any construction is necessary for the parameter estimation unit. See generally Prelim. Resp. As reproduced in Section II.D. above, the preamble of claim 1, in its entirety, recites, “In a multi-user detection system in which interfering signals are purposely allowed to exist, a parameter estimation unit for use in conjunction with a signal separation unit, in which each received signal has associated channel transfer functions.” Ex. 1001, 12:41–45. The preamble of claim 9 is similar. Id. at 14:3–7 (reciting “In a multi-user detection system in which interfering signals are purposely allowed to exist, a parameter estimation unit for use in conjunction with a signal separation unit for estimating channel transfer function parameters from channel transfer functions”). The body of each claim recites the elements of the recited “parameter estimation unit,” namely, “a signal processor for determining said channel transfer functions for each received signal” and “means . . . for providing uninterrupted estimates of the channel transfer function parameters on a real-time basis . . . .” The phrase “In a multi-user detection system in which interfering signals are purposely allowed to exist” provides additional context for the environment in which the parameter estimation unit is intended to operate. Whether the preamble is limiting is a question that we do not need to decide here, however. Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Because Patent Owner does not dispute Petitioner’s contentions with respect to the preamble recitations, and our decision herein need not reach a determination with regard to that question.” slip op. at 17

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “A claim limitation using the phrase “means for” creates a rebuttable presumption that the drafter intended to invoke 35 U.S.C. § 112 ¶ 6.6 See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). Section 112 ¶ 6 provides that: An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. When construing a means-plus-function limitation under § 112 ¶ 6, it is necessary first to identify the claimed function, and then to look to the specification to identify the corresponding structure for that function. In re Aoyama, 656 F.3d 1293, 1296–97 (Fed. Cir. 2011); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002). Under that second step, “structure disclosed in the specification is corresponding 6 Section 4(c) of the Leahy-Smith America Invents Act (AIA) re-designated 35 U.S.C. § 112 ¶ 6, as 35 U.S.C. § 112(f). Because the ’676 patent has a filing date before September 16, 2012 (effective date of the statute), we refer to the pre-AIA version of 35 U.S.C. § 112. associates that structure to the function recited in the claim.” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003). Our Rules specifically require that the petition identify the corresponding structure in proposing a construction for a means-plus-function claim limitation. 37 C.F.R. § 42.104(b)(3). “This inquiry is undertaken from the perspective of a person of ordinary skill in the art.” Cardiac Pacemakers, 296 F.3d at 1113.” slip op. at 19

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 6,947,505
• Comcast Cable Communications, LLC v. Touchstream Technologies, Inc.Rehearing denied
  PTAB · Feb 6, 2025 · IPR2024-00324 · APJ Michelle N Wormmeester · IPR · Rehearing

  The Board denied Comcast’s rehearing request and left in place denial of institution after finding no abuse of discretion in its construction and compelling-merits analysis.

  In the decision

  …in the Preliminary Response. Id. As support, Petitioner contends that Patent Owner “chose to rebut Petitioner’s argument regarding Danciu-Mahajan teaching commands in first and second formats by alleging that the source of those commands was inconsistent with the claims, without arguing for any…

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing that a decision should be modified lies with the party challenging the decision.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 90 (Nov. 2019) (hereinafter, “CTPG”).5 In its request for rehearing, the dissatisfied party must (1) “specifically identify all matters the party believes the Board misapprehended or overlooked” and (2) identify the place “where each matter was previously addressed.” 37 C.F.R. § 42.71(d); CTPG 90.” slip op. at 3

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “discretion to deny institution due to the advanced state of parallel litigation, taking into consideration the six factors identified in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), as well as applying guidance set forth in a Memorandum regarding the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” issued by the Director of the U.S. Patent and Trademark Office (hereinafter, “Guidance Memo”).6 Inst. Dec. 6–43. We determined that the first five Fintiv factors favor discretionary denial,7 and that the Petition presents compelling evidence of unpatentability as to independent claims 1, 12, and 17 under the sixth Fintiv factor. Id. at 15–16, 23–43. Because “the PTAB will not deny institution based on Fintiv if there is compelling evidence of unpatentability,” we declined to exercise our discretion to deny and instituted trial. Guidance Memo 5; Inst. Dec. 15–16. In our Rehearing Decision, however, we agreed with Patent Owner that we erred in determining the claim terms “first format” and “second format” are not limited to different formats, and determined that the proper construction of these claim terms indeed requires the two formats to be different formats. Reh’g Dec. 5–9, 19. Applying the proper construction, we further determined that none of Petitioner’s asserted challenges presents compelling merits of unpatentability as to any claim of the ’751 patent, 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20 220621_.pdf. 7 Our analysis of the first five Fintiv factors in our First Institution Decision remains undisturbed on rehearing. contrary to our initial determination in the Institution Decision. Id. at 19–20. Having determined that the first five Fintiv factors favor discretionary denial, and that the Petition does not meet the compelling merits standard of the Guidance Memo under the sixth Fintiv factor, we modified our decision and denied institution on rehearing. Id. at 20.” slip op. at 4

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner

    “Contrary to Petitioner’s position, Patent Owner met its burden of showing that our Institution Decision should be modified. In our Institution Decision, we relied on claim differentiation when we determined that claim 1 is not limited to different first and second formats. Inst. Dec. 31. We did not consider the prosecution history, which was part of the record. See Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“[W]e have held that a court ‘should also consider the patent’s prosecution history, if it is in evidence.’”). As we noted in our Rehearing Decision, however, the Federal Circuit has explained that “[t]he prosecution history modifies the scope of a claim term if ‘the patentee distinguished that term from prior art on the basis of a particular embodiment, expressly disclaimed subject matter, or described a particular embodiment as important to the invention.” Reh’g Dec. 8 (quoting Sentry Protection Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 915 (Fed. Cir. 2005)). The Federal Circuit also has explained that “[a]lthough claim differentiation is a useful analytic tool, it cannot . . . relieve any claim of limitations imposed by the prosecution history.” Id. at 13 (quoting Fenner Invs., Ltd. v. Cellco P’Ship, 778 F.3d 1320, 1327 (Fed. Cir. 2015)). In other words, we erred in not considering the prosecution history, which led to our erroneous conclusion that claim 1 is not limited to different first and second formats. See Ex. 1104, 170 (prosecution history). Our Institution Decision was based on this erroneous conclusion of law, as Patent Owner argued, and we modified it accordingly.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “claim 1. As discussed above with respect to limitation 1D, Petitioner asserted that its proposed combination of Danciu and Mahajan would have provided a system where “Danciu’s remote control would translate commands associated with a first type of media playing application to a generic format, transmit them to the controlled device, which would translate them to a command associated with a second type of media playing application for execution.” Reh’g Dec. 12–13 (quoting Pet. 31). In other words, both Danciu’s remote control and controlled device translate commands. With respect to claim 5, Petitioner asserted that Mahajan’s abstraction module could operate at Danciu’s server. Pet. 43. Even if Mahajan’s abstraction module (which translates commands) could operate at Danciu’s server, Petitioner does not adequately explain why an ordinarily skilled artisan would have had reason to modify Danciu’s system to locate Mahajan’s abstraction module at the server, especially where both Danciu’s remote control and controlled device already translate commands. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Petitioner does not point to anything in its analysis of claim 5 that demonstrates we misapprehended or overlooked a matter.” slip op. at 15

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 11,048,751

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.