- Alpinestars S.P.A. / Alpinestars USA Inc. v. Dainese S.P.A.Institution deniedPTAB · Oct 15, 2025 · IPR2025-00750 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution for claims 1–22 because Petitioner did not show a reasonable likelihood of prevailing on any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner has not shown a reasonable likelihood of establishing that one of ordinary skill in the art would have combined EP’536 (with or without Hatton) and CN’180 in the proposed manner, Petitioner has not shown a reasonable likelihood of prevailing with respect to claims 1 and 18. 5. Claims 2–17 and 19–22 Because Petitioner has not shown a reasonably likelihood of prevailing with respect to independent claims 1 and 18, Petitioner also has not shown a reasonable likelihood of prevailing with respect to the claims that depend therefrom (claims 2–17 and 19–22).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer its own definition of the level of ordinary skill or dispute Petitioner’s definition. See generally Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“For purposes of our analysis, we need only address the meaning of “planar structure,” and only to note that this limitation requires that all portions of the casing body, when inflated against the first mesh portion, second mesh portion, and tie elements, “form a planar structure” when the casing body is inflated. This is evident from both the claim language and the written description of the ’065 patent. Limitation [1e] of claim 1 recites that in the inflated condition, “said portions of the casing body” are “inflated against said first mesh portion, said second mesh portion, and said tie elements.” We understand “said portions of the casing body” to refer to all of the portions of the casing body. Likewise, “said first mesh portion, said second mesh portion, and said tie elements” refers to the entire mesh structure recited in limitation [1a]. Thus, this limitation requires all of the casing-body portions to inflate against the entire mesh structure to form the “planar structure.” This reading is consistent with the Specification. The Specification teaches that “[t]he first mesh portion and the second mesh portion together with the tie elements determine with the casing body the final shape of the inflatable element,” which “can reach a generally flat and planar final shape.” Ex. 1001, 4:19–23; see also id. at 4:59–5:3 (teaching that the casing body inflated within the mesh structure results in a “globally planar structure”). Here, “inflatable element” refers to the entire structure because it is comprised of the mesh structure and casing body. Id. at 3:11–18. Thus, the entire structure, when inflated, is “generally flat and planar.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“portions of the casing body, when inflated against the first mesh portion, second mesh portion, and tie elements, “form a planar structure” when the casing body is inflated. This is evident from both the claim language and the written description of the ’065 patent. Limitation [1e] of claim 1 recites that in the inflated condition, “said portions of the casing body” are “inflated against said first mesh portion, said second mesh portion, and said tie elements.” We understand “said portions of the casing body” to refer to all of the portions of the casing body. Likewise, “said first mesh portion, said second mesh portion, and said tie elements” refers to the entire mesh structure recited in limitation [1a]. Thus, this limitation requires all of the casing-body portions to inflate against the entire mesh structure to form the “planar structure.” This reading is consistent with the Specification. The Specification teaches that “[t]he first mesh portion and the second mesh portion together with the tie elements determine with the casing body the final shape of the inflatable element,” which “can reach a generally flat and planar final shape.” Ex. 1001, 4:19–23; see also id. at 4:59–5:3 (teaching that the casing body inflated within the mesh structure results in a “globally planar structure”). Here, “inflatable element” refers to the entire structure because it is comprised of the mesh structure and casing body. Id. at 3:11–18. Thus, the entire structure, when inflated, is “generally flat and planar.”” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,012,065 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Institution deniedPTAB · Mar 31, 2025 · IPR2024-01434 · APJ Jennifer S Bisk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the single claimed design was obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“shown that Chen686, alone or in combination with the various secondary references, teaches or suggests a camera having the same overall visual appearance of the claimed design. Thus, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in challenging the patentability of the ’435 patent’s claim over Chen686 and the asserted secondary references.” slip op. at 30
- Other 314aNot reached
“These deficiencies in analysis raise the question of whether the Petition adequately identifies the number of actual challenges, and evidence supporting each, with the degree of particularity required of petitions in our forum. The Petition does not explain why so many grounds are necessary under the circumstances or why the Board should impose on Patent Owner the burden of defending against so many challenges. See generally Pet. An inter partes review based on 24 distinct grounds raised against a single claim, supported by analysis lacking in particularity, potentially burdens Patent Owner unduly and makes inefficient use of the Board’s resources. See PTAB Consolidated Trial Practice Guide (Nov. 2019),22 56 (“The AIA was ‘designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.’” (quoting H.R. Rep. No. 112–98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (Post grant reviews were meant to be “quick and cost effective alternatives to litigation”)). Because we understand enough of the Petition’s analysis to address each group of asserted grounds on the merits, we decline to exercise our discretion to deny institution based solely on this issue.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner submits that a designer of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in industrial design or an equivalent field, or two years of experience designing cameras or camera housings.” Pet. 11 (citing Bressler Decl. ¶¶ 22–24). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s uncontested proposal regarding a designer of ordinary skill in the art. See Bressler Decl. ¶¶ 22–24.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In its claim construction section, Petitioner states that the ’435 patent “encompasses a rectangular body with flat faces, a rectangular lens cover extending outward from the front of the body, rectangular buttons/access elements, and rectangles for displays” and “[a]s a whole . . . gives an ordinary designer an overall visual impression of a rectangular design for a camera/camera housing.” Pet. 12 (citing Bressler Decl. ¶¶ 25–26). These descriptions are incredibly general and do not provide an adequate understanding of the overall visual appearance of the claimed design. Moreover, we do not find them helpful in our analysis and, therefore, do not adopt them as a claim construction. Patent Owner does not explicitly address claim construction. See” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Graham - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Nov 21, 2023 · IPR2023-00831 · APJ Scott A Daniels · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the sole design claim would have been obvious over any asserted primary reference.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unless . . . 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 arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claim. slip op. at 2
- Skill levelSkill level board ownOther
“different, but not incompatible. On one hand, Petitioner proffers a person with a degree in industrial/product design who consults with a person of ordinary skill in the art having an electrical engineering, or similar degree. On the other hand, Patent Owner proffers a person having “a degree in Industrial Design or Mechanical Engineering, and at least two years of professional experience creating Industrial Designs of consumer products.” Prelim. Resp. 3. Considering that this is a design for an electronic “charger,” we find that both parties’ assertions as to the designer of ordinary skill appropriately include engineering and industrial design experience well-suited to a robust understanding of the function and aesthetics of charger devices. And, we do not find it out of the ordinary, as Petitioner contends, that a designer of ordinary skill would have collaborated with other technical professionals in designing such products. We also note that, under the present record, our analysis of this case would be the same under either party’s definition of the designer 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
“In this case, a verbal description of the claimed design is helpful to our analysis. Petitioner’s claim construction, particularly as it erroneously calls for certain elements to be “factored out,” is too general, and does not adequately address the overall ornamental visual impression of the claimed charger. See Pet. 14–30. With some exceptions, we find Patent Owner’s claim construction the more persuasive and consistent with the appropriate scope and overall ornamentality of the claimed charger. Prelim. Resp. 3–10. Our claim construction, below, is based on, and paraphrased to some extent, from Patent Owner’s proposed construction: Considering the overall visual impression of the claimed charger as shown in Figures 1–11 of the ’131 patent, the charger has an overall appearance of a compact ice hockey puck shape having a top face with a circular recess that evokes a contemporary appearance. The claimed design includes an overall cylindrical shape, with a circular shape that is visible in plan and bottom views. The top face is dominated by a prominent circular recess that is inset relative to a flat ring having a distinct proportional width relative to the circular recess. The overall cylindrical shape has a distinctive ratio of width (e.g., diameter) to height that, as shown in the figures of the claimed design, evoking the overall appearance of a compact ice hockey puck shape. The overall cylindrical shape includes non-orthogonal transitional edges (e.g., beveled or curved edges) between the sidewall and the top and bottom faces which contributes to the charger’s overall compact ice hockey puck appearance. The featureless flat bottom surface and sidewall are shown as continuous, unbroken, and uninterrupted by features that distract from the continuity of the design, and also contribute to the charger’s overall compact ice hockey puck appearance.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“’131 patent compared with Lee, we are persuaded that Lee is not an appropriate primary reference. While we agree that a designer of ordinary skill in the art would have considered the front face of the claimed charger and Lee as similar in appearance, a designer of ordinary skill in the art would consider not just the front face of the designs, but the overall appearance of the designs as a whole. See Borden, 90 F.3d at 1574 (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). the front face of the claimed design, but the smooth uninterrupted cylinder walls that seamlessly transition to a flat, planer, bottom surface that is a cleaner and more contemporary appearance from Lee’s stepped sidewall and raised yellow ring on the bottom face of Lee’s charger. The cylindrical characteristics of the claimed design evoke a stocky ice hockey puck shaped appearance different from the Lee’s narrower stacked disc shaped design. We find that the cumulative visually apparent differences of the sidewall, bottom face and overall cylindrical ice hockey puck shaped appearance and proportions of the claimed charger outweigh any similarity of the front faces, and thus we are not persuaded that Lee’s charger is a primary reference “the design characteristics of which are basically the same as the claimed design.” Rosen, 673 F.2d at 391.” slip op. at 37
Claim construction§ 103 obviousness - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Nov 21, 2023 · IPR2023-00807 · APJ Robert L Kinder · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes construing “defining an optically transparent window.” Pet. 8–10. Petitioner proposes that “for a cover to ‘define’ an optically transparent window simply means to allow passage of light to a relevant component through the cover.” Id. at 10. Patent Owner “does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 18. For purposes of this Decision, and based on the record before us, we determine that no express construction of any term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D. The Alleged Obviousness of Claims 1–3, 5, 6, 8, 10–14, and 16–20 Over” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner does not explain persuasively why a person of ordinary skill in the art would have reconfigured Kotanagi’s two rear electrodes meant for determining whether a potential between the electrodes decreases (to indicate lack of skin contact) to enable ECG measurements using the particular configuration recited in the claims. We have considered Petitioner’s contentions in light of both Kotanagi and Coppola and Petitioner’s proposed combination appears hindsight driven. The combination requires that a person of ordinary skill in the art selectively pick portions of each reference while also frustrating the purpose of Kotanagi’s electrodes of ensuring skin contact by determining a potential difference.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,474,483 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 27, 2023 · IPR2023-00774 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Masimo did not show a reasonable likelihood that the claimed design of claim 1 was unpatentable under any of its three obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner that the claimed design includes such a feature. We note that there is some potential ambiguity in Petitioner’s construction as to that feature of an outermost continuous circle as between the three colorized figures reproduced on pages 12 and 13 of the Petition (and also reproduced above in § I.C.1). It would seem, however, that the colorized figure on page 13 of the Petition appears to suggest an outer circle in identifying the “Chamfered Edge” and the “Vertical Edge” as claimed features. See Pet. 12. Because we think that the “outermost continuous circle” is a claimed feature of the ’279 patent, we adopt the claim construction that is advanced by Patent Owner as clearly noting the presence of such a feature. See, e.g., supra § I.C.2. We note, however that the outcome of this proceeding would ultimately be the same even were we to adopt Petitioner’s claim construction. That is so because (1) Petitioner’s construction also appears to recognize the outermost continuous circle, and (2) for reasons that are discussed at length below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution irrespective of any claim construction.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessment. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“those portions. For instance, as noted by Patent Owner (see, e.g., Prelim. Resp. 30–33) the arc-shaped portions of the ’279 patent design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’279 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the design of the ’279 patent. In that respect, we find credible Patent Owner’s argument that “Paulke’s features provide an appearance of two separate, opposed shapes that differs prominently from the ’279 patent’s arches that evoke an overall concentric circle appearance.” Prelim. Resp. 31 (citing Ex. 2001 ¶¶ 64). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’279 patent.5 In our view, the above-noted differences in overall appearance as between Paulke and the ’279 patent convey that Paulke is not “basically the same” as the claimed design of the ’279 patent so as to be regarded as a proper Rosen reference. See In re Rosen, 673 F.2d at 391.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We find persuasive Patent Owner’s arguments, and the authority underlying those arguments, in casting doubt as to the propriety of the reasoning for combining Mendelson and Chung with Paulsen that are divorced from consideration of ornamental or visual appearance.” slip op. at 29
Claim construction§ 103 obviousness - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 27, 2023 · IPR2023-00702 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that the sole design claim was unpatentable under any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“1, “Pet.”) requesting inter partes review of U.S. Patent No. D947,842 S (“the ’842 patent,” Ex. 1001). Patent Owner, Apple Inc. (“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”). We have authority under 35 U.S.C. § 314, which provides that 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); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessments. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that even if we were to adopt Patent Owner’s assessment, the outcome of this Decision would be the same. C. Proposed Obviousness Ground of Unpatentability Based on Paulke and” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“constructions of the ’842 patent, e.g., that the claimed design incorporates two arc-shaped portions residing on a rear face of an electronic device and a central circular array of rectangles. We discern, however, that one point of disagreement centers on the proposed presence of an “outermost continuous circle” as is advanced by Patent Owner. See Prelim. Resp. 5. Careful review of the figures of the ’842 patent, particularly Figure 4, does appear to bear out the conclusion that the arc-shaped portions do incorporate a continuous circle as urged by Patent Owner.2 Additionally, we question Petitioner’s assertions that the “sidewall” of the arc-shaped portions does not appear to be a claimed feature. Petitioner’s own claim construction reproduced above suggests that, with respect to the arc-shaped portions said 2 We note that Patent Owner makes reference to Exhibit 2002 as constituting “supplemental drawings filed with the USPTO on December 14, 2021.” Prelim. Resp. 5 n.1. As the ’842 patent issued on April 5, 2022, it is not apparent why the supplemental drawings do not appear in the patent. We note that the supplemental drawings, specifically Figure 4 (see Ex. 2002, 4), are clearer in showing that the noted design includes an outermost continuous circle. Regardless, we conclude that it is also sufficiently apparent that the drawings of the ’842 patent, e.g., Figure 4, show such an outermost continuous circle. by Petitioner to be part of the ’842 patent claim and shown in gray (see Pet. 11), there is gray shading of the sidewalls of the arc-shaped portions. Accordingly, we adopt the claim construction that is advanced by Patent Owner as better supported by the ’842 patent. See, e.g., supra § I.C.2. We note, however, that even if we were to adopt Petitioner’s claim construction, the ultimate outcome of this proceeding would be the same. That is so because, for reasons discussed below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution of inter partes review irrespective of any claim construction.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Paulke, when properly viewed as a complete article embodying the design, including the external elements, does not depict such a rectangle as being visible with any external components. See Prelim. Resp. 22; see also id. at 26–27 (“[t]he purported photodiode, even if present, would have been hidden behind Paulke’s depicted openings through sensor 124” (citing Ex. 2001 ¶¶ 54–55)). Petitioner proceeds, however, to extrapolate from that apparent interior rectangular structure an altered version of Paulke’s Figure 1G that is said be “Composite with FIG. 2A.” Pet. 55. We find Petitioner’s approach in that regard as unavailing in establishing in Paulke any semblance of a visual impression of a rectangle appearing in conjunction, for instance, with Paulke’s Figure 1G. In that regard, we agree with Patent Owner that Petitioner does not “explain[] why a DOSA would have understood Paulke to have an appearance of a rectangular shape that deviates from Paulke’s illustrated appearance.” Prelim. Resp. 28. Moreover, and significantly, the presence of any interior circular arrangement of rectangular shaped objects is entirely absent from Paulke. Furthermore, although both figures include a central portion with arc-shaped portions, there are some significant differences in the appearance of those portions. For instance, as noted by Patent Owner (see, e.g., Prelim. Resp. 30–33), the arc-shaped portions of the ’842 patent design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’842 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the ’842 patent design. In that respect, we find credible Patent Owner’s argument that “the Paulke opposed shapes have the appearance of two separate features rather than the ’842 patent’s unified circular appearance of arches.” Prelim. Resp. 32 (citing Ex. 2001 ¶¶ 63–65). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’842 patent.5 In our view, Patent Owner credibly argues that the above-noted differences establish sufficient visual dissimilarities to remove Paulke from being considered a proper Rosen reference. Nevertheless, even were we to assume that Paulke is a proper Rosen” slip op. at 22
Claim construction§ 103 obviousness - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 18, 2023 · IPR2023-00635 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable, principally because Rothkopf did not disclose an electrode positioned on the carrier member.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of one of ordinary skill in the art. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368–69 (Fed. Cir. 2003) (“‘[T]he dispositive 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 Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))). slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“member.” On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“Independent claim 1 recites “a carrier member formed from a transparent material.” Ex. 1001, 56:13. Independent claim 9 recites “a carrier member having a circular carrier profile and positioned over the circular rear opening.” Id. at 57:20–21. Independent claim 15 recites “a carrier member protruding outward from an external surface of the housing member.” Id. at 58:10–11. None of these phrases is written in the form of a “means for” performing a function, the Petition does not identify a recited function,5 and Petitioner does not address the issue of whether the overall limitation recites adequate structure for performing any such function. See 5 On the conference call, Petitioner represented that “the Petition identifies carrying or supporting electrodes to be the function of the carrier member.” Ex. 1051, 49:3–10 (citing Pet. 10–12). The cited section of the Petition quotes the Specification, not the claim. Pet. 10. However, the focus of a means-plus-function analysis is the function recited in the claim. See 35 U.S.C. § 112(f). And, the Petition associates the function of supporting the electrodes with “carrier assembly” not “carrier member.” See Pet. 10–11 (“Petitioner interprets the claim term ‘carrier assembly’ according[ly] to mean any appropriate structure that supports the electrodes and, optionally, optical components.”). Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“The first step is to determine whether a claim limitation is drafted in means-plusfunction format, which requires us to construe the limitation to determine whether it connotes sufficiently definite structure to a person of ordinary skill in the art.”). Additionally, regardless as to whether “Courts have construed ‘member’ style claim terms as nonstructural” under the particular facts before those courts, it was incumbent upon Petitioner—particularly in light of the “carrier” modifier—to demonstrate that “carrier member” is a nonce term under the facts of the case before us, i.e. whether the term is a generic placeholder that a person of ordinary skill in the art of wearable electronic devices/watches would not recognize as a name for sufficiently definite structure. Pet. 11; Williamson, 792 F.3d at 1348 (“In making the assessment of whether the limitation in question is a means-plus-function term subject to the strictures of § 112, para. 6, our cases have emphasized that the essential inquiry is . . . whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”); see id. at 1350 (explaining that a nonce word is a generic term “that reflect[s] nothing more than verbal constructs [that] may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.”); see also Kyocera, 22 F.4th 1380 (the court, in Petitioner’s cited case, determining, as part of its analysis, that “[a] person of ordinary skill in the art would not understand the claimed ‘lifter member’ to have ‘a sufficiently definite meaning as the name for a structure.’”). Accordingly, we determine that Petitioner has not shown persuasively that “carrier member” is a means-plus-function term.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“We find to be persuasive Patent Owner’s argument that “the Petition fails to cite anything in Rothkopf that describes electrodes attached to the ‘rear cover 608.’” Prelim. Resp. 23. Rothkopf discloses several embodiments of varying configurations. See, e.g., Ex. 1005 ¶¶ 4–27. Petitioner, in the block quoted contention above, stitches together several statements from various points in the Specification that individually are correct descriptions of an aspect of a particular embodiment or example but, together, fail to constitute a disclosure of an embodiment having electrodes positioned on the rear cover. For example, Rothkopf, in the paragraph 148 cited by Petitioner, states that “[i]n some embodiments, the biosensor module 710 includes the rear cover 608” and, “[a]s described in more detail . . . with respect to FIG. 16, the biosensor module 710 may include one or more light sources, one or more photodetectors, and one or more electrodes or conductive elements.” Ex. 1005 ¶ 148 (emphasis added). Thus, the biosensor module (mapped to the carrier assembly, not the carrier member) might include a rear cover and might include an electrode. It does not necessarily follow, however, that the electrode, when present, is positioned on the cover (mapped to the carrier member). Petitioner points to Rothkopf’s paragraph 201 as support for the proposition that “Rothkopf describes an embodiment where the electrodes are positioned on the cover 608.” Pet. 42 (citing Ex. 1005 ¶ 201). That paragraph provides that, “[a]s described above with respect to FIG. 6, in some embodiments, the biosensors are disposed relative to or attached to a rear cover 608 that is formed from an optically transparent material and is configured to be positioned with the opening of the housing 601.” Ex. 1005 ¶ 201. The paragraph does not describe an electrode as an exemplary biosensor in such embodiments. Rather, the paragraph goes on to describe the rear cover’s use with light sources 1611–1613 and detector 1614, i.e. optical sensor components. See id. (“The convex curved area of the rear cover 608 may include one or more windows or apertures that provide operational access to one or more internal components located within the housing. For example, the rear cover 608 may include an array of windows, each window including an aperture or opening for a respective light source 1611–1613 and/or the detector 1614.”). This description is consistent with Figure 16, which is relied on by Petitioner, where those optical sensor components are positioned on or under rear cover 608 (shaded orange in Petitioner’s annotated figure above) while electrodes 1601 and 1602 are positioned on the rear face of the housing (shaded in red) and thereby contact the user’s skin. See Ex. 1005 ¶¶ 190, 196 (“In this example [of Figure 16], a first electrode 1601 and second electrode 1602 are disposed on the rear face of the device 100. The first 1601 and second 1602 electrodes may be configured to make contact with the skin of the user’s wrist when the device is being worn.”). We determine that Petitioner has not shown adequately that a person of ordinary skill in the art would understand Rothkopf to disclose an electrode positioned on the carrier member, as recited in independent claims 9 and 15 and, by extension, claims 13 and 14, which depend from independent claim 9. Accordingly, Petitioner has not demonstrated a reasonable likelihood of prevailing on its anticipation challenge (Ground 1).” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,987,054 - Masimo Corporation v. Apple Inc.Institution deniedPTAB · Sep 18, 2023 · IPR2023-00728 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution because Masimo did not show a reasonable likelihood that the claimed design was obvious over Paulke, Yuen with Mendelson and Bushnell, or Fong with Bushnell.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“respective constructions of the ’936 patent, i.e., that the claimed design incorporates two arc-shaped portions residing on a rear face of an electronic device, we observe that one point of disagreement centers on the proposed presence of an “outer continuous circle” as is advanced by Patent Owner. See Prelim. Resp. 4. Although we agree with Petitioner that the “sidewall” of the arcs does not appear to be a claimed feature, careful review of the figures of the ’936 patent, particularly Figure 4, does appear to bear out the conclusion that the arc-shaped portions do incorporate a continuous circle.2 Accordingly, we adopt the claim construction that is advanced by Patent Owner. See, e.g., supra § I.C.2. We note, however, that even were we to adopt Petitioner’s claim construction, the ultimate outcome of this proceeding would be the same. That is so because, for reasons discussed below, we conclude that Patent Owner has identified sufficient deficiencies in Petitioner’s proposed grounds that preclude institution of inter partes review irrespective of any claim construction.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In assessing the parties’ views as to level of skill of a designer of ordinary skill in the art, we conclude that they are effectively the same. Indeed, the parties do not identify any material difference between the parties’ proposed assessments. Nevertheless, for clarity and completeness, we adopt Petitioner’s proposed assessment. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION For the reasons set forth above, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail with respect to the claimed design of the ’936 patent. IV. ORDER It is ORDERED that Petitioner’s request for an inter partes review of the claim of the ’936 patent is denied and no trial is instituted.” slip op. at 38
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“(see, e.g., Prelim. Resp. 21–24), the arc-shaped portions of the ’936 design are thinner than those of Paulke’s Figure 1G, and the spacing of the arc-shaped portions in the ’936 patent is noticeably smaller than in Paulke. That enlarged spacing in Paulke eliminates any appearance of an outer continuous circle formed by the outer ring of the arc-shaped portions, which is present in the ’936 design. In that respect, we find credible Patent Owner’s argument that “the Paulke arc-shaped components have the appearance of two separate features rather than the unified circular appearance of arcs of the ’936 patent. Prelim. Resp. 23 (citing Ex. 2001 ¶¶ 51–52). Additionally, the orientation of the arc-shaped portions in Paulke is rotated 90 degrees from that of the ’936 patent.5 In our view, there is a plausible argument to be made that the above-noted differences establish sufficient visual dissimilarities to remove Paulke from being considered a proper Rosen reference. Nevertheless, even were we to assume that Paulke is a proper Rosen reference, for the reasons discussed below, we do not find persuasive that a designer of ordinary skill in the art would have made Petitioner’s proposed modifications to Paulke’s biosensor module, so as to arrive at the design of the ’936 patent.” slip op. at 20
Claim construction§ 103 obviousness - DK Crown Holdings Inc. v. Diogenes LimitedInstitution deniedPTAB · Jun 22, 2023 · IPR2023-00265 · APJ Sean P O’Hanlon · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that DeWaal, alone or with Schugar, renders claims 1, 4–15, 17–19, or 32 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“recited wager. Pet. 35. However, Petitioner does not explain adequately how this wager “coincides with each of the defined number of legs” of DeWaal’s bonus game (which Petitioner maps to the recited multi-outcome wagering event (id. at 23)) as required by the challenged claims. Rather, Petitioner refers to the player’s input for each round of bonus game. Id. at 35. As explained above, DeWaal discloses that a player’s selection of a winning outcome for each round of the bonus game is independent of the wager made by the player in the base game. As acknowledged by Petitioner’s declarant, Mr. Crevelt, DeWaal’s wager allows “a player [to] qualify for the bonus game,” but “players of the bonus event must also ‘make an input in association with the plurality of outcomes in each round as indicated by block 108’ in FIG. 3.” Ex. 1007 ¶ 141 (quoting Ex. 1004 ¶ 129). Nor has Petitioner explained adequately how DeWaal identifies “players eligible to win each of the defined number of legs” of the bonus game “based on the wager” as required by the challenged claims. Rather, Petitioner again refers to the player’s input for each round of the bonus game. Pet. 40. The wager in DeWaal is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Ex. 1004 ¶ 83. That wager does not, however, serve to identify a winner of a leg of DeWaal’s bonus game. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., id. ¶¶ 119, 127. That is, it is those choices, not the wager, that determines whether the player advances at each leg. As such, we are not persuaded DeWaal describes “identifying one or more players eligible to win each of the defined number of legs based on the wager” as required by the challenged claims.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“As noted above, Petitioner maps DeWaal’s base game wager to the recited wager. Pet. 35. However, Petitioner does not explain adequately how this wager “coincides with each of the defined number of legs” of DeWaal’s bonus game (which Petitioner maps to the recited multi-outcome wagering event (id. at 23)) as required by the challenged claims. Rather, Petitioner refers to the player’s input for each round of bonus game. Id. at 35. As explained above, DeWaal discloses that a player’s selection of a winning outcome for each round of the bonus game is independent of the wager made by the player in the base game. As acknowledged by Petitioner’s declarant, Mr. Crevelt, DeWaal’s wager allows “a player [to] qualify for the bonus game,” but “players of the bonus event must also ‘make an input in association with the plurality of outcomes in each round as indicated by block 108’ in FIG. 3.” Ex. 1007 ¶ 141 (quoting Ex. 1004 ¶ 129). Nor has Petitioner explained adequately how DeWaal identifies “players eligible to win each of the defined number of legs” of the bonus game “based on the wager” as required by the challenged claims. Rather, Petitioner again refers to the player’s input for each round of the bonus game. Pet. 40. The wager in DeWaal is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Ex. 1004 ¶ 83. That wager does not, however, serve to identify a winner of a leg of DeWaal’s bonus game. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., id. ¶¶ 119, 127. That is, it is those choices, not the wager, that determines whether the player advances at each leg. As such, we are not persuaded DeWaal describes “identifying one or more players eligible to win each of the defined number of legs based on the wager” as required by the challenged claims.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“For at least the foregoing reasons, Petitioner has not shown sufficiently that DeWaal discloses or teaches a wager as recited in independent claims 1 and 32. Petitioner’s reliance on Schugar to teach a partial buy-out offer does not correct this deficiency. See Pet. 55–58.” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Independent claims 1 and 32 include several limitations involving “the wager.” First, the wager is received “in response to input from a player desiring to participate in the multi-outcome wagering event” (“receiving recitation”). Ex. 1001, 33:25–30, 40:7–11. The claims here further recite that the wager must “coincide[] with each of the defined number of legs.” Id. Second, the claims then identify “one or more players eligible to win each of the defined number of legs based on the wager.” Id. at 33:39–42, 40:20–23. Accordingly, we construe claims 1 and 32 to set out a method where the wager (1) enters the player into the event (and, thus, is set before the event) and (2) is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether the player remains eligible to win the event.2 Neither party offers a claim construction of this term.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,704,338 - DK Crown Holdings Inc. v. Diogenes LimitedInstitution deniedPTAB · Jun 21, 2023 · IPR2023-00264 · APJ Hyun J Jung · IPR · Institution
Institution denied on the merits: Petitioner failed to show a reasonable likelihood that claims 1, 2, 24, 28-30, 54-64, and 83 were unpatentable over DeWaal or DeWaal and Schugar.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . 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 for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we do not institute an inter partes review of claims 1, 2, 24, 28– 30, 54–64, and 83 of the ’716 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that one of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or a similar field; and at least two years of experience in the wager based gaming industry.” Pet. 12 (citing Ex. 1007 ¶ 28). Petitioner also states that “[a] person with less education but more relevant practical experience may also meet this standard” and that the “description is approximate, and a higher level of education or skill may make up for less experience, and vice-versa.” Id. (citing Ex. 1007 ¶ 28). Patent Owner does not dispute Petitioner’s asserted level of ordinary skill in the art and does not propose its own level of skill. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s asserted level of ordinary skill.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“We understand that these independent claims are written in a way that reads on some embodiments (see, e.g., Ex. 1001, 14:61–15:19, describing an embodiment where the wager involves guessing the outcomes of 6 games and the “legs” are the outcomes of each of the underlying 6 games) but not all embodiments (see, e.g., id. at 23:9–34, describing an embodiment where the “legs” are the outcomes of each reel in a slot machine, and thus there is no evaluation of an initial wager to determine whether the player won at each leg—the wager is akin to an entry fee to play). Accordingly, we construe independent claims 1 and 83 to set out a method where the wager (1) enters the player into the event (and thus, is set before the event) and (2) is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event. We similarly construe independent claim 54 to require a system wherein the controller receives a wager “in response to input from a player desiring to participate in . . . wagering events” (and thus, before the event) and (2) the wager is of a nature such that it serves as the metric by which the player is evaluated at each leg to determine whether they remain eligible to win the event.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Petitioner’s anticipation challenge does not adequately address the “wager” recited in the receiving and identifying limitations. In particular, the wager in DeWaal relied upon by Petitioner is the bet placed to play the initial game, which occurs prior to the multi-round bonus event. Pet. § IX.A.1.d; Ex. 1004 ¶ 57. Alternatively, DeWaal discloses that it could require a separate fee to enter the bonus game. Id. ¶ 83. In either case, the putative wager in DeWaal serves to allow entry into the event. Petitioner does not explain sufficiently how either wager serves to identify a winner of a leg of DeWaal’s bonus game. See Pet. § IX.A.1.f.; Ex. 1007 ¶¶ 114–119. Instead, players advance by making separate choices at each leg of the bonus game. See, e.g., Ex. 1004 ¶¶ 119, 128; see also Ex. 1007 ¶ 118 (“DeWaal’s identification of players that are eligible to win each round of the bonus event is ‘based on the wager,’ and more specifically based on the player’s input selection of one of the wagered upon potential outcome in each round.”) (emphasis added). That is, the player’s choice, not the relied-upon wager, determines whether the player advances at each leg. See, e.g., Ex. 1004 ¶ 119 (“If at least one of the players picks (or makes an input associated with) the designated outcome in a first round, that player advances to a second round.”). As such, Petitioner does not sufficiently show that DeWaal describes “identifying one or more winners . . . based on the wager.” Similarly, even if we were to consider the player’s choice in DeWaal’s bonus event, such as whether to risk further play or take the buyout (e.g., Ex. 1004 ¶ 146), to be a form of wager, that wager would be different from the one required in claim 1. In particular, claim 1 requires the wager to be “in response to the . . . players desiring to participate in the . . . event” as well as to “coincide[] with each of the defined number of legs.” Ex. 1001, 32:27–30. Thus, by the time the player in DeWaal is making choices during the event, they have already expressed a desire to participate in the event, and any such “wager” to continue the event is tied only to that leg, not to “each of the defined number of legs.” In other words, claims 1 and 83 require the wager to be something that is set ahead of time, and to contain information that is used, at each leg, to evaluate whether that player remains eligible. Accordingly, for the reasons above, we determine that Petitioner has not sufficiently addressed each limitation of claims 1 and 83 and does not show a reasonable likelihood of prevailing in its challenge that DeWaal anticipates claims 1 and 83.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,424,716
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.