• Alpinestars S.P.A. / Alipinestars USA Inc. v. Dainese S.P.A.Rehearing denied
  PTAB · Feb 9, 2026 · IPR2025-00750 · APJ Benjamin D M Wood · IPR · Rehearing

  The Board denied rehearing, leaving institution denied because Petitioner did not show a reasonable likelihood of prevailing on claims 1–22 under the challenged obviousness grounds.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “Petitioner misstates the Decision’s reasoning. As is clear from the previous discussion, we determined that Petitioner’s articulated reasons for combining EP’536 with CN’180 lacked a rational underpinning, not because “EP’536 does not relate to ‘air bags,’” but because the means by which EP’536’s device inflates differs fundamentally from that of CN’180’s device. Dec. 17–18. Petitioner did not acknowledge this critical difference in the Petition, and continues not to do so in its Rehearing Request.” slip op. at 5

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

    “EP’536 with CN’180 lacked a rational underpinning because EP’536’s inflation mechanism differs fundamentally from CN’180’s inflation mechanism. Dec. 17–18. As we stated, whereas CN’180’s fall-protection belt uses an airbag that requires an external source of pressurized air to inflate, EP’536’s garment does not need an external inflation device because “the gas generating agent 18 in each envelope automatically generates gas and inflates the envelopes in response to rising temperatures.” Id. at 18 (citing Ex. 1004 ¶ 15; Ex. 1005 ¶¶ 5, 19). This difference reflects the fundamentally different purposes of the two devices: CN’180’s device is designed to provide “fall protection” to, e.g., “elderly people,” (Ex. 1005 ¶ 1, 3), whereas EP’536’s device provides “adaptive thermal insulation” for, e.g., garments worn by fire fighters. Ex. 1004 ¶¶ 1–3, 250. Because of the different means by which EP’536’s and CN’180’s devices inflate and the different purposes for doing so, we were not persuaded that one of ordinary skill in the art would have combined the references as Petitioner proposed. Dec. 18. We further noted that the modification would not have improved the reusability of EP’536’s device “by having only one mechanism to recharge,” because EP’536’s “gas generating agent does not need any ‘mechanism to recharge.’” Dec. 18. Instead, we noted EP’536’s teaching that its gas generating agent “automatically recombines or condenses in response to a temperature decrease to return the envelopes, and therefore the garment, to its original thickness, at which point the gas generating agent is ready for subsequent reactivation.” Id. (citing Ex. 1004 ¶¶ 139–141). Finally, we determined that replacing EP’536’s envelopes with CN’180’s airbag “would have made EP’536’s invention unsuitable for its intended purpose: providing a protective garment with ‘adaptive thermal insulation.’” Dec. 19. We stated that “Petitioner does not suggest, and we have found nothing in the record to establish, that CN’180’s airbag would provide this feature.” Id. at 20.” slip op. at 3

  • Obviousness (§103) › KSR rationalesMotivation not foundNot shown unpatentable

    “rationales for combining EP’536 and CN’180. Reh’g Req. 6–7. First, Petitioner asserts that we “improperly rejected Petitioner’s ‘simple substitution’ evidence in view of [the Board’s] incorrect conclusion that EP’536 does not disclose an ‘external source of inflation [EP’536’s dosing aids].’” Id. at 6 (citing Dec. 18–19). This argument is unpersuasive at least because, as we discussed above, EP’536’s dosing aids do not constitute an external source of inflation. Petitioner further argues that we incorrectly evaluated its “obvious to try” rationale because, contrary to our analysis, Petitioner did in fact identify a problem to be solved by its “finite number of solutions”: “simplify[ing] the design and reduc[ing] the number of required inflation mechanisms.” Id. at 6–7. The Petition’s entire “obvious to try” discussion is as follows: [A] POSITA would have found it obvious to try a one-piece airbag 10 with strip-shaped inflation units 12 in the EP’536- CN’180 airbag system because it would have been a selection from a finite number of identified predictable solutions (i.e., using one chamber with connected individual inflation units 12 versus multiple individual envelopes 20). 5 Petitioner also argues that dosing aids are “needed in order to make the disclosed device reusable.” Reh’g Req. 5–6. This is incorrect, as EP’536 conveys that the reusability of the device is a result of the gas generating agent condensing or recombining when temperatures fall. Ex. 1004 ¶¶ 139– 141. Even if it were true, however, it is unclear how it would support Petitioner’s argument. Pet. 16. As is evident, Petitioner did not identify a design need, market pressure, or other problem that would have been addressed by its identified “solutions,” and therefore we were not persuaded by this rationale. Dec. 19. Petitioner’s attempt to cure this deficiency in its Rehearing Request is tardy. We cannot misapprehend or overlook an assertion that Petitioner fails to make in the Petition. It is also insufficient. Petitioner does not provide any evidence of a known design need or market pressure to “simplify [EP’536’s] design” or reduce the number of “required inflation mechanism” it uses.” slip op. at 7

  § 103 obviousness
  Patents in suitUS 12,012,065
• Alpinestars S.P.A. / Alpinestars USA Inc. v. Dainese S.P.A.Institution denied
  PTAB · 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 · Graham
  Patents in suitUS 12,012,065
• Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Institution denied
  PTAB · 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
• Uber Technologies, Inc. v. Enovsys LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00825 · APJ Andrew L Nalven · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons that follow, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in demonstrating the unpatentability of at least one of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed patent owner constructionDecided for patent owner

    “Step 1 of Figure 7 begins by obtaining the geographic information of the area to search for possible remote targets. Id. at 8:57–59. In step 2, the next geographic region where a possible search for a PRU is estimated. Id. at 8:64–66. In step 3, a page is sent out to that geographic region for remote units in the region to reveal their location. Id. at 9:2–4. In steps 4 and 5, if remote units are identified in the paged area, that information is forwarded to the network and the process continues to step 7 where the process is aborted. Id. at 9:4–6. Step 6 is performed if no units are identified in the paged area. Id. at 9:6–9. There, a check is done to establish if there are any remaining cells or grids higher up in the chain to be searched, and if so, the process returns to step 2 to search additional geographic areas. Id. at 9:9–12. The iterative process described in Figure 7 is consistent with Patent Owner’s proposed construction requiring forwarding a notification to only one or more PRUs currently located in a specific geographic boundary. Ex. 2001 ¶ 55; see also Ex. 1001, 8:32–54 (describing a grid search technique that may be implemented by the process of Figure 7).” slip op. at 13

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent.” Pet. 8 (citing Ex. 1002 ¶¶ 28–30). Patent Owner does not dispute Petitioner’s proffered definition as to the level of ordinary skill in the art. Prelim. Resp. 6. For purposes of this Decision, we adopt Petitioner’s assessment, which is consistent with the level of skill reflected in the Specification and asserted prior art.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “We are further not persuaded by Petitioner’s argument that forwarding notifications to the PRUs only within a specified geographic region renders element 12[D]’s step of verifying whether the PRUs exists within said region unnecessary. Pet. 35 n.8. Rather, we credit Mr. McAlexander who testifies that forwarding notifications to individually pollable geographic boundaries “does not obviate the need for the PRU to identify that the notification has been received or verify its location within the individual geographic boundary before responding.” Ex. 2001 ¶ 155.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,199,726
• Uber Technologies, Inc. v. Enovsys, LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00827 · APJ Thomas L Giannetti · IPR · Institution

  Institution was denied because Petitioner did not show a reasonable likelihood of proving claims 1, 2, 15, or 22 unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Andrews Decl. ¶ 25). At this stage, Patent Owner does not dispute this contention. Prelim. Resp. 5. For the purpose of determining institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’918 patent specification and the asserted prior art.” slip op. at 20

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

    “means.” See Ex. 1001, 11:60–12:4, 12:6–8, 15:30–37. The use of the word “means” in a claim element creates a rebuttable presumption that 35 U.S.C. § 112 ¶ 63 applies. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). 3 Section 4(c) of the AIA re-designated 35 U.S.C. § 112, sixth paragraph, as 35 U.S.C. § 112(f). Because the ’918 patent has a filing date before the We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 1, 2, and 22. See Pet. 7–12; Prelim. Resp. 9–21. slip op. at 10

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

    “Having reviewed Patent Owner’s position on claim limitation 1[C], we determine that we do not need to expressly construe this claim term to effective date of the relevant amendment, we refer to the pre-AIA version of § 112. Owner acknowledges that the asserted network “includes control units programmed to obtain the locations of the offender and victim devices,” and does not base its arguments on the construction of this limitation. Id. at 42.” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,756,918
• Uber Technologies, Inc. v. Enovsys, LLCInstitution denied
  PTAB · Nov 22, 2024 · IPR2024-00826 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “alleged invention “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of GPS and related location tracking techniques, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Andrews Decl. ¶¶ 25–26). Patent Owner does not dispute this contention or offer an alternative formulation. See Prelim. Resp. 6. For the purpose of institution, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’752 patent specification and the asserted prior art.” slip op. at 19

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

    “1. Means-Plus-Function Terms Challenged claims 14 and 15 recite elements using the word “means.” See Ex. 1001, 13:6–18, 13:20–22. The use of the word “means” in a claim ’752 patent has a filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of §103. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Construing a means-plus-function claim term is a two-step process. We must first identify the claimed function. Then, we must determine what structure, if any, disclosed in the specification corresponds to the claimed function. Id. at 1351 (citation omitted). The parties do not dispute that 35 U.S.C. § 112 ¶ 6 applies to those “means” elements recited in claims 14 and 15. See Pet. 8–12; Prelim. Resp. 11–19.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “geographic region.” The ’752 patent describes polling specific sub-regions of the network for a PRU. Ex. 1001, 2:12–15, 7:22–34. As Mr. McAlexander testifies, “[a] PRU may choose to instruct the network to relay certain information to mobile units in a specific geographic region. That information would then be appended to the geographic boundary information and beamed in the specified geographic region.” McAlexander Decl. ¶ 49 (quoting Ex. 1001, 10:19–23) (alteration in original). For example, a nearby boundary can be polled for the locations of nearby wireless customers within proximity of a distressed wireless customer. As described in the ’752 patent, a distressed mobile user M1 may need to find where another party might exist in that geographic region. The user could initiate a page from their PRU for the closest available PRUs that could be found in that geographic jurisdiction. Looking at FIG. 3, mobile user M1 will provide its location, latitude and longitude (x0,y0) to the closest available ground station serving area C1 or grid G1. As stated earlier, appropriate terrestrial technology will be scattered in that region to serve the PRUs in that area as shown in FIG. 1. Once a ground station picks up this signal, it sends a page for all location reporting devices in the specified boundary surrounding mobile unit M1, FIG. 3 to disclose their location. Ex. 1001, 7:22–34 (emphasis added). slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,441,752
• Alivecor, Inc. v. Apple Inc.Rehearing denied
  PTAB · Jul 18, 2024 · IPR2024-00095 · APJ Hyun J Jung · IPR · Rehearing

  The Board denied AliveCor’s rehearing request, finding no abuse of discretion in denying institution because the Petterson–Nakada combinations did not teach or suggest the claimed replacement of one user interface with another.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if substantial evidence does not support a factual finding, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000); see also Reh’g Req. 8 (citing 37 C.F.R. § 42.71(c)). Also, 37 C.F.R. § 42.71(d) sets forth, in relevant part that: rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 2

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

    “Our determinations regarding Nakada did not support Petitioner’s argument that Nakada’s “system is returned to the beginning state of the routine, which in the case of Petterson would be FIG. 2B.” Pet. 71; Dec. 39–40. We also stated that “the proposed combination does not address adequately Nakada’s description of powering down its display.” Id. at 40 (citing Pet. 48–50; Prelim. Resp. 25–26; Ex. 1011, Fig. 4). We, thus, determined Petitioner failed to show sufficiently that either Petterson or Nakada teaches or suggests “replacing display of the second user interface with the first user interface.” Dec. 38–41 (citing Pet. 48–50, 68–69, 70–71; Ex. 1003 ¶¶ 379, 382; Ex. 1011, Fig. 4). The “totality of the combination” lacked replacing a user interface with any other user interface. Dec. 40–41 (determining “the asserted references neither individually nor combined as proposed would have, ‘in response to detecting that the first criteria are no longer met for a second period of time that is longer than the first period of time, replac[ed] display of the second user interface with the first user interface’”); Reh’g Req. 8 (arguing “the Board overlooked the totality of the combination and Petitioner’s arguments and supporting evidence regarding the modification of Petterson that would have been obvious . . . in view of Nakada”).” slip op. at 7

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

    “After considering the arguments and cited evidence of the Petition, we determined that Petitioner did not show a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’533 patent. Paper 7 (“Decision” or “Dec.”). Petitioner subsequently filed a Request for Rehearing. Paper 8 (“Reh’g Req.”). For the reasons stated below, Petitioner has not shown that we abused our discretion in denying the Petition, and thus, Petitioner’s Request for Rehearing is denied.” slip op. at 2

  § 103 obviousness
  Patents in suitUS 10,568,533
• Google LLC v. Security First Innovations, LLCInstitution denied
  PTAB · Jun 6, 2024 · IPR2024-00213 · APJ Daniel Kazhdan · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that claims 1–10 were obvious over the asserted prior-art combinations.

  RulingsInstitution decision

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

    “inter partes review, see 35 U.S.C. § 314, and she delegated that authority to the Board. See 37 C.F.R. § 42.4(a). The Board may not authorize an inter partes review unless the information in the petition and the preliminary 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). We determine that the Petition in this case does not establish a reasonable likelihood that Petitioner will prevail with respect to any of the challenged claims. We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in computer science, computer engineering, or a related field, with three years of experience in the area of securing data from unauthorized access or use. A higher level of education may substitute for less experience.” Pet. 5 (citing Ex. 1003 ¶ 40). The Preliminary Response does not provide a description of the person of ordinary skill in the art or dispute Petitioner’s description. Patent Owner’s expert “accept[ed] Dr. Bhattacharjee’s proposed qualifications of a [skilled artisan]” for purposes of his declaration. Ex. 2003 ¶ 20. For purposes of assessing institution, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner as it is consistent with the prior art before us in this proceeding. C. Claim construction slip op. at 7

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

    “The Preliminary Response argues that limitations [1A] and [1B-2] “require storing two or more shares generated from a dataset on two or more physical storage devices.” Prelim. Resp. 5. This, purportedly, is “a central feature” of the invention. Id.; see generally id. at 4–7. The relevant limitations recite: “[1A] a plurality of physical storage devices storing thereon a plurality of shares, the plurality of shares being associated with at least one session key used to secure a dataset” and a secure storage system configured to “[1B-2] generate the plurality of shares for storage on the plurality of physical storage devices by performing a securing operation on the dataset received from the client device and distributing the dataset in the shares.” See Ex. 1001 98:3–6, 98:12–15. As the Preliminary Response notes, the Federal Circuit has repeatedly held that “‘a plurality of’ means ‘at least two of.’” SIMO Holdings Inc. v. Hong Kong uCloudlink Network Tech. Ltd., 983 F.3d 1367, 1377 (Fed. Cir. 2021) (citing cases); Prelim. Resp. 5. As the Preliminary Response further notes, the Petition itself seems to interpret the claims as requiring storage on at least two physical storage devices. Prelim. Resp. 7. Specifically, the Petition argues that “Dickinson-Takeda . . . stores encryption results . . . on at least two of storage devices D1-D4.” Id. (quoting Pet. 68); see Ex. 2003 ¶ 19. Implicit in this is the need for at least two separate physical storage devices. Thus, we conclude that the claims require storing the shares among two or more physical storage devices.” slip op. at 9

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

    “this decision we construe limitations [1A] and [1B-2] together to require storing two shares among at least two physical storage devices. Petitioner never addresses this requirement, and we find this to be a fatal flaw. According to Petitioner, Takeda teaches limitations [1A] and [1B-2] as follows: “Takeda’s technique involves dividing plaintext – which is any non-encrypted (i.e., unciphered) information – into blocks, ciphering different blocks using different ‘ciphering attributes’ (e.g., ciphering keys and/or ciphering algorithms), and outputting the ciphered blocks with the ciphering attributes.” Pet. 10; see generally id. at 10–16, 28–31, 39–40. Patent Owner responds that “Takeda’s blocks are stored together in a single storage device,” and this does not disclose or suggest storing the shares on at least two physical storage devices. Prelim. Resp. 8; see id. at 8–9 (citing Ex. 2003 ¶¶ 51–53). We agree with Patent Owner. Petitioner has not shown a reasonable likelihood that Takeda discloses or suggests storing data on physically separable storage devices. The Petition points to Takeda’s teaching that the data is “divided into blocks.” Pet. 11. As Patent Owner notes, Takeda teaches that these blocks are all stored on a single, physical device. Prelim. Resp. 8. Specifically, Takeda teaches that “[t]he ciphertext is stored in the removable recording medium 39 or the storage device 37.” Ex. 1008 ¶ 92.5 We determine that Takeda does not teach or suggest storing this data in at least two separate media, at least two separate storage devices, or at least one of each. Correspondingly, Takeda’s Figures show data blocks next to each other—i.e., on one physical device. See id. at Figs. 1–4. The Petition does not suggest that Ophir teaches storing shares among different physical storage devices. As the Petition itself notes, Ophir seems to use a single “mediator [to] provide[] secure virtual storage to data clients.” Pet. 9 (quoting Ex. 1007 Abstract) (emphasis omitted).” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,338,140
• Alivecor, Inc. v. Apple Inc.Institution denied
  PTAB · May 10, 2024 · IPR2024-00095 · APJ Hyun J Jung · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 20–22, 24, 29, and 37 obvious over either asserted combination of references.

  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 20–22, 24, 29, and 37 of the ’533 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner argues that a person of ordinary skill in the art would have had “a working knowledge of physiological monitoring technologies and human interface design” and a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies and human interface design. Pet. 7; Ex. 1003 ¶ 45. Petitioner alternatively argues that a person of ordinary skill in the art “could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline” and that “[m]ore education can supplement practical experience and vice versa.” Id. at 7–8 (citing Ex. 1003 ¶ 45). Patent Owner does not propose a level of ordinary skill in the art and does not dispute Petitioner’s proposal. See generally Prelim. Resp. We adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “For support that AHIT would have been understood to display the required “first user interface,” Petitioner only points us to its testimonial evidence; however, the cited testimony is substantively the same as the argument presented in the Petition with no additional citations to the record that indicate that one of ordinary skill in the art would have understood AHIT to disclose the recited “first user interface.” Compare Pet. 20–21, with Ex. 1003 ¶ 199 (citing nothing in the record). Moreover, in its argument regarding the recited “second user interface,” Petitioner contends that “the display of a preset icon via the screen is a different interface (e.g., a first user interface) from the display of progress of collecting the ECG data via the screen (e.g., a second user interface).” Pet. 25–26 (citing Ex. 1003 ¶ 222). Petitioner clearly equates AHIT’s display with a preset icon to the “first user interface,” which is different from its previous argument that one of ordinary skill in the art “would have understood that a screen, and certainly a screen with the disclosed prompt of AHIT’s wearable device, would have displayed a first user interface indicating that the wearable device was ready to detect biometric information” and “that the first user interface was displayed to inform the user, prior to the collection of the ECG data, that the device was ready to collect ECG data because the user would need to be informed that the trigger action could be effectively received by the device.” Compare id. at 20–21, with id. at 25–26. The cited testimonial evidence also opines that “the person of ordinary skill in the art would have understood that the AHIT user interface would transition from a preset icon (e.g., a first user interface) to a display of ¶ 222. Petitioner’s declarant also equates AHIT’s display of a preset icon with the first user interface, which contradicts AHIT’s disclosure that “when collecting ECG data, the wearable device may display a preset icon via the screen.” Ex. 1006 ¶ 39. We, therefore, give little weight to the opinion of Petitioner’s declarant regarding the “first user interface” because it does not make clear what teaches, suggests, or would have been understood to disclose the “first user interface” and conflicts with what AHIT describes. Compare Ex. 1003 ¶ 199, with id. ¶ 222 and Ex. 1006 ¶ 39.” slip op. at 19

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

    “Petitioner, however, provides insufficient argument and evidence that resuming initialization or resetting the data processing device would revert to a first user interface after the first input was no longer detected for a second period of time or replace the information displayed on the user interface. Pet. 16, 34. As implicitly acknowledged by Petitioner, the cited portions of Hooper do not describe replacing displayed information. See Pet. 16, 34; Ex. 1007, 2:22–3:13, 6:15–25, Fig. 2. The cited testimonial evidence also does not cite to any part of the record that would tend to support the opinion that a “person of ordinary skill in the art would have understood that resuming initialization or resetting the data processing device would replace the display” (Ex. 1003 ¶ 181), a “person of ordinary skill in the art would have understood that resuming display” (id. ¶ 249), and “it would have been obvious to a person of ordinary skill in the art to revert to the first user interface after the first input was no longer detected for a second period of time” (id. ¶ 250). Petitioner’s declarant also does not explain why “a change in the display would have been obvious to a person of ordinary skill in the art in view of AHIT’s explicit goal of saving wearable device resources.” Id. ¶ 248. Petitioner does not argue adequately or cite sufficient evidence that changing from one user interface to another would have saved wearable device resources. Pet. 34; Ex. 1003 ¶ 248. As discussed previously, Petitioner does not provide sufficient argument and evidence that its proposed combination would have had “a first user interface indicating that the first electronic device is ready to detect biometric information.” Even if Petitioner did adequately show that its proposed combination would have had the required first user interface, Petitioner fails to show with sufficient argument and evidence that its proposed combination would have “replac[ed] display of the second user interface with the first user interface,” for the above-discussed reasons.” slip op. at 23

  § 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,568,533
• Bright Data Ltd. v. Oxylabs, UabInstitution denied
  PTAB · Apr 3, 2024 · IPR2023-01442 · APJ Thomas L Giannetti · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim under either anticipation ground.

  RulingsInstitution decision

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

    “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 “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.” For the reasons stated below, we determine that Petitioner has not established a reasonable likelihood that it would prevail with respect to any claim challenged in the Petition. In addition, for the reasons stated on the merits of the Petition, we do not reach the question of whether to exercise our discretion to deny institution under 35 U.S.C. § 314(a). We, therefore, deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “According to Petitioner, a person of ordinary skill in the pertinent art “would have been an individual who, as of July 18, 2002, the filing date of the ’667 Patent, had either: (1) a Bachelor’s Degree or higher in the field of electrical engineering, computer engineering, or computer science and at least one year of related practical experience; or (2) at least four years of practical experience in data management.” Pet. 9 (citing Williams Decl. ¶¶ 30–31). Patent Owner does not provide a description of the person of ordinary skill or dispute Petitioner’s description.” slip op. at 7

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

    “Neither party proposes claim constructions for our consideration. Petitioner “gives the claim terms their plain and ordinary meaning in light of the specification and prosecution history as would have been read by a [person of ordinary skill].” Pet. 9. Patent Owner does not comment on claim construction. We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We do not see the need to construe claim terms to resolve the issues in dispute. E. Description of the Prior Art References” slip op. at 8

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Other

    “The Federal Circuit addressed the legal standard for anticipation in Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016): “Under 35 U.S.C. § 102(b), a prior art reference will anticipate if it ‘disclose[s] each and every element of the claimed invention . . . arranged or combined in the same way as in the claim.’” 815 F.3d at 1341 (citation omitted) (footnote omitted). C. Level of Ordinary Skill in the Art” slip op. at 7

  Claim construction§ 102 anticipationDiscretionary denial
  Patents in suitUS 7,020,667

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.