- Alpinestars S.P.A. / Alipinestars USA Inc. v. Dainese S.P.A.Rehearing deniedPTAB · 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 obviousnessPatents in suitUS 12,012,065 - Geotab Inc. / Geotab USA, Inc. v. Fractus, S.A.Institution deniedPTAB · Dec 3, 2025 · PGR2025-00056 · APJ Steven M Amundson · PGR · Institution
Institution was denied because Petitioner did not show it was more likely than not that claims 1–20 were unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“to institute a post-grant review. We may not institute a post-grant review unless we determine that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2024). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, and for the reasons explained below, we determine that Petitioner has failed to demonstrate that it is “more likely than not” that at least one of the claims challenged in the Petition is unpatentable. Hence, we deny the Petition and do not institute a post-grant review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“effective filing date would have had “at least a bachelor’s degree in electrical engineering, computer science, or a similar degree and at least four years of experience in applied electromagnetics with an emphasis on antennas.” Pet. 10 (quoting Ex. 1018 ¶ 32). Petitioner also asserts that “[a]lternatively, the person of ordinary skill in the art would have a master’s degree in electrical engineering (or similar discipline) and at least two years of similar experience.” Id. (quoting Ex. 1018 ¶ 32). Dr. van der Weide’s testimony supports Petitioner’s assertions. See Ex. 1007 ¶ 39. For purposes of the Preliminary Response only, Patent Owner employs Petitioner’s description of an ordinarily skilled artisan. Prelim. Resp. 22. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’149 patent as well as the asserted references. See, e.g., Ex. 1005, 1:35–6:56, 42:44–46:28, code (57); infra §§ III.E.1–III.E.2, III.G.1–III.G.2, III.H.1.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. DISCUSSION “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post-grant review. As Petitioner recognizes, the ’149 patent defines many of the claim terms Petitioner discusses in the “Claim Interpretation” section of the Petition. See Pet. 14–16. For instance, the patent defines “antenna rectangle” as “the orthogonal projection of the antenna box along the normal to the face with largest area of the antenna box.” Ex. 1005, 14:21–24. Further, the patent defines “complexity factor F21” and “complexity factor F32” consistent with the independent claims. See id. at 17:16–21, 17:49–61, 18:8–18, 19:12–25, 20:5–17, 42:62–43:25, 44:5–30, 45:8–46:3. E. Alleged Obviousness over Dou and Ciais-Multiband: Claims 7–9, 11–14, 16, 17, 19, and 20 Petitioner contends that claims 7–9, 11–14, 16, 17, 19, and 20 are” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Petitioner does not explain why an ordinarily skilled artisan who used Ciais-Quadband’s antenna for Dou’s two antennas 206 and 208 would have departed from the commonly accepted rule of thumb and Dou’s preference for at least a quarter-wavelength spacing between antennas at the lowest frequency to the extent needed to implement the proposed combination, i.e., with only about 55% of the preferred spacing between antennas. See Pet. 60–69; Ex. 1007 ¶¶ 172–187. Hence, based on the current record, Petitioner does not establish sufficiently for purposes of institution that an ordinarily skilled artisan would have been motivated to combine Ciais-Quadband’s teachings with Dou’s teachings in the way Petitioner proposes. Further, the addition of two Nakano InvFL antennas extending from the ground plane both above and below the PCB does not remedy the insufficient spacing between “the swapped-in Ciais-Quadband antennas.” Ex. 2010 ¶ 67.” slip op. at 69
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,095,149 - Alpinestars S.P.A. / Alpinestars USA Inc. v. Dainese S.P.A.Institution deniedPTAB · Oct 15, 2025 · IPR2025-00750 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution for claims 1–22 because Petitioner did not show a reasonable likelihood of prevailing on any of its three obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Because Petitioner has not shown a reasonable likelihood of establishing that one of ordinary skill in the art would have combined EP’536 (with or without Hatton) and CN’180 in the proposed manner, Petitioner has not shown a reasonable likelihood of prevailing with respect to claims 1 and 18. 5. Claims 2–17 and 19–22 Because Petitioner has not shown a reasonably likelihood of prevailing with respect to independent claims 1 and 18, Petitioner also has not shown a reasonable likelihood of prevailing with respect to the claims that depend therefrom (claims 2–17 and 19–22).” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not offer its own definition of the level of ordinary skill or dispute Petitioner’s definition. See generally Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s unchallenged description of an ordinarily skilled artisan appears consistent with the subject matter discussed in the references and that of the challenged claims, for purposes of this Decision we apply Petitioner’s description of a person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“For purposes of our analysis, we need only address the meaning of “planar structure,” and only to note that this limitation requires that all portions of the casing body, when inflated against the first mesh portion, second mesh portion, and tie elements, “form a planar structure” when the casing body is inflated. This is evident from both the claim language and the written description of the ’065 patent. Limitation [1e] of claim 1 recites that in the inflated condition, “said portions of the casing body” are “inflated against said first mesh portion, said second mesh portion, and said tie elements.” We understand “said portions of the casing body” to refer to all of the portions of the casing body. Likewise, “said first mesh portion, said second mesh portion, and said tie elements” refers to the entire mesh structure recited in limitation [1a]. Thus, this limitation requires all of the casing-body portions to inflate against the entire mesh structure to form the “planar structure.” This reading is consistent with the Specification. The Specification teaches that “[t]he first mesh portion and the second mesh portion together with the tie elements determine with the casing body the final shape of the inflatable element,” which “can reach a generally flat and planar final shape.” Ex. 1001, 4:19–23; see also id. at 4:59–5:3 (teaching that the casing body inflated within the mesh structure results in a “globally planar structure”). Here, “inflatable element” refers to the entire structure because it is comprised of the mesh structure and casing body. Id. at 3:11–18. Thus, the entire structure, when inflated, is “generally flat and planar.”” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“portions of the casing body, when inflated against the first mesh portion, second mesh portion, and tie elements, “form a planar structure” when the casing body is inflated. This is evident from both the claim language and the written description of the ’065 patent. Limitation [1e] of claim 1 recites that in the inflated condition, “said portions of the casing body” are “inflated against said first mesh portion, said second mesh portion, and said tie elements.” We understand “said portions of the casing body” to refer to all of the portions of the casing body. Likewise, “said first mesh portion, said second mesh portion, and said tie elements” refers to the entire mesh structure recited in limitation [1a]. Thus, this limitation requires all of the casing-body portions to inflate against the entire mesh structure to form the “planar structure.” This reading is consistent with the Specification. The Specification teaches that “[t]he first mesh portion and the second mesh portion together with the tie elements determine with the casing body the final shape of the inflatable element,” which “can reach a generally flat and planar final shape.” Ex. 1001, 4:19–23; see also id. at 4:59–5:3 (teaching that the casing body inflated within the mesh structure results in a “globally planar structure”). Here, “inflatable element” refers to the entire structure because it is comprised of the mesh structure and casing body. Id. at 3:11–18. Thus, the entire structure, when inflated, is “generally flat and planar.”” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 12,012,065 - Tesla, Inc. v. The United States Of America As Represented By The Secretary Of The Navy (Intellectual Ventures II LLC)Institution deniedPTAB · Jul 24, 2025 · IPR2025-00341 · APJ Aaron W Moore · IPR · Institution
The Board denied institution because Tesla had not shown a reasonable likelihood that claims 10, 11, 14, 16, and 18 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Having considered the Petition, the Preliminary Response, the Reply, and the Sur-reply, as well as the evidence of record, we conclude that Petitioner has not shown a reasonable likelihood that it will prevail in establishing the unpatentability of claims 10, 11, 14, 16, and 18 of the ’743 patent. We accordingly do not institute inter partes review. A.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have “been someone knowledgeable and familiar with the areas of networking and distributed computing that are pertinent to the ’743 patent,” would “have a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent training, and approximately 2-3 years of professional experience relating to distributed computing,” and that a “[l]ack of professional experience can be remedied by additional education, and vice versa.” Pet. 17 (citing Ex.1003, ¶¶ 32-34). Patent Owner does not address this issue in the Preliminary Response. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, we adopt it for purposes of this analysis. B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“of “event,” in which Petitioner argued that the term should be broad enough to include “processing radar sensor data, performing radar tracking initialization and refinement, and distributing radar tracking information to other modules,” and Patent Owner argued that the specification uses the term as “as an umbrella term to cover various types of ‘internal event and performance data’ such as ‘application statuses, states, performance, and internally detected errors.’” Reply 1; Sur-reply 2. We agree with Patent Owner that that claimed “events” must concern “application statuses, states, performance, and internally detected errors.” See Ex. 1001, 7:44–45. The patent explains that function group 2 collects that type of information from applications using an API and then “correlate[es], combin[es], and reformat[s] [the] application data into higherlevel metrics (composite events) for use by displays or other Resource Management components.” Id. at 7:52–54. The middleware described and claimed in the ’743 is concerned with how applications are performing, not what they doing.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“This claim limitation, however, also requires “event correlation capabilities.” For that, Petitioner asserts that “Welch’s metrics calculation component (part of the ‘second function group’) provides ‘event correlation capabilities’ because the QoS management software “implementation includes the following capabilities: . . . (2) track correlation and filtering algorithms.” Pet. 44–45 (citing Ex. 1003, 4). This, we find, mischaracterizes Welch’s disclosure, because Welch’s metrics calculation component does not perform the identified “correlation.” The language quoted by Petitioner comes from the experimental results section of Welch, which describes how the implementation of the NSWC HiPer-D testbed, the system that was used test Welch’s QoS middleware, included “track correlation and filtering algorithms.” Ex. 1005, 4. Welch is not explaining that the middleware correlates the QoS system level events that Petitioner has identified as the claimed “events,” but, instead, that the NSWC HiPer-D system that was used to test the middleware included the ability to correlate radar data in a shipboard anti-air-warfare system.6 The correlating mentioned in Welch occurs at the application level, not in the middleware.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,181,743 - Tesla, Inc. v. Intellectual Ventures II LLCInstitution deniedPTAB · Jun 11, 2025 · IPR2025-00218 · APJ Frederick C Laney · IPR · Institution
The Board denied institution because the Kim and Vayanos combination did not show that each individual bit indicates a separate time interval, as required by claims 1–12.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“limitation 1.2 because it is more consistent with the claim language and the specification of the ’416 patent. The language “each of the plurality of bits” clearly individualizes the “plurality of bits” and the language “indicates a respective time interval that physical shared channel resources are utilized to signal channels” clearly ascribes to each individual bit the function of identifying a time interval that is separate from the time interval(s) that the other individual bit(s) identify. Petitioner’s claim constriction argument largely ignores the words used in limitation 1.2. Petitioner fails to provide anything to explain how or why the plain meaning of “each” and “respective” in the context of limitation 1.2 could be understood by a skilled artisan to connote something other than the plurality of bits individually identifying a separate and distinct time interval (i.e., a “one-to-one correspondence”). Petitioner similarly does not identify anything from the specification of the ’416 patent that would support deviating from the plain meaning of limitation 1.2. And Petitioner’s reliance on 3M Innovative Properties appears to miss the mark. Pet. Reply 7. In that case, the Federal Circuit held that, when a claim term has an “ascertainable definition in the body of the claim,” their “cases do not support prescribing a more particularized meaning unless a narrower construction is required by the specification or prosecution history.” 3M Innovative Properties Co., 725 F.3d at 1329. Here, however, Patent Owner is not attempting to import a more particularized meaning into limitation 1.2, but to demonstrate that the ’416 specification is consistent with the ascertainable definition of “each” and “respective” within the context of limitation 1.2. In particular, Patent Owner highlights that the ’416 specification describes the resource allocation technique as using an indicator bit, within a plurality of indicator bits, that has a one-to-one correspondence to a specific time window established for a Forward Access Channel (FACH). See Ex. 1001, 13:63–14:25, 14:44–53, Figs. 7, 9; PO Resp. 11–14, 19–20; PO Sur-reply 2–3; Ex. 2001 ¶¶ 36–40, 49. And we agree that the ’416 specification informs, and is consistent with, the plain reading of limitation 1.2. See Ex. 1001, 13:63–14:25, 14:44–53, Figs. 7, 9. Therefore, we determine that the plain and ordinary meaning of limitation 1.2 requires all the plurality of bits to individually identify a separate and distinct time interval that physical shared channel resources are utilized to signal channels.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“PICH, which is communicated to Kim’s receiver, has a plurality of bits, the evidence fails to demonstrate sufficiently that each of those bits indicates a respective time interval that physical shared channel resources are utilized to signal channels, as limitation 1.2 recites. As Patent Owner correctly argues, the Vayanos paging indicators use multiple bits to indicate information about a single time interval in a frame, rather having several bits that individually identify a separate and distinct time interval. PO Resp. 39–41 (citing Ex. 2001 ¶¶ 67, 74–75). Vayanos teaches that “[t]he number of paging indicators (Np) in each PICH frame is configurable by the system and can take on a value of 18, 36, 72 or 144,” and that “[e]ach paging indicator is sent in 288/Np consecutive bits in the PICH frame, where 288/Np can take on a value of 16, 8, 4 or 2.” Ex. 1006, 3:26–34. As a result, if there are 18 (Np = 18) paging indicators, 288/NP = 288/18 = 16 (meaning that each paging indicator is 16 bits long), if there are 36 (Np = 36) paging indicators, 288/Np = 288/36 = 8 (meaning that each paging indicator is 8 bits long), if there are 72 (Np=72) paging indicators, 288/Np = 288/72= 4 (meaning that each paging indicator is 4 bits long), and if there are 144 (Np=144) paging indicators, 288/Np = 288/144 = 2 (meaning that each paging indicator is 2 bits long). Ex. 2001 ¶ 66. Each paging indicator (singular) taught by Vayanos includes multiple bits––each paging indicator (singular) has either 16, 8, 4 or 2 bits–– and Vayanos does not disclose or suggest a paging indicator that indicates a time interval with only a single bit. Id. And Petitioner does not cite Kim to show the number of bits used to indicate a time interval; only to show that a UE would receive broadcast information with paging information including paging indicators that identify a time interval in which physical shared channel resources are utilized to signal channels. See Pet. 40–49. Even accepting that the Kim/Vayanos combination discloses a UE receiving a paging indicator that is indicative of a time interval in which a Paging Channel PCH may be found or indicative of whether a frame will include a signaling channel (e.g., PCH) at a specific TTI within that frame, the combination does not disclose or suggest using a paging indicator that is a single bit indicating either of those time intervals. On the contrary, as noted above, Vayanos teaches that all paging indicators consist of multiple bits and, thus, the Kim/Vayanos combination discloses a UE that only receives and uses a plurality of bits to indicate a time interval that physical shared channel resources are utilized to signal channels. This is insufficient to show a reasonable likelihood that Petitioner will be able to establish that the Kim/Vayanos combination discloses or suggests receiving a plurality of bits wherein the individual bits each identify a separate and distinct time interval. Therefore, Petitioner has not shown sufficiently that the Kim/Vayanos combination discloses or suggests the subject matter limitation 1.2 recites. For the above reasons, we are not persuaded that Petitioner has shown sufficiently that the combination of Kim and Vayanos disclose or suggest broadcast information that includes a plurality of bits, wherein each of the plurality of bits indicates a respective time interval that physical shared channel resources are utilized to signal channels. This failing undermines Petitioner’s showing as to independent claims 1 and 7 (in the asserted Grounds 1 and 2) and, as a result, the same deficiency extends through to all of the dependent claims challenged in all of the grounds.4” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently that the combination of Kim and Vayanos disclose or suggest broadcast information that includes a plurality of bits, wherein each of the plurality of bits indicates a respective time interval that physical shared channel resources are utilized to signal channels. This failing undermines Petitioner’s showing as to independent claims 1 and 7 (in the asserted Grounds 1 and 2) and, as a result, the same deficiency extends through to all of the dependent claims challenged in all of the grounds.4 IV. CONCLUSION Based on the arguments and evidence presented by the parties, we conclude that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’416 patent challenged in the Petition. Therefore, we do not institute an inter partes review.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,136,416 - Arashi Vision (U.S.) LLC (D/B/A Insta360) v. Gopro, Inc.Institution deniedPTAB · Mar 31, 2025 · IPR2024-01434 · APJ Jennifer S Bisk · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that the single claimed design was obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“shown that Chen686, alone or in combination with the various secondary references, teaches or suggests a camera having the same overall visual appearance of the claimed design. Thus, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in challenging the patentability of the ’435 patent’s claim over Chen686 and the asserted secondary references.” slip op. at 30
- Other 314aNot reached
“These deficiencies in analysis raise the question of whether the Petition adequately identifies the number of actual challenges, and evidence supporting each, with the degree of particularity required of petitions in our forum. The Petition does not explain why so many grounds are necessary under the circumstances or why the Board should impose on Patent Owner the burden of defending against so many challenges. See generally Pet. An inter partes review based on 24 distinct grounds raised against a single claim, supported by analysis lacking in particularity, potentially burdens Patent Owner unduly and makes inefficient use of the Board’s resources. See PTAB Consolidated Trial Practice Guide (Nov. 2019),22 56 (“The AIA was ‘designed to establish a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive litigation costs.’” (quoting H.R. Rep. No. 112–98, pt. 1, at 40 (2011), 2011 U.S.C.C.A.N. 67, 69 (Post grant reviews were meant to be “quick and cost effective alternatives to litigation”)). Because we understand enough of the Petition’s analysis to address each group of asserted grounds on the merits, we decline to exercise our discretion to deny institution based solely on this issue.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner submits that a designer of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in industrial design or an equivalent field, or two years of experience designing cameras or camera housings.” Pet. 11 (citing Bressler Decl. ¶¶ 22–24). Patent Owner does not dispute this proposed definition. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s uncontested proposal regarding a designer of ordinary skill in the art. See Bressler Decl. ¶¶ 22–24.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In its claim construction section, Petitioner states that the ’435 patent “encompasses a rectangular body with flat faces, a rectangular lens cover extending outward from the front of the body, rectangular buttons/access elements, and rectangles for displays” and “[a]s a whole . . . gives an ordinary designer an overall visual impression of a rectangular design for a camera/camera housing.” Pet. 12 (citing Bressler Decl. ¶¶ 25–26). These descriptions are incredibly general and do not provide an adequate understanding of the overall visual appearance of the claimed design. Moreover, we do not find them helpful in our analysis and, therefore, do not adopt them as a claim construction. Patent Owner does not explicitly address claim construction. See” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Graham - Fortinet, Inc. v. Croga Innovations Ltd.Institution deniedPTAB · Mar 27, 2025 · IPR2025-00086 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because Delco and Adams did not teach the internal firewall limitations; it also denied Fortinet’s motion for joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“III. JOINDER In this proceeding, Petitioner seeks to join IPR2024-01196. However, the Board did not institute an inter partes review in that proceeding, relying on substantially identical reasoning as here. Thus, there is no pending proceeding in the ’1196 IPR to join. As a result, Petitioner’s request to join the ’1196 IPR is denied.” slip op. at 21
- Expert testimonyPetitioner expert discountedOther
“The testimony of Petitioner’s expert as to the “internal firewall” limitation should be given little weight as, apart from a single extended quotation in ¶91, it merely repeats verbatim the assertion in the Petition it purportedly supports. Compare Pet. at 39–42 with EX1003 at ¶¶ 90–96; see Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential). Prelim. Resp. 4 n.1. We agree with Patent Owner. The testimony of Dr. Shenoy is not supported by Delco for the same reasons that the largely verbatim argument in the Petition is not supported by Delco.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of virtual computing systems.” Pet. 11–12 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’780 patent and the asserted prior art.” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,601,780 - Ubiquiti Inc. v. Intellectual Ventures I LLCInstitution deniedPTAB · Mar 7, 2025 · IPR2024-01290 · APJ Russell E Cass · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer foundTerm construed patent owner constructionDecided for patent owner
“interview to incorporate prosecution dependent claim 2 into prosecution claim 1 and cancel prosecution dependent claim 3. See § I.F, supra. We determine that this agreement and the corresponding amendment constitutes a clear disavowal of subject matter that supports Patent Owner’s construction. Prosecution claim 2 required that the second communication frame follow the first communication frame after a SIFS (corresponding to Figure 5 of the ’122 patent), while prosecution claim 3 required that there be a SIFS and an intervening response between the first and second communication frames (corresponding to the embodiments of Figures 3 and 4 of the ’122 patent). Before the amendment, original claim 1 included both of these embodiments, but the incorporation of prosecution claim 2 into prosecution claim 1 and the cancellation of prosecution claim 3 limited issued claim 1 to only the embodiment of prosecution claim 2. Because Larsson disclosed an intervening response to the first communication frame before the second communication frame, the clear import of the amendment was to limit claim 1 to the embodiment where the second communication frame follows immediately after the SIFS in order to distinguish claim 1 from Larsson. Indeed, in the Reasons for Allowance, the examiner explained that claim 1 distinguishes over the prior art (including Larsson) because “[t]he prior art of record fails to teach or fairly suggest ‘receiv[ing] the second communication frame after a short inter frame space (SIFS) that follows the first communication frame,’” as added from prosecution claim 2. Ex. 1002, 47. If, as Petitioner argues, prosecution claim 2 was broad enough to cover the embodiment of prosecution claim 3, then the amendment would have served no apparent purpose. Thus, we agree with Patent Owner that “[t]here is no other plausible explanation for why, when faced with Larsson’s disclosure of an intervening response, the Examiner initiated an interview to incorporate the SIFS limitation of dependent claim 2 into claim 1, and cancel dependent claim 3, which, like Larsson, included an intervening response.” See Prelim. Sur-reply 1–2.” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“of the alleged invention would have had “(1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications standards and/or product development.” Pet. 26 (citing Ex. 1003 ¶¶ 25–26). Petitioner also states that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner does not advance a proposed level of ordinary skill at this stage of the proceeding. See Prelim. Resp.; Prelim. Sur-reply. At this stage of the proceeding, we adopt Petitioner’s assessment of the level of skill in the art, which is consistent with the ’122 patent and the asserted prior art of record.” slip op. at 27
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner fails to show that Gu teaches that “the second communication frame follows after a short inter frame space (SIFS) after the first communication frame with the transmit announcement indication.” Ex. 1001, 7:64–67. As discussed above, we construe this limitation to require that “the second communication frame follows substantially immediately after the first communication frame (without any intervening response to the first communication frame),” as Patent Owner proposes. See § II.A, supra. Petitioner has not shown that Gu meets this construction because Gu includes an intervening response between the first and second communication frames. Consequently, Petitioner has failed to demonstrate a reasonable likelihood that claim 1 is unpatentable over the combination of Gu and Trainin.” slip op. at 31
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review, under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4 (2024). An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314; see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we do not institute an inter partes review on any grounds set forth in the Petition.” slip op. at 2
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,594,122 - Charter Communications, Inc. v. Iarnach Technologies, Inc.Institution deniedPTAB · Feb 19, 2025 · IPR2024-01286 · APJ Kara L Szpondowski · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–13 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent BioSystems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious. slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner contends that Petitioner’s proposal reflects an education level and experience that is too low. Prelim. Resp. 37. Therefore, Patent Owner proposes that a person of ordinary skill in the art “would have at least a bachelor’s degree in electrical engineering, computer science, or a similar degree plus at least two years of experience in optical networks.” Id. (citing Ex. 1001, 1:7–10; Ex. 2002 ¶¶ 18–24). Patent Owner further contends that “[a] higher level of experience would compensate for a lower education and vice versa.” Id. Although Patent Owner proposes an alternative level of ordinary skill in the art, Patent Owner does not explain how it impacts Petitioner’s contentions or Patent Owner’s arguments in opposition. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, as consistent with the ’378 patent’s specification and the level of ordinary skill in the art reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). However, our findings would not change even under Patent Owner’s proposed level of skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“There is no dispute between the parties as to this term that would affect our Decision. Therefore, we do not need to explicitly construe it for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“On this record, we determine that Petitioner has not sufficiently shown, for purposes of institution, that the combination of references teaches “using the common key to encrypt multicast service data of all different multicast services in a same bearer channel and then sending encrypted data,” as recited in claim 1. To teach this limitation, Petitioner relies on disclosures from RFC 4601 and RFC 11127 purporting to show that communications to a multicast group can be drawn from different sources. Pet. 28–31. As set forth above, Petitioner argues that “[d]ata from . . . different sources constitutes multicast service data of different multicast services.” Id. at 32 (citing Ex. 1003 ¶ 91). Therefore, Petitioner’s argument 7 We tend to agree with Patent Owner that Petitioner’s reliance on RFC 1112’s disclosure that “[a] host need not be a member of a group to send datagrams to it” does not seem to support that “[a]ny number of sources may direct such IP datagrams to [a] single destination address.” Prelim. Resp. 51–52; Pet. 31; Ex. 1003 ¶ 89. However, there is no dispute that RFC 4601 teaches that communications to a multicast group can be drawn from different sources. See Pet. 31; Prelim. Resp. 51. presumes that by showing that RFC 4601 and RFC 1112 teaches multicast communications from different sources, Petitioner has also shown that the multicast communications are from different multicast services. We disagree.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,942,378 - Cisco Systems, Inc. v. Croga Innovations Ltd.Institution deniedPTAB · Feb 13, 2025 · IPR2024-01196 · APJ Terrence W Mcmillin · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show that Delco teaches the internal firewall limitations required by independent claims 1 and 11.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art With regard to the level of ordinary skill in the art, Petitioner contends a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of experience working in the field of virtual computing systems.” Pet. 11–12 (citing Ex. 1003 ¶¶ 23–25). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’780 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner submits that, “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 12. Patent Owner argues that with regard to the internal firewall limitations, “Petitioner’s mappings of the asserted art to the limitations . . . rely on implicit constructions of those terms without any support in the ’780 specification.” Prelim. Resp. 2. However, Patent Owner does not propose any express claim construction. Id. No need exists to expressly construe any claim terms to resolve the parties’ dispute. 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 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“7 Patent Owner criticizes the Shenoy Declaration as related to the internal firewall limitations and argues that this testimony should be given little weight: The testimony of Petitioner’s expert as to the “internal firewall” limitation should be given little weight as, apart from a single extended quotation in ¶91, it merely repeats verbatim the assertion in the Petition it purportedly supports. Compare Pet. at 38-41 with EX1003 at ¶¶90-96; see Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (PTAB Aug. 24, 2022) (precedential). Prelim. Resp. 5 n.1. We agree with Patent Owner. The testimony of Dr. Shenoy is not supported by Delco for the same reasons that the largely verbatim argument in the Petition is not supported by Delco.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,601,780
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.