• Ascentcare Dental Product, Inc. v. Solmetex, LLCInstitution denied
  PTAB · 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.

  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 · Graham
  Patents in suitUS 12,011,329
• Ascentcare Dental Product, Inc. v. Solmetex, LLCInstitution denied
  PTAB · Dec 12, 2025 · IPR2025-01175 · APJ James A Tartal · IPR · Institution

  The Board denied institution because Petitioner did not sufficiently show the patent was eligible for IPR when it filed the petition less than two months after issuance.

  RulingsInstitution decision

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

    “We determine that Petitioner cannot credibly certify that the ’418 patent is available for inter partes review, based on a claim of priority on the face of the ’418 patent to the ’939 provisional application filed prior to the effective date of the AIA, where, as here, Petitioner contradictorily contends in the Petition that the ’939 provisional application “does not support all claim limitations” of the ’418 patent.4 Id. If Petitioner’s allegation that claims of the ’418 patent are not supported by the ’939 provisional application is correct, then the ’418 patent would be a post- AIA patent for which a petition may not be filed earlier than 9 months after the ’418 patent issued. See 35 U.S.C. § 311(c). Thus, based on the arguments and evidence presented by Petitioner, Petitioner fails to show that the ’418 patent is eligible for inter partes review when Petitioner filed the Petition less than two months after the ’418 patent issued. 35 U.S.C. § 311(c), 37 C.F.R. § 42.102(a)(1). We, therefore, deny the Petition. IV. CONCLUSION For the foregoing reasons, we find that Petitioner has not shown sufficiently that the Petition complies with 35 U.S.C. § 311(c) and, therefore, deny the Petition.” slip op. at 10

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached

    “review when the Petition was filed “because the ’418 Patent claims priority to December 7, 2012 and is therefore,” not a post-AIA patent. Pet. 17 (emphasis added). Contrary to Petitioner’s assertion, the ’418 patent is a post-AIA patent if any claim of the ’418 patent does not have priority to the ’939 provisional application, regardless of whether, on its face, the ’418 patent “claims priority” to an application filed prior to the effective date of the AIA. See In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011) (“[A] patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority.”).” slip op. at 9

  § 102 anticipation
  Patents in suitUS 12,290,418
• Activision Blizzard, Inc. v. Milestone Entertainment, LLCInstitution denied
  PTAB · Oct 16, 2025 · IPR2025-00713 · APJ Linda E Horner · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that Kelly, alone or with Paulsen, renders any challenged claim obvious.

  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 and the preliminary response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we deny the Petition.” slip op. at 2

  • BurdenNot shown unpatentable

    “We agree with Patent Owner that Petitioner has failed to provide adequate evidence and analysis to show that Kelly discloses storing the identified user input in Kelly’s system. For instance, the portion of Kelly relied upon in the Petition describes how user input provides a particular game command to game processor 12, and game processor 12 interprets and uses this input to influence game states and game events. Ex. 1005, 10:12– 15. The portion of Kelly makes no mention of storing the user input. Petitioner also cites generally to other portions of Kelly with insufficient explanation of their relevance. Pet. 22; Ex. 1003 ¶ 136 (citing 1:44–46, 9:62–66, 46:32–37, 46:49–52). These cited passages describe generally that a computer, on which games are played, includes a video screen and buttons, and that user input is provided to a game unit to influence game events and/or provide particular game commands to the computer. Ex. 1005, 1:44–46, 9:62–66, 46:32–37, 46:49–52. Petitioner fails to sufficiently show how any of these passages describes storing user input, such as button presses, in Kelly’s system.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “At this stage of the proceeding, there is no evidentiary dispute about the level of ordinary skill in the art.6 Based on the testimony of Mr. Crevelt, 6 Patent Owner “disagrees with the proposed level of skill” but asserts that “under any level of skill a [person of ordinary skill in the art] would not understand the asserted Grounds to raise any unpatentability issues.” Prelim. least a bachelor’s degree in computer science or computer engineering, with at least three years of experience in game development. Pet. 16 (citing Ex. 1003 ¶¶ 102–103). Additional experience could substitute for less education, and additional education could likewise substitute for less experience. Id. We determine that the level of ordinary skill in the art adopted above is consistent with the level of technical understanding and competence reflected in the ’607 patent Specification and the asserted prior art references, based on our review of the limited record.” slip op. at 11

  Nonecites Phillips · Graham
  Patents in suitUS 11,501,607
• Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution denied
  PTAB · Mar 19, 2025 · IPR2024-01427 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution on claims 10–21, finding no reasonable likelihood that claims 10–20 were unpatentable and declining institution based at most on claim 21.

  RulingsInstitution decision

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

    “1. Legal Standards A patent owner may antedate a reference by proving an earlier 4 Assembly Manual: Part Number 80504785 REV A, Hiniker Company, Jan. 2001 (“Hiniker Manual”) (Ex. 1007). 5 Screen capture of the archived version of a Hiniker Company webpage captured by the Internet Archive on March 14, 2006, available at https://web.archive.org/web/20060314112127/http://www.hiniker. com/ag_products/4800features.htm (“Hiniker Webpage”) (Ex. 1008). 237 F.3d 1359, 1365 (Fed. Cir. 2001); see 37 C.F.R. § 1.131. For an actual reduction to practice, a patent owner must show three things: (1) construction of an embodiment or performance of a process meeting all limitations in the challenged claims; (2) “that the invention would work for its intended purpose”; and (3) “sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006). If a patent owner attempts to antedate a reference in an inter partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 6

  • Other 314aInstitution denied discretionary otherInstitution denied

    “contend that Morris and Hiniker Webpage are not available as prior art with regard of claim 21 because Patent Owner does not contend the invention of claim 21 was actually reduced to practice prior to the alleged publication dates of Morris and Hiniker Webpage. Nevertheless, even assuming a reasonable likelihood of prevailing was shown by Petitioner with respect to claim 21, we still consider whether we should exercise discretion to deny the Petition. That is because when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims institution of review remains discretionary. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); 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.”). The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14

  • BurdenDecided for patent owner

    “3500 persuaded us that Petitioner, as explained below, has not produced sufficient evidence to show a reasonable likelihood in refuting that the subject matter of claims 10–20 was actually reduced to practice (i) before February 15, 2006; (ii) no later than February 18, 2006; (iii) no later than February 28, 2006; and (iv) no later than May 16, 2006. Accordingly, Patent Owner persuaded us that Petitioner has not shown a reasonable likelihood in establishing that either Morris, which published by August 13, 2006, or Hiniker Webpage, which published by March 14, 2006, are prior art to claims 10–20 of the ’123 patent.” slip op. at 11

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

    “4. Conclusion Petitioner’s grounds all rely upon either Morris (Ex. 1004) or Hinkier Webpage (Ex. 1008) with respect to claims 10–20 of the ’123 patent. Pet. 1. establishing that either Morris or Hiniker Webpage are prior art to claims 10–20, we determine that Petitioner fails to show a reasonable likelihood that claims 10–20 are unpatentable.” slip op. at 13

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 9,745,123
• Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution denied
  PTAB · Mar 19, 2025 · IPR2024-01426 · APJ Meredith C Petravick · IPR · Institution

  The Board denied institution on all asserted grounds because Petitioner did not show Morris or the Hiniker Webpage was prior art for claims 16–22, and declined institution for claim 23 in view of efficiency.

  RulingsInstitution decision

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

    “partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artDecided for patent owner

    “partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 7

  • Other 314aInstitution denied discretionary otherInstitution denied

    “The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14

  § 102 anticipationDiscretionary denial
  Patents in suitUS 8,967,940
• 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.

  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.

  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
• Sharkninja, Inc. / Sharkninja Operating LLC et al. v. Dyson Technology LimitedInstitution denied
  PTAB · Dec 12, 2024 · IPR2024-00993 · APJ James A Tartal · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted combinations.

  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, the Reply, the Sur-reply, 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 deny institution of inter partes review.” slip op. at 2

  • Skill levelOther

    “Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree or comparable technical degree in Industrial Design or Mechanical Engineering or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to appliances for moving air such as hair dryers (or other comparable industrial design),” and that “[a]dditional education could substitute for experience, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 17–19. At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 27–28. We find, for purposes of this Decision, that the ’979 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 in the ’979 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).” slip op. at 15

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

    “Petitioner proposes no express construction and contends that the Petition is based on Patent Owner’s position in district court that no construction is necessary. Pet. 6–7 (citing Ex. 1013). Patent Owner proposes no express construction at this stage of the proceeding, and states that “the claim terms can be afforded their plain and ordinary meaning.” Prelim. Resp. 28. Only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). In the absence of any dispute over the construction of any claim term, we find no express construction necessary for purposes of this Decision.” slip op. at 16

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

    “3. Reasons Supporting the Combination of Saito and Lindsey Petitioner also fails to show sufficiently a reason for the asserted combination of Saito and Lindsey. See Pet. 22–29. Petitioner argues, for example, that a person of ordinary skill in the art “would have been motivated to combine Saito’s brush attachment with Lindsey’s teaching of an array of vanes, disposed in a turbinate arrangement, to generate a spinning airflow to provide increased lift and volume to the hair.” Pet. 26 (citing Ex. 1003 ¶¶ 90–94). According to Petitioner, “incorporation of vanes, as taught by Lindsey, would have improved Saito’s hair styling attachment by changing the air flow paths from an outwardly radial direction to transverse or perpendicular (i.e., tangential) to create a spinning/rotational flow.” Id. (citing Ex. 1003 ¶ 90). Petitioner, however, fails to show sufficiently that Lindsey’s attachment generates a “spinning/rotational flow.” In fact, Petitioner notes that Lindsey, itself, describes the discharge of air as being in a “spinning, turbulent manner” which provides “additional lift and volume to hair.” Pet. 27 (quoting Ex. 1005, 10:28–33); see also Ex. 1005, 9:47–64 (stating that the “turbinate arrangement and the features of the vanes and their disposition provide flow paths of discharged air having continually varying and spiraling radii about the axis of air flow” and that “the discharged hot air is spun out from the central portion of the vanes in a turbulent manner”). Additionally, Patent Owner argues, and we agree, that Petitioner does not provide any reason for “the six additional unacknowledged modifications” to the vanes of Lindsey employed in Petitioner’s asserted combination as depicted in Petitioner’s model attachment. Prelim. motivation for those changes alone is reason enough to deny institution.” Id. at 59. Indeed, Petitioner neither acknowledges, for example, that its model attachment eliminated the prongs and holes of the vanes of Lindsey nor offers any sufficient reason why a person of ordinary skill in the art would have done so. Absent from the Petition is any sufficient explanation why a person of ordinary skill in the art would have only chosen attachment features from Saito and Lindsey that correspond to claimed elements of the ’979 patent, while disregarding all attachment features taught by Saito and Lindsey that are inconsistent with claimed elements of the ’979 patent. In sum, we have considered all of the arguments advanced by Petitioner in support of its asserted combination and determine Petitioner has not sufficiently shown a reasonable likelihood of prevailing in its assertion that a person of ordinary skill would have had reason to combine the asserted references in the manner set forth in the Petition by Petitioner.11” slip op. at 32

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,044,979
• Ferno-Washington, Inc. / Ferno Group, Inc. v. Stryker CorporationInstitution denied
  PTAB · Mar 19, 2024 · IPR2024-00042 · APJ Michael L Woods · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 3 or 4 were obvious over either asserted combination.

  RulingsInstitution decision

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

    “institute an inter partes review if “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). Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the Petition fails to show a reasonable likelihood that Petitioner would prevail with respect to either of the Challenged Claims. We thus deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner acknowledges, however, that “the particular definition of a person of ordinary skill in the art . . . [is not] determinative at this stage because the Petition can be denied under [Petitioner’s] own proposed skill level.” Id. (citing Pet. 10). Petitioner’s definition reflects a lower level of skill, as it does not require a POSITA to have “about 3-5 years’ experience designing, developing, manufacturing, or studying the types of mechanisms found on patient supports, cots, cot fasteners, or other similar mechanisms,” as Patent Owner proposes. Compare Prelim. Resp. 8, with Pet. 10. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art. We find Petitioner’s definition is consistent with the ’884 patent and the asserted prior art. Pet. 10; see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7

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

    “Petitioner does not advance construction of any particular term and submits that no term requires construction beyond its plain and ordinary meaning. See Pet. 11. Similarly, Patent Owner does not propose construction of any claim term and submits that even under the plain and ordinary meaning, as proposed by Petitioner, the Challenged Claims are not invalid. See Prelim. Resp. 6–8. For purposes of this Decision, we need not and do not expressly construe any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we 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

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

    “We agree with Patent Owner that Petitioner has not shown, for purposes of institution, a sufficient reason a skilled artisan would have modified Ferneau A, as Petitioner has proposed, based on Ferneau B. Neither Ferneau A’s posts nor Ferneau B’s bumpers 92, 94 are “oriented between said mid-length thereof and said litter frame,” as required by claim 3. Thus, Petitioner has not shown that either Ferneau A or Ferneau B teaches or suggests the limitation at issue, and Petitioner’s proposed modification is not supported by reasoning beyond what appears to be a hindsight reconstruction of the claimed feature. Petitioner’s argument (Pet. 14–15) and Dr. Stevick’s accompanying testimony (Ex. 1002 ¶ 62a) that Ferneau A’s posts “could ensnarl a pant leg or shoelace” and that using “mounts rather than the post would lessen the possibility that an operator’s finger or other extremity could be pinched” does not fully address the claim limitation and fails to account for the fact that neither Ferneau A nor Ferneau B teaches a mount “oriented between said mid-length thereof and said litter frame,” as required by claim 3. Ferneau B expressly taught locating the mounts between the mid-length of the X-frame and base frame, not the litter frame. See, e.g., Ex. 1009, Figs. 1–4. Petitioner’s reasoning does not identify why a person of skill would have had reason to, or been motivated to, place mounts in a location not taught by Ferneau B. Furthermore, Petitioner’s reasoning presumes that Ferneau A’s frame encounters metal-to-metal contact when the cot is collapsed, yet the record does not support such a finding. Indeed, if Ferneau A’s mounts serve the same function as Ferneau B’s rubber bumpers 92, 94, as Petitioner states (see Pet. 14), Ferneau A’s frame would not encounter such metal-to-metal contact.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
• National Railroad Passenger Corporation D/B/A Amtrak v. Railware, Inc.Institution denied
  PTAB · Jan 22, 2024 · IPR2023-01181 · APJ Cynthia L Murphy · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 20–36 were unpatentable over any of the three asserted obviousness grounds.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes 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 would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

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

    “Our analysis in this Decision is limited to determining whether Petitioner has shown a reasonable likelihood of prevailing in showing the unpatentability of any Challenged Claim and we need not expressly construe “secret code” to make that determination.10 Petitioner’s application of a purported plain and ordinary meaning of “secret code” neglects to address how a person of ordinary skill in the art would have understood “secret code” in light of the Specification of the ’115 patent. We further address Petitioner’s arguments directed to the code limitations in the context of the asserted prior art below, informed by our determination that Petitioner fails to sufficiently show that the claim term “secret code” encompasses a non-public code received by any railway personnel that may be used to release a track block without further limitations on the accessibility to the code by, for example, a dispatcher prior to a release of a track block. 2. Additional Claim Terms The Parties do not dispute the construction of any other claim terms and we find that no other claim terms require express construction for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. American Science & Engineering, Inc., 200 F.3d 795, 803 (Fed. Cir. 2011). 10 Further, for purposes of this Decision we need not resolve whether Patent Owner’s proposed express construction of “secret code” is the proper meaning of the term in light of the Specification, which we note does not appear to expressly address how a person of ordinary skill in the art would have distinguished a code that is “readily available” to the dispatcher from a code that was not “readily available.”” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “been obvious over Oriol and Masquelier. See Pet. 19–62; see also Ex. 1003 ¶¶ 90–226 (Dr. Michalson providing testimony in support of Petitioner’s contentions). Patent Owner disputes Petitioner’s contentions. See Prelim. Resp. 23–38. Because we find it determinative, we focus our discussion on whether Petitioner has sufficiently shown for purposes of institution that the code limitations would have been obvious over Oriol and Masquelier. For the reasons that follow, and as further explained above what is not encompassed by the recited “secret code” (see supra Section III.C.1), we determine Petitioner has not shown a reasonable likelihood of prevailing.” slip op. at 21

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham

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.