- Ascentcare Dental Product, Inc. v. Solmetex, LLCInstitution deniedPTAB · Dec 12, 2025 · IPR2025-01175 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not sufficiently show the patent was eligible for IPR when it filed the petition less than two months after issuance.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We determine that Petitioner cannot credibly certify that the ’418 patent is available for inter partes review, based on a claim of priority on the face of the ’418 patent to the ’939 provisional application filed prior to the effective date of the AIA, where, as here, Petitioner contradictorily contends in the Petition that the ’939 provisional application “does not support all claim limitations” of the ’418 patent.4 Id. If Petitioner’s allegation that claims of the ’418 patent are not supported by the ’939 provisional application is correct, then the ’418 patent would be a post- AIA patent for which a petition may not be filed earlier than 9 months after the ’418 patent issued. See 35 U.S.C. § 311(c). Thus, based on the arguments and evidence presented by Petitioner, Petitioner fails to show that the ’418 patent is eligible for inter partes review when Petitioner filed the Petition less than two months after the ’418 patent issued. 35 U.S.C. § 311(c), 37 C.F.R. § 42.102(a)(1). We, therefore, deny the Petition. IV. CONCLUSION For the foregoing reasons, we find that Petitioner has not shown sufficiently that the Petition complies with 35 U.S.C. § 311(c) and, therefore, deny the Petition.” slip op. at 10
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportNot reached
“review when the Petition was filed “because the ’418 Patent claims priority to December 7, 2012 and is therefore,” not a post-AIA patent. Pet. 17 (emphasis added). Contrary to Petitioner’s assertion, the ’418 patent is a post-AIA patent if any claim of the ’418 patent does not have priority to the ’939 provisional application, regardless of whether, on its face, the ’418 patent “claims priority” to an application filed prior to the effective date of the AIA. See In re NTP, Inc., 654 F.3d 1268, 1276–77 (Fed. Cir. 2011) (“[A] patent’s claims are not entitled to an earlier priority date merely because the patentee claims priority.”).” slip op. at 9
§ 102 anticipationPatents in suitUS 12,290,418 - Par-Kan Company, LLC v. Unverferth Manufacturing CompanyInstitution deniedPTAB · Mar 19, 2025 · IPR2024-01427 · APJ Meredith C Petravick · IPR · Institution
The Board denied institution on claims 10–21, finding no reasonable likelihood that claims 10–20 were unpatentable and declining institution based at most on claim 21.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“1. Legal Standards A patent owner may antedate a reference by proving an earlier 4 Assembly Manual: Part Number 80504785 REV A, Hiniker Company, Jan. 2001 (“Hiniker Manual”) (Ex. 1007). 5 Screen capture of the archived version of a Hiniker Company webpage captured by the Internet Archive on March 14, 2006, available at https://web.archive.org/web/20060314112127/http://www.hiniker. com/ag_products/4800features.htm (“Hiniker Webpage”) (Ex. 1008). 237 F.3d 1359, 1365 (Fed. Cir. 2001); see 37 C.F.R. § 1.131. For an actual reduction to practice, a patent owner must show three things: (1) construction of an embodiment or performance of a process meeting all limitations in the challenged claims; (2) “that the invention would work for its intended purpose”; and (3) “sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006). If a patent owner attempts to antedate a reference in an inter partes review, the patent owner bears the burden of producing evidence supporting an invention date before the reference’s effective date. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015). At the institution stage of an inter partes review, the statutory “reasonable likelihood” standard for institution applies to the issue whether a reference qualifies as prior art. Cf. Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 12 (precedential) (citing 35 U.S.C. § 314(a)).” slip op. at 6
- Other 314aInstitution denied discretionary otherInstitution denied
“contend that Morris and Hiniker Webpage are not available as prior art with regard of claim 21 because Patent Owner does not contend the invention of claim 21 was actually reduced to practice prior to the alleged publication dates of Morris and Hiniker Webpage. Nevertheless, even assuming a reasonable likelihood of prevailing was shown by Petitioner with respect to claim 21, we still consider whether we should exercise discretion to deny the Petition. That is because when a petitioner demonstrates a reasonable likelihood of prevailing with respect to one or more claims institution of review remains discretionary. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018) (“[Section] 314(a) invests the Director with discretion on the question whether to institute review . . . .” (emphasis omitted)); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). The Board may consider the number of claims and grounds that meet the reasonable likelihood standard when deciding whether to institute inter partes review under 35 U.S.C. § 314(a). See Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at” slip op. at 14
- BurdenDecided for patent owner
“3500 persuaded us that Petitioner, as explained below, has not produced sufficient evidence to show a reasonable likelihood in refuting that the subject matter of claims 10–20 was actually reduced to practice (i) before February 15, 2006; (ii) no later than February 18, 2006; (iii) no later than February 28, 2006; and (iv) no later than May 16, 2006. Accordingly, Patent Owner persuaded us that Petitioner has not shown a reasonable likelihood in establishing that either Morris, which published by August 13, 2006, or Hiniker Webpage, which published by March 14, 2006, are prior art to claims 10–20 of the ’123 patent.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“4. Conclusion Petitioner’s grounds all rely upon either Morris (Ex. 1004) or Hinkier Webpage (Ex. 1008) with respect to claims 10–20 of the ’123 patent. Pet. 1. establishing that either Morris or Hiniker Webpage are prior art to claims 10–20, we determine that Petitioner fails to show a reasonable likelihood that claims 10–20 are unpatentable.” slip op. at 13
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,745,123 - Deere & Company v. David’S Dozer V-Loc System, Inc.Institution deniedPTAB · Mar 18, 2025 · IPR2024-01442 · APJ Robert J Silverman · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–4 unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition and the Preliminary Response (including any other authorized submissions) “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s proposal for the level of ordinary skill in the art differs from that of Petitioner, primarily because Patent Owner contends that such a person of ordinary skill would have a certain degree of experience relating specifically to skid steers, or similar machinery, and their hydraulic systems. See Prelim. Resp. 8–10 (citing Ex. 2001 ¶ 31). Insofar as we understand the significance of Patent Owner’s concerns about the differences between the parties’ proposals, these differences do not bear upon the issues addressed herein. Accordingly, for the purposes of the present Decision, we adopt Petitioner’s proposed definition of the relevant level of ordinary skill in the art. Further, with regard to the issues addressed in this Decision, Petitioner’s proposed description of the level of ordinary skill in the art appears to be consistent with the level of skill indicated by the ’300 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“We agree with Patent Owner. Petitioner argues that “Patent Owner made the deliberate choice to claim broadly,” eschewing “structural limitations that would have expressly or implicitly required the hydraulic of Element [1.4] to differ from the hydraulic of Element [1.5].” Reply 7. Further, Petitioner argues that “Patent Owner chose to generically recite ‘a hydraulic’ in each of Elements [1.4] and [1.5] without distinguishing labels, identifiers, or qualifiers.” Id. To the contrary, the two recited “hydraulic[s]” are distinguished by the language surrounding and modifying each instance in the method of claim 1. Indeed, the recitations of distinct operations performed by each “hydraulic,” in the claimed method, further support the understanding these are distinct and different structures. Additionally, as Patent Owner contends (see Prelim. Resp. 16), each instance of “hydraulic” is introduced with the indefinite article “a” — a signal that the two instances of “a hydraulic” do not refer to the same structure. See Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct components’ of the patented invention.”) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)); see also CAE Screenplates, Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of . . . different terms in the claims connotes different meanings.”); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away foundNot shown unpatentableNot shown unpatentable
“As Patent Owner argues, Petitioner’s proposed combination of Funk and Lewis “would interfere with the intended operation of the Funk control system to move the lift arms up and down in response to inter alia changes in the height signal.” Prelim. Resp. 20. This scenario is similar to that in Tec Air, 192 F.3d at 1356, which involved a claimed injection-molding technique that used screw-threaded adjustable plugs accessed from the inner, cavity-facing, side of the mold. The proposed combination included a prior art reference disclosing adjustment members accessed from the opposite, outer, side of the mold, and having a non-threaded smooth tip that extended through the mold and into the cavity. Id. at 1360. The Federal Circuit held that the prior art reference was properly determined to teach away from the claimed invention, because “no screw driver would be able to turn the smooth-headed screws from the cavity-side of the mold,” hence the proposed “combination would be inoperable for its intended purpose.” Id. Likewise, the proposed combination in the present matter teaches away from the subject matter of claim 1, because it would “immobilize [Funk’s] main arm,” and its associated hydraulic cylinder 18, “leaving just ‘one’ of Funk’s two adjustment mechanisms — blade tilt — available for grade control” (Pet. 10), thereby decreasing the system’s accuracy (see Ex. 2001 ¶¶ 113– 14) and negating the very technique that Funk relies upon to achieve its stated goal. See Ex. 1004 ¶ 7 (“[O]ne object of the present invention is to provide an automatic leveling control system that is sufficiently accurate for preparing the ground prior to the construction of concrete floors and foundations.”)” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Markman · KSR · GrahamPatents in suitUS 10,533,300 - PTAB · Dec 12, 2024 · IPR2024-00993 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we conclude that the information does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we deny institution of inter partes review.” slip op. at 2
- Skill levelOther
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree or comparable technical degree in Industrial Design or Mechanical Engineering or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to appliances for moving air such as hair dryers (or other comparable industrial design),” and that “[a]dditional education could substitute for experience, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 17–19. At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 27–28. We find, for purposes of this Decision, that the ’979 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’979 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes no express construction and contends that the Petition is based on Patent Owner’s position in district court that no construction is necessary. Pet. 6–7 (citing Ex. 1013). Patent Owner proposes no express construction at this stage of the proceeding, and states that “the claim terms can be afforded their plain and ordinary meaning.” Prelim. Resp. 28. Only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In the absence of any dispute over the construction of any claim term, we find no express construction necessary for purposes of this Decision.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“3. Reasons Supporting the Combination of Saito and Lindsey Petitioner also fails to show sufficiently a reason for the asserted combination of Saito and Lindsey. See Pet. 22–29. Petitioner argues, for example, that a person of ordinary skill in the art “would have been motivated to combine Saito’s brush attachment with Lindsey’s teaching of an array of vanes, disposed in a turbinate arrangement, to generate a spinning airflow to provide increased lift and volume to the hair.” Pet. 26 (citing Ex. 1003 ¶¶ 90–94). According to Petitioner, “incorporation of vanes, as taught by Lindsey, would have improved Saito’s hair styling attachment by changing the air flow paths from an outwardly radial direction to transverse or perpendicular (i.e., tangential) to create a spinning/rotational flow.” Id. (citing Ex. 1003 ¶ 90). Petitioner, however, fails to show sufficiently that Lindsey’s attachment generates a “spinning/rotational flow.” In fact, Petitioner notes that Lindsey, itself, describes the discharge of air as being in a “spinning, turbulent manner” which provides “additional lift and volume to hair.” Pet. 27 (quoting Ex. 1005, 10:28–33); see also Ex. 1005, 9:47–64 (stating that the “turbinate arrangement and the features of the vanes and their disposition provide flow paths of discharged air having continually varying and spiraling radii about the axis of air flow” and that “the discharged hot air is spun out from the central portion of the vanes in a turbulent manner”). Additionally, Patent Owner argues, and we agree, that Petitioner does not provide any reason for “the six additional unacknowledged modifications” to the vanes of Lindsey employed in Petitioner’s asserted combination as depicted in Petitioner’s model attachment. Prelim. motivation for those changes alone is reason enough to deny institution.” Id. at 59. Indeed, Petitioner neither acknowledges, for example, that its model attachment eliminated the prongs and holes of the vanes of Lindsey nor offers any sufficient reason why a person of ordinary skill in the art would have done so. Absent from the Petition is any sufficient explanation why a person of ordinary skill in the art would have only chosen attachment features from Saito and Lindsey that correspond to claimed elements of the ’979 patent, while disregarding all attachment features taught by Saito and Lindsey that are inconsistent with claimed elements of the ’979 patent. In sum, we have considered all of the arguments advanced by Petitioner in support of its asserted combination and determine Petitioner has not sufficiently shown a reasonable likelihood of prevailing in its assertion that a person of ordinary skill would have had reason to combine the asserted references in the manner set forth in the Petition by Petitioner.11” slip op. at 32
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,044,979 - National Railroad Passenger Corporation D/B/A Amtrak v. Railware, Inc.Institution deniedPTAB · Jan 22, 2024 · IPR2023-01181 · APJ Cynthia L Murphy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 20–36 were unpatentable over any of the three asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Our analysis in this Decision is limited to determining whether Petitioner has shown a reasonable likelihood of prevailing in showing the unpatentability of any Challenged Claim and we need not expressly construe “secret code” to make that determination.10 Petitioner’s application of a purported plain and ordinary meaning of “secret code” neglects to address how a person of ordinary skill in the art would have understood “secret code” in light of the Specification of the ’115 patent. We further address Petitioner’s arguments directed to the code limitations in the context of the asserted prior art below, informed by our determination that Petitioner fails to sufficiently show that the claim term “secret code” encompasses a non-public code received by any railway personnel that may be used to release a track block without further limitations on the accessibility to the code by, for example, a dispatcher prior to a release of a track block. 2. Additional Claim Terms The Parties do not dispute the construction of any other claim terms and we find that no other claim terms require express construction for purposes of rendering this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. American Science & Engineering, Inc., 200 F.3d 795, 803 (Fed. Cir. 2011). 10 Further, for purposes of this Decision we need not resolve whether Patent Owner’s proposed express construction of “secret code” is the proper meaning of the term in light of the Specification, which we note does not appear to expressly address how a person of ordinary skill in the art would have distinguished a code that is “readily available” to the dispatcher from a code that was not “readily available.”” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“been obvious over Oriol and Masquelier. See Pet. 19–62; see also Ex. 1003 ¶¶ 90–226 (Dr. Michalson providing testimony in support of Petitioner’s contentions). Patent Owner disputes Petitioner’s contentions. See Prelim. Resp. 23–38. Because we find it determinative, we focus our discussion on whether Petitioner has sufficiently shown for purposes of institution that the code limitations would have been obvious over Oriol and Masquelier. For the reasons that follow, and as further explained above what is not encompassed by the recited “secret code” (see supra Section III.C.1), we determine Petitioner has not shown a reasonable likelihood of prevailing.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham - National Railroad Passenger Corporation D/B/A Amtrak v. Railware, Inc.Institution deniedPTAB · Jan 22, 2024 · IPR2023-01180 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7, 9–16, or 18–41 would have been obvious over any asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“primary guarantee of objectivity in an obviousness analysis. Al-Site Corp. v. VSI Int’l Inc., 174 F.3d 1308, 1324 (Fed. Cir. 1999) (citing Graham, 383 U.S. at 17–18; Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical, mechanical, or related engineering, and also would have had at least two (2) years of experience in railway operations or railway control systems and would have programming experience,” and that “[a] higher level of education or specific skill might make up for less experience, and vice-versa.” Pet. 8 (citing Ex. 1003 ¶¶ 24– 25). Patent Owner does not dispute the level of ordinary skill identified by Petitioner. See Prelim. Resp. 12. For purposes of this Decision, we apply Petitioner’s proposed level of skill because, on the current record, it is invention reflected by the ’835 patent and the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“to sufficiently show how the Specification of the ’835 patent shows that the claim terms “removal code,” “secret release code,” and “secret code” encompass a non-public code that is received by any railway personnel that may be used to release a track block without further limitations on the accessibility to the code by, for example, a dispatcher prior to a release of a track block. See also Ex. 1001, 11:40–42 (identifying the need for limitations on the accessibility of the code to give the railway worker “more control over the traffic through the rail block in which the worker is working,” so that “fatal on-track accidents can be reduced”). The ’835 patent makes clear that the code is “only” received by the relevant railway field worker and an internal storage. Id. at 7:20–27, see also id. at 2:53–63 electronic contact address of the railway field worker, and permitting the block to the track sections to be removed only upon entry of the removal code in the centralized railway control system”) (emphases added); 8:40–46 (stating that the railway traffic controller may remove a block “with the input of the release code provided by the designated worker assigned for track work”). Although the ’835 patent describes alternative means for retrieving the code from internal storage when the field worker is unavailable, accessibility to the code is limited and this alternative access is only provided where “no maintenance worker [is] available to transmit the random secret code.” See id. at 10:44–48; see also id. at 6:3–6, 9:54–56, 10:23–30, 10:35–52 (consistently describing the “removal code”/“secret release code”/“secret code” as “secret”). Our analysis in this Decision is limited to determining whether Petitioner has shown a reasonable likelihood of prevailing in showing the unpatentability of any Challenged Claim and we need not expressly construe “removal code,” “secret release code,” or “secret code” to make that determination.12 Petitioner’s application of a purported plain and ordinary meaning of “removal code, ” “secret release code,” and “secret code” neglects to address how a person of ordinary skill in the art would have understood “removal code,” “secret release code,” and “secret code” in light 12 Further, for purposes of this Decision we need not resolve whether Patent Owner’s proposed express construction of “removal code,” “secret release code,” and “secret code” is the proper meaning of the terms in light of the Specification, which we note does not appear to expressly address how a person of ordinary skill in the art would have distinguished a code that is “readily available” to the dispatcher from a code that was not “readily available.”” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“patent would have been obvious over Oriol and Masquelier. Pet. 18–56; see also Ex. 1003 ¶¶ 94–268 (Dr. Michalson providing testimony in support of Petitioner’s contentions). Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 25–37. Because we find it determinative, we focus our discussion on whether Petitioner has sufficiently shown for purposes of institution that the code limitations would have been obvious over Oriol and Masquelier. For the reasons that follow, and as further explained above in our discussion of what is not encompassed by the recited “removal code,” “secret release code,” and “secret code” (see supra Section III.C.1), we determine Petitioner has not shown a reasonable likelihood of prevailing. Federal Railroad Administration’s report on “Supporting Railroad Roadway Worker Communications with a Wireless Handheld Computer.” Ex. 1004, i; Ex. 1005, i. Oriol “documents the design and evaluation of a digital communication device intended to improve roadway worker safety and productivity.” Ex. 1004, iii. Masquelier “evaluate[s] the human factor implications of computer and communications technology in railroad operations.” Ex. 1005, iii. Oriol states that “[a]ccording to the Amtrak operating rules (NORAC, 1999), the dispatcher issues Form Ds to restrict or authorize train movements.” Ex. 1004, 8.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham - National Railroad Passenger Corporation D/B/A Amtrak v. Railware, Inc.Institution deniedPTAB · Jan 22, 2024 · IPR2023-01179 · APJ James A Tartal · IPR · Institution
The Board denied institution for claims 1–8 because Petitioner did not show a reasonable likelihood that any asserted obviousness ground taught the claimed release code.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we conclude that the information does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical, mechanical, or related engineering, and also would have had at least two (2) years of experience in railway operations or railway control systems and would have programming experience,” and that “[a] higher level of education or specific skill might make up for less experience, and vice-versa.” Pet. 7 (citing Ex. 1003 ¶¶ 27– 28). Patent Owner does not dispute the level of ordinary skill identified by Petitioner. See Prelim. Resp. 9. For purposes of this Decision, we apply Petitioner’s proposed level of skill because, on the current record, it is undisputed and consistent with the level of skill at the time of the claimed Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“to sufficiently show how the Specification of the ’782 patent shows that the claim term “release code” encompasses a non-public code that is received by any railway personnel that may be used to release a track block without further limitations on the accessibility to the code by, for example, a dispatcher prior to a release of a track block. See also Ex. 1001, 11:40–42 (identifying the need for limitations on the accessibility of the code to give the railway worker “more control over the traffic through the rail block in which the worker is working,” so that “fatal on-track accidents can be reduced”). The ’782 patent makes clear that the release code is “only” received by the relevant railway field worker and an internal storage. Id. at 7:4–10, see also id. at 2:47–57 (“generating a removal code and transmitting the removal code to the electronic contact address of the railway field worker, and permitting the block to the track sections to be removed only upon entry of the removal code in the centralized railway control system”) (emphases added); 8:21–27 (stating that the railway traffic controller may remove a block “with the input of the release code provided by the designated worker assigned for track work”). Although the ’782 patent describes alternative means for retrieving the release code from internal storage when the field worker is unavailable, accessibility to a “release code” is limited and this alternative access is only provided where “no maintenance worker [is] available to transmit the random secret code.”” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“been obvious over Oriol. Pet. 18–37; see also Ex. 1003 ¶¶ 90–163 (Dr. Michalson providing testimony in support of Petitioner’s contentions). Patent Owner disputes Petitioner’s contentions. Prelim. Resp. 21–31. Because we find it determinative, we focus our discussion on whether Petitioner has sufficiently shown for purposes of institution that the code limitations would have been obvious over Oriol. For the reasons that follow, and as further explained above in our discussion of what is not encompassed by the recited “release code” (see supra Section III.C.1), we determine Petitioner has not shown a reasonable likelihood of prevailing.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,517,782 - Infinera Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Dec 4, 2023 · IPR2023-00834 · APJ Thu A Dang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 5, 10–14, and 16–21 were obvious over the cited combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner does not sufficiently show that Vrazel meets the requirements of the recited step of “converting the first electrical binary data signal in the pluggable optical transceiver module to a first electrical m-ary modulation signal.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Each of claims 2, 3, 5, 10, 13, 14, and 16–21 depends directly or indirectly from independent claim 1, and Petitioner challenges these claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:23–28, 32–35, 16:9–11, 16:18–25, 16:30–43; Pet. 46–56. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of these dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5, 10, 13, 14, and 16–21. 3. Asserted Obviousness of Claims 11 and 12 over Pang, Vrazel and Yee (Ground 2). Claims 11 and 12 depend directly from claim 1. Petitioner does not rely on Yee to remedy the deficiencies discussed above concerning the “converting” to “m-ary modulation” signal step, but rather relies on its arguments associated with claim 1. See Pet. 59–60. We already addressed those arguments, and we find those arguments unavailing for the reasons stated above. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 11 and 12.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“III CONCLUSION For the foregoing reasons, we deny institution of an inter partes review.2 IV, ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 2 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential) or under 35 U.S.C. § 325(d). See Prelim. Resp. 33– 54.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“III CONCLUSION For the foregoing reasons, we deny institution of an inter partes review.2 IV, ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted. 2 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 13–14 (PTAB Mar. 20, 2020) (precedential) or under 35 U.S.C. § 325(d). See Prelim. Resp. 33– 54.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner asserts that a POSITA would have “at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or a similar degree and at least two years of professional experience with optical communications, networking, and signal processing,” wherein “[m]ore experience can supplement less education and vice versa.” Pet. 6 (citing Ex. 1003 ¶ 38). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 9
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,887,795 - Infinera Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Dec 4, 2023 · IPR2023-00838 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Petitioner did not show that Vrazel’s encoder or encoder and pre-distorter provided the claimed m-ary modulator for claims 1–3, 5, 6, 8, 10–17, 22, and 23.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner does not sufficiently show that Vrazel meets the requirements of the recited “m-ary modulator” in any of the challenged independent claims. We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claims 1, 22, or 23 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Because it is dispositive, we focus our analysis on each independent claim’s recitation of “an m-ary modulator for increasing the number of bits per symbol in the first electrical data signal to produce a first m-ary modulation signal.” Ex. 1001, 15:6–8 (claim 1), 17:13–15 (claim 22), 18:9– 11 (claim 23). In addressing this limitation, Petitioner relies solely on Vrazel, which Petitioner contends “discloses this limitation in at least two ways.” Pet. 28 (addressing claim 1), 64 (addressing claim 22 by referring to analysis for claim 1), 66 (addressing claim 23 by referring to analysis for claim 1).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required.” Pet. 6. Patent Owner similarly does not propose any explicit construction of any claim term in its Preliminary Response. On the record before us, we do not find it necessary to construe any term for this Decision. 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))).” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,771,181 - Infinera Corporation v. Alexander Soto And Walter SotoInstitution deniedPTAB · Dec 4, 2023 · IPR2023-00835 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 5–7, 9, and 11–20 were unpatentable over Pang and Vrazel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering or a similar degree and at least two years of professional experience with optical communications, networking, and signal processing.” Pet. 7. Petitioner adds that “[m]ore experience can supplement less education and vice versa,” and supports its proposal with testimony by Dr. Min. Id.; Ex. 1003 ¶ 41. Patent Owner does not specifically address the level of ordinary skill in its Preliminary Response. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by Dr. Min’s testimony, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). “Petitioner proposes that each claim term in the Challenged Claims be given its plain and ordinary meaning in this proceeding, and that no specific construction of any claim term is required.” Pet. 6–7. Patent Owner similarly does not propose any explicit construction of any claim term in its Preliminary Response. On the record before us, we do not find it necessary to construe any term for this Decision. 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))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We accordingly determine that Petitioner does not sufficiently show that the Vrazel meets the requirements of the recited “m-ary modulator.” We therefore conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. F. Dependent Claims Each of claims 2, 3, 5–7, 9, and 11–20 depends directly or indirectly from independent claim 1, and Petitioner challenges those claims as unpatentable under 35 U.S.C. § 103(a) over Pang and Vrazel. Ex. 1001, 15:29–16:33; Pet. 53–67. The deficiency in Petitioner’s analysis of independent claim 1 also applies to each of the dependent claims. We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 3, 5–7, 9, and 11–20.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,263,723
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.