- Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01462 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied Solus’s rehearing request, leaving institution denied for claims 1–8 because the petition did not adequately show motivation to combine Hanafusa and Dobashi.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“In particular, neither Petitioner nor Dr. Josefowicz adequately explain why a POSITA looking for ways to make Hanafusa’s surface roughness low-profile would look to methods to achieve Dobashi’s RSm values. Dobashi teaches that because RSm “can be adopted as the period of waviness, RSm can also be used as an indicator for judgment of the surface.” Ex. 1005, 2:66–3:1, 6:23–26. Dobashi explains that waviness is “an indicator for determining whether the fine pattern forming performance is good or bad,” and “[t]he surface has small waviness and is smooth when RSm is large, and the surface has large waviness Dobashi also teaches that surface roughness Rzjis is used as a low-profile indicator. Ex. 1005, 2:66–3:1. Dobashi, therefore, teaches that RSm is an indicator of surface waviness, which Dobashi explains is different than surface roughness. Id. at 2:66– 3:3, 6:23–29. Given these teachings in Dobashi, neither Petitioner nor Dr. Josefowicz sufficiently explains how or why a POSITA would have been motivated to implement Dobashi’s RSm values to make Hanafusa’s surface roughness low-profile. See Pet. 10–12; Ex. 1003 ¶¶ 46–52.” slip op. at 4
§ 103 obviousnessPatents in suitUS 11,346,014 - Solus Advanced Materials Co., Ltd. v. SK Nexilis Co., Ltd.Rehearing deniedPTAB · Oct 7, 2025 · IPR2024-01461 · APJ Jo-Anne M Kokoski · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because Petitioner did not show that claims 1–10 were likely obvious over the asserted combinations.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined “if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors.” Arnold Partnership v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004) (citing In re 1 US 2013/0108922 A1, published May 2, 2013 (Ex. 1004, “Shinozaki”). 2 G. Khatibi, Temperature Dependent Elastic and Thermal Properties of Thin Copper Foils, Copper; Proceedings of the International Conference Copper ’06 (2006) (Ex. 1006, “Khatibi”). 3 Korean Patent Pub. No. 10-2012-0003485, published Jan. 10, 2012 (Ex. 1013; Ex. 1014 (English translation), “Toshio”). 4 US 2013/0108887 A1, published May 2, 2013 (Ex. 1012, “Kim”). 5 Griesi, M.B., Characterization of Electrodeposited Copper Foil Surface Roughness for Accurate Conductor Power Loss Modeling (2014) (Master’s Thesis, University of South Carolina) (Ex. 1015, “Griesi”). rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not shown unpatentable
“For example, Dr. Randall does not provide adequate explanation or objective evidence to support his opinion that Khatibi’s use of a laser speckle based dilatometer instead of the claimed thermomechanical analyzer “is unlikely to significantly impact the CTE[6] value” because “variations in equipment and a heating speed of 5° C/min would not significantly alter the results.” Ex. 1003 ¶ 58. In particular, Dr. Randall neither explains what constitutes a “significant” impact on CTE, nor provides objective evidence to support his contention that equipment variations and heating differences would not “significantly alter” the resulting measurements. And although Dr. Randall opines that “the heating rate (5°C per minute) is typical for certain devices” such as a thermomechanical analyzer or dilatometer, and “[t]ypically, these devices use temperature ramp rates between 2°C and 20°C per minutes, so the ‘5° C./min’ recited in [1d] is common and should not drastically affect the measurement results,” Dr. Randall fails to point us to any evidence showing that these temperatures are “typical” or that the claimed heating rate is “common.” Id. ¶ 59 (emphases added).” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner, however, does not adequately explain why a POSITA would have been motivated to modify Kim’s copper foil surface to have a Pc value of 19.2 as reported in Griesi. In particular, neither Petitioner nor Dr. Randall points us to, nor do we discern, any teaching in Griesi that a peak count of 19.2 provides any particular benefits or properties that would have lead a POSITA to modify Kim’s copper foil surface as Petitioner proposes. Instead, Petitioner’s arguments that a POSITA would have been motivated to modify Kim’s copper foil surface with Griesi’s peak count patent itself. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (stating that the fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”). It was Petitioner’s burden to establish that the combined teachings Kim and Griesi disclose limitation [1g] as proposed. We are not persuaded that we misapprehended Petitioner’s argument when we determined that Petitioner did not meet that burden.” slip op. at 8
- BurdenDecided for patent owner
“It was Petitioner’s burden to establish the Khatibi, alone or in combination with Shinozaki, Toshio, and Kim, discloses limitation [1d]. We concluded that Petitioner failed to meet that burden for the reasons explained in our Decision. We are not persuaded that we overlooked or misapprehended Khatibi’s disclosures, or Petitioner’s evidence and explanation thereof, in doing so.7” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,811,689 - PTAB · Jul 25, 2025 · IPR2025-00237 · APJ Annette R Reimers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 5, 6, 11, 12, 17, 21, 23, 27, 28, or 30 were unpatentable.
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) (2024). 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 and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’879 patent is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not contest the level of ordinary skill in the art set forth in the Petition. Prelim. Resp. 19. Because Petitioner’s unopposed definition is consistent with the ’879 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In particular, we agree with Patent Owner that Cantor does not teach or suggest contacting a ‘tissue section’ with its beads, let alone that its beads could be contacted with a tissue section to identify spatial location. Prelim. Resp. 36–48. In this case, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from a biological sample and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 36 (citing EX.1031 1:5–6). More specifically, according to Dr. Cantor, “[f]or bulk-analysis methods, nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Dr. Cantor further explains that in bulk-analysis methods, the mixture is analyzed to determine if a particular nucleic acid was present in the tissue sample or not. They cannot, however, determine where the molecule was in the tissue sample. As such, bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples. This is in contrast to spatial analysis methods such as those claimed in the ’879 patent which can determine both if a biological molecule was present in a tissue sample and where the molecule was in the tissue sample. Id. at ¶¶ 16–17. Although we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 24, 30–31 (citing to Dr. Puglisi, Ex. 1102 ¶¶ 133, 155, respectively), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mention of “tissue” made in Cantor is in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue section itself. See Ex. 2002 ¶¶ 142, 143 (Dr. Cantor testifying that (1) “a POSA would only be able to determine where on the array a target nucleic acid was captured, but not where in the original tissue section the nucleic acid came from,” because “all information about the spatial location of a target nucleic acid in a tissue sample is lost when the nucleic acid sample is prepared as Cantor teaches”; and (2) “Cantor [] does not teach or suggest contacting its solid supports (e.g. beads) with a tissue section and certainly not with its beads at known locations to obtain spatial information.”).” slip op. at 23
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner
“3. Discussion Petitioner challenges whether certain elements of independent claim 1 are supported by the’124 provisional and/or whether the ’879 patent’s priority chain is intact. Pet. 57–66. Having considered the parties’ positions and evidence of record, however, we agree with Patent Owner’s written description analysis, summarized above, and find that (1) the’124 provisional provides adequate written description support for each of the challenged claim elements; (2) the ’879 patent’s priority chain is intact; and (3) the ’879 patent is therefore entitled to the priority date of April 5, 2010. Consequently, Frisen is not prior art to the challenged claims. Because Frisen is not prior art, we do not specifically comment on its teachings, nor the factual assertions regarding its teachings provided by Petitioner or Patent Owner. 4. Conclusion For the foregoing reasons, we determine that Petitioner has not established a reasonable likelihood of showing that Frisen anticipates any of claims 1, 2, 5, 6, 11, 12, 17, 21, 23, 27, 28, and 30.” slip op. at 32
§ 102 anticipation§ 103 obviousnessPatents in suitUS 11,001,879 - PTAB · Jul 25, 2025 · IPR2025-00236 · APJ Annette R Reimers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, 6, 7, 12, 13, 18, 20, 21, 23, 25, 26, or 30 were unpatentable.
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) (2024). 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 and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’468 patent is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a doctorate degree (or equivalent) in bioengineering, genetics, genomics, chemistry, biochemistry, biophysics, molecular imaging or a related discipline with at least 2-4 years of academic, research, or industry experience in genomic technology. In the course of their training and experience, the POSA would have acquired a working knowledge of nucleic acid arrays, combinatorial chemistry techniques for making and using such arrays, nucleic acid sequencing and sample preparation techniques, such as barcoding, imaging methods for signal detection, as well as histopathology techniques for cell permeabilization and tissue handling. Pet. 13–14 (citing Ex. 1102 ¶¶ 30–32). Patent Owner does not contest the level of ordinary skill in the art set forth in the Petition. Prelim. Resp. 19. Because Petitioner’s unopposed definition is consistent with the ’468 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In particular, we agree with Patent Owner that Cantor does not teach or suggest contacting a ‘tissue section’ with its beads, let alone that its beads could be contacted with a tissue section to identify spatial location. Prelim. Resp. 37–44. In this case, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from a biological sample and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 36 (citing EX.1031 1:5–6). More specifically, according to Dr. Cantor, “[f]or bulk-analysis methods, nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Dr. Cantor further explains that in bulk-analysis methods, the mixture is analyzed to determine if a particular nucleic acid was present in the tissue sample or not. They cannot, however, determine where the molecule was in the tissue sample. As such, bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples. This is in contrast to spatial analysis methods such as those claimed in the ’468 patent which can determine both if a biological molecule was present in a tissue sample and where the molecule was in the tissue sample. Id. at ¶¶ 16–17. Although we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 25–26, 32–33 (citing to Dr. Puglisi, Ex. 1102 ¶¶ 133, 135, respectively), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mention of “tissue” made in Cantor is in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue section itself. See Ex. 2002 ¶¶ 142, 143 (Dr. Cantor testifying that (1) “a POSA would only be able to determine where on the array a target nucleic acid was captured, but not where in the original tissue section the nucleic acid came from,” because “all information about the spatial location of a target nucleic acid in a tissue sample is lost when the nucleic acid sample is prepared as Cantor teaches”; and (2) “Cantor [] does not teach or suggest contacting its solid supports (e.g. beads) with a tissue section and certainly not with its beads at known locations to obtain spatial information.”).” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“In particular, we agree with Patent Owner that Cantor does not teach or suggest contacting a ‘tissue section’ with its beads, let alone that its beads could be contacted with a tissue section to identify spatial location. Prelim. Resp. 37–44. In this case, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from a biological sample and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 36 (citing EX.1031 1:5–6). More specifically, according to Dr. Cantor, “[f]or bulk-analysis methods, nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Dr. Cantor further explains that in bulk-analysis methods, the mixture is analyzed to determine if a particular nucleic acid was present in the tissue sample or not. They cannot, however, determine where the molecule was in the tissue sample. As such, bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples. This is in contrast to spatial analysis methods such as those claimed in the ’468 patent which can determine both if a biological molecule was present in a tissue sample and where the molecule was in the tissue sample. Id. at ¶¶ 16–17. Although we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 25–26, 32–33 (citing to Dr. Puglisi, Ex. 1102 ¶¶ 133, 135, respectively), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mention of “tissue” made in Cantor is in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue section itself. See Ex. 2002 ¶¶ 142, 143 (Dr. Cantor testifying that (1) “a POSA would only be able to determine where on the array a target nucleic acid was captured, but not where in the original tissue section the nucleic acid came from,” because “all information about the spatial location of a target nucleic acid in a tissue sample is lost when the nucleic acid sample is prepared as Cantor teaches”; and (2) “Cantor [] does not teach or suggest contacting its solid supports (e.g. beads) with a tissue section and certainly not with its beads at known locations to obtain spatial information.”).” slip op. at 23
§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,662,468 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 16, 2025 · IPR2025-00144 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because neither obviousness ground showed a reasonable likelihood of establishing claims 1–20 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION The Petition fails to show there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. Accordingly, we deny the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“claim 15). We agree that the Specification supports Patent Owner’s construction. Although Petitioner bases its construction on extrinsic evidence, Petitioner argues that its construction “is consistent with” the intrinsic evidence, which, according to Petitioner, “indicates a sole is optional.” Pet. 31. A sole is optional, Petitioner argues, because the Abstract of the ’511 patent states that “[t]he footwear may include an upper and a sole structure.” Pet. 31 (quoting Ex. 1001, Abstr. (Petitioner’s emphasis)). We are not persuaded. Petitioner reads too much into the sentence it quotes from the Abstract and its use of the word “may.” Indeed, by Petitioner’s logic, both the upper and the sole structure would be optional and footwear would lack any required structure. Petitioner also argues that “[o]ther intrinsic evidence” supports its construction. Pet. 31–32 (citing Ex. 1053, 4:55–58; Ex. 1002 ¶92). The alleged intrinsic evidence, however, is an unrelated patent, US 2,675,631, which purportedly was cited during the prosecution of the ’511 patent. Id. This argument is undeveloped by Petitioner. First, Petitioner fails to substantiate that US 2,675,631 is cited in the prosecution history, merely asserting it as fact without pointing to supporting evidence. See id. (no citation to the prosecution history provided). Further, even assuming US 2,675,631 is cited in the prosecution history of the ’511 patent and thus part of the intrinsic evidence,8 Petitioner fails to show that it is probative of 8 The Federal Circuit has held that “[t]he prosecution history, which we have designated as part of the ‘intrinsic evidence,’ consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317 (emphasis added). what the inventors of the ’511 patent meant by “article of footwear.” Petitioner points out that the inventor of US 2,675,631 considers “knitted footwear” as encompassing “hose, golf hose, three-quarter hose, half-hose and socks” but does not explain why such meaning should be incorporated into the ’511 patent. Ex. 1053, 4:55–58 (partly quoted at Pet. 31–32). US 2,675,631 is titled “Footwear Article of The Slipper-Sock Type.” Ex. 1053, Title. As is evidently clear from the specifications of both patents, the ’511 patent and US 2,675,631 are directed to different types of footwear within the broader (dictionary) definition cited by Petitioner. Ex. 1022, 67, 88. Patent Owner also proffers testimony from Dr. Pastore that a person” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We construe the preambles of claims 1 and 15 to be limiting, as guided by case law. It is clear that the preambles are being used to help define the invention, i.e., an upper for an article of footwear in the case of claim 1 and an article of footwear having an upper in the case of claim 15. See Bell Communications Research Inc. v. Vitalink Commcations Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[A] claim preamble has the import that the claim as a whole suggests for it. In other words, when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the 9 Claim 15 is similar to claim 1, and, in challenging claim 1, Petitioner merely refers back to and relies exclusively on its analysis for claim 1. See Pet. 84 (Ground 1), 124–125 (Ground 2). Thus, although we may we discuss claim 1 alone at times, our analysis applies equally to claim 15. one the patent protects.”). Moreover, the bodies of both claims recite “the upper” which, in the case of claim 1, derives its antecedent basis directly from the preamble and, in the case of claim 15, relies on the preamble’s article of footwear which is recited as comprising an upper. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“However, it is not enough that Clark discloses a sole. See KSR Int'l, 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Petitioner must show that it would have been obvious to modify Cusinato to include a sole. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). On this aspect, Petitioner fails. The Petition summarily states that “a POSITA would consider it obvious to add a sole to Cusinato’s ‘boot-like’ form” but – as noted by Patent Owner – the Petition does not explain why. Pet. 51; see Prelim. Resp. 35 (“The Petition is silent with respect to any alleged motivation.”). Dr. Adanur’s testimony does not add much. He summarily opines that “it would be obvious to add a sole to Cusinato’s ‘boot-like’ form to provide cushioning and protection.” Ex. 1002 ¶160.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,511 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims under §325(d), finding the petition relied on previously presented art and did not show material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“single §102 rejection based solely on Nishida.” Pet. § 325(d) Reply 3 (emphasis omitted). Specifically, Petitioner argues that: The examiner seemingly failed to consider how it would have been obvious to combine Nishida (or any other reference of record, such as Orei) with knowledge in the art, including the fact that it was “well known to use double needle-bar raschel machines . . . to knit textile elements simultaneously with surrounding textile structures” (Pet., 37–38), and that simultaneous knitting would be obvious because it would “increase yield and reduce manufacturing steps,” as explained in the Petition and supporting evidence. See Pet., 42–44. Id. (alterations in original); see also id. at 4 (Petitioner arguing that the Examiner clearly erred for “failing to seemingly even consider if it would 10 We quote here, to give context to “otherwise,” both aspects that a petitioner must demonstrate in order to meet its burden. In order to determine whether Petitioner has met its overall burden, we need not and do not reach the issue of whether “the previously presented art [Nishida] teaches the limitations of the challenged claims.” Ecto World, Paper 13 at 6. have been obvious to combine Nishida with other prior art, or to implement Nishida using well-known techniques for simultaneously knitting textile elements and surrounding structures having differing textures.”). We do not find this argument persuasive. The cited portion of the Petition is the contention that Orei—not Nishida—would render obvious claim 1. See Pet. 37–38, 42–44 (Ground 1A). Thus, Petitioner has not shown persuasively that the Examiner erred in not making an obviousness rejection based on Nishida because the disputed limitation was purportedly well-known. Additionally, Petitioner’s support for the assertion that this limitation is well-known is not persuasive. The Petition parenthetically quotes from a source stating that plural “articles . . . can be simultaneously knitted side-by-side,” not that an article (a textile element) and surrounding textile structure are known to be simultaneously knitted. See Pet. 38 (quoting Ex. 1050, 201) (emphasis added); see also Pet. § 325(d) Reply 3 (Petitioner quoting its own argument and characterizing it as a “fact” (“The examiner seemingly failed to consider . . . the fact that it was ‘well known . . . “)).” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,266,749 - New Balance Athletics, Inc. v. Nike, Inc.Institution deniedPTAB · Jun 9, 2025 · IPR2025-00020 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 11–15 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of the instant Decision, “Nike applies New Balance’s definition for a person of ordinary skill in the art.” Prelim. Resp. 11. Based on the record presented, we determine that Petitioner’s definition of a person of ordinary skill in the art is consistent with the scope and content of the ’932 patent and the asserted prior art, and, at this stage, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner acknowledges that it agreed to the constructions identified by Petitioner. Prelim. Resp. 12. Patent Owner also notes that it agreed to these proposed constructions in the Related Litigation. Id. at 13. However, Patent Owner argues that for purposes of this Preliminary Response, “no terms require construction.” Id. (citing Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)). Based on the record before us, we need not expressly construe any claim terms.” slip op. at 10
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“limitation would have been obvious because one of ordinary skill in the art would have understood that Becker’s stiffer outer lining would have “restrict[ed] the mobility of the ankle, “not allow[ed] for tightening,” and known to “hav[e] the inner lining extend up above the outer lining.” Pet. 33 (citing Ex. 1003 ¶¶ 122–123). Petitioner relies on conclusory reasoning grounded in hindsight to assert that it would have been obvious for “the skin layer [to be] absent from the ankle part of the knitted component,” as required by limitation [11.d]. The difficulty with Petitioner’s position is that neither Becker nor the other cited references disclose, teach, suggest, or otherwise provide motivation for “the skin layer being absent from the ankle part of the knitted component,” as claimed.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,898,932 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 9, 2025 · IPR2025-00151 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–27 unpatentable on the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’636 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“25:5 (limitation 1a1: “a portion of the knitted component defining the upper”). “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)) (alteration in original). Thus, the claim language suggests that the “integral knit tongue” is a component distinct, at least to some degree, from the “upper.” See also Ex. 1001, 2:27–28 (the Specification stating that “[a] knitted component including the upper and an integral knit tongue is incorporated into the article of footwear.”). Limitation 1d reinforces this understanding by requiring the tongue to be joined to a portion of the throat area of the upper. See id. at 6:35–38 (the Specification indicating that the “throat area” is an area of the upper); cf. Ex. 2014, 18–19 (defining “Throat”: “The main opening of a shoe extending from the vamp [(the front part of a shoe upper that covers the toes and part of the foot)] to the ankle.”). In addition to suggesting that the tongue is a component distinct from the upper, the claim language indicates that the integral knit tongue extends through a throat area. See Ex. 1001, 25:10–11 (limitation 1b: “an integral knit tongue . . . extending through a throat area of the knitted component”). With that context, we turn to the parties’ arguments.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“claim language does not specify it, both parties contend that the “portion of the knitted component” constitutes the majority of the upper. See Pet. 25– 26, 30 (Petitioner applying in this ground that which it characterizes as Patent Owner’s claim construction position); Prelim. Resp. 43 (Patent Owner noting that the Specification states that “a majority of upper 120 is formed from a knitted component 130,” and contending that limitation 1a1 means that “a majority of the upper must be knitted.” (quoting Ex. 1001, 6:57–59)). Nevertheless, we determine for the following reasons that Petitioner has not shown sufficiently that central textile element 60 of Dua-956 defines an upper within the meaning of the claims. See Pet. 26. Petitioner contends that, “[w]ith respect to what defines the upper, the ’636 patent discloses that the ‘upper generally extends over the instep and toe areas of the foot, along the medial and lateral sides of the foot, under the foot, and around the heel area of the foot.’” Pet. 27 (citing Ex. 1001, 1:44–46, 6:66–67). Petitioner reasons that, “[a]s such, the ’636 patent describes the upper as extending around six parts of the foot: (1) the instep area, (2) the toe area, (3) the medial side, (4) the lateral side, (5) under the foot, and (6) the heel area.” Id. Applying this reasoning to the reference, Petitioner contends that, “[o]f the six upper parts identified in the ’636 patent, only two of them—the medial and lateral sides—are not formed by the central textile element 60,” and therefor “the majority of the parts of the upper are formed by the central element 60.” Id. at 30 (citing Ex. 1002 ¶¶ 103–109). Petitioner provides an annotated versions of Figures 8B and 8C of Dua-956, reproduced below, to depict its contentions. Id. at 30. Above are Figures 8B and 8C of Dua-956—which are, respectively, perspective views depicting a second step and a third step in assembling the article of footwear (Ex. 1029, 3:41–45)—with central textile element 60 shaded green. As Petitioner concedes (Pet. 30) and as the annotated figures above show, central textile element 60 does not form the medial and lateral sides of the footwear. Thus, even if central textile element 60 constitutes the majority of parts of the upper, the sides of the upper remain undefined by the central textile element. Petitioner does not explain adequately how the upper is defined when the side components are missing. We determine that Petitioner has not demonstrated adequately for institution that Dua-956 discloses “a portion of the knitted component defining the upper,” as recited in independent claim 1.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Petitioner contends that “both upper 70 and 30' are constructed as a single, unitary knit element that defines the upper, and it would have been obvious to construct upper 30 in the same manner.” Pet. 65. Petitioner next turns to Horii, asserting that “Horii discloses “shoes 1 that are characterized by the fact that the entire upper is constructed of a single piece of upper member 2 that is made through weft knitting or circular knitting.’” Id. at 67 (citing Ex. 1017, 9) (emphasis omitted). Petitioner reasons that “[a] POSITA would have been motivated to manufacture Dua-956’s upper 30, for example, using the multilayer, single fabric of Horii because Horii’s single-piece knit upper would have provided upper 30 with a seamless structure.” Id. at 68. We disagree with Petitioner’s assertion that “[c]onstructing Dua-956’s upper 30 as a single, unitary knit component would not materially change the analysis under Ground 1A.” Pet. 70. In Ground 1A, Petitioner contends that “‘forward portion 61’ of the central textile element 60 is an integral knit tongue that extends through a throat area of the knitted component in the assembled upper 30.” Id. at 34. During the assembly of footwear 10, forward portion 61 is flipped over the top of the footwear and the separate textile elements 40 and 50 (the sides of the footwear) are stitched to the lateral and medial edges (64a and 64b) of forward portion 61—the purported tongue. See Ex. 1029, 9:5–11, Figs. 8B, 8C. Petitioner does not explain adequately how, when modifying the embodiment used in Ground 1A to have a seamless top portion, the purported integral knit tongue is retained in that combination. See Pet. 70 (Petitioner asserting that the proposed combination would still have an exterior surface, an inner surface, lace elements 33, channels 44/54, and loops 35, “along with the other structures identified under Ground 1A,” but not specifically discussing the purported integral knit tongue.). We determine that Petitioner has not demonstrated a reasonable likelihood of demonstrating that claims 1–6, 8–17, and 19–27 would have been obvious over Dua-596 alone or in combination with Horii.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,510,636 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 9, 2025 · IPR2025-00150 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Skechers did not show a reasonable likelihood that claims 1–23 were unpatentable, principally because the asserted art did not disclose the construed integral knit tongue.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’562 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’562 patent in February 2012 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 22. Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Nike applies Petitioner’s proposed level of skill in the art.” Prelim. Resp. 15. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“inquiries.” Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003). “The first step in both analyses is a proper construction of the claims . . . [and t]he second step in the analyses requires a comparison of the properly construed claim to the prior art.” Id. Although an explicit claim construction analysis by a petitioner is not required in every case, a petition nonetheless must identify how the challenged claims are to be construed and how, as so construed, they are unpatentable under the statutory grounds asserted. 37 C.F.R. § 42.104(b)(3)–(4). And, being part of a prima facia case, such an analysis is part of Petitioner’s burden to demonstrate a reasonable likelihood of prevailing on its patentability challenges. Petitioner has failed to satisfy the threshold burden for every ground based on this construction.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We do not find Petitioner’s contentions regarding the two annotated figures to be persuasive. First, those contentions, and the cited opinions of Dr. Adanur, are based on a claim construction that, as discussed above, we reject and for which neither party advocates. Second, Petitioner does not explain adequately why a person of ordinary skill in the art would discern, even with Petitioner’s added red ovals, a tongue distinct from the upper and tongue extending through the throat area. We also do not find persuasive Petitioner’s contentions regarding differing textures. See Pet. 32–33. Even if differing textures could rise to the level of distinguishing an integral knit tongue from the upper, the purported tongue texture 48" is not confined to the area identified by Petitioner as the tongue. See Pet. 31 (annotated Figure 11, reproduced above). For example, texture 48" outside of Petitioner’s oval appears to wrap approximately halfway around the ankle opening, which is not argued to be consistent with an ordinary artisan’s understanding of a tongue. Or, put another way, there is no indication that the portion of the 48" texture within Petitioner’s red oval, which purportedly represents the tongue, is distinguishable from the remaining portion of the 48" texture outside of the red oval. We are not persuaded that Petitioner has demonstrated a reasonable likelihood of proving that a person of ordinary skill in the art would consider the relatively large area depicted as having texture 48" to be an “integral knit tongue.” In light of the above, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and its dependent claims 2–4 as anticipated by Dua-592.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,060,562 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · May 27, 2025 · IPR2025-00143 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–20 obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For this reason, the Petition fails to demonstrate that the asserted prior art teaches, or renders obvious, the subject matter of claims 1 and 12. Thus, there is not a reasonable likelihood of Petitioner prevailing as to either of the independent claims. 2. Dependent Claims The remaining claims, namely claims 2–11 and 13–20, all ultimately depend from either claim 1 or claim 12. Thus, there is not a reasonable likelihood of Petitioner prevailing as to any of the dependent claims. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.”).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“[c]onventional articles of athletic footwear include two primary elements, an upper and a sole structure.” Ex. 1001, 1:3940 (cited at Prelim. Resp. 16). Patent Owner also cites its statement that “[t]he primary elements of footwear 10 are depicted in FIG. 1 as being a sole structure 20 and an upper 30.” Ex. 1001, 4:62– 63 (cited at Prelim. Resp. 16). Additionally, Patent Owner points out (correctly) that every figure of the ’781 patent “depict[s] shoes[] or textile elements that are designed to be incorporated into shoes.” Prelim. Resp. 16. Finally, Patent Owner points to surrounding claim language in both of independent claims 1 and 12 that supports its construction. With respect to claim 1, Patent Owner points out that it “recite[s] an ‘upper’ that is ‘for an article of footwear.’” Id. (quoting claim 1). With respect to claim 12, Patent Owner points out that it “recite[s] . . . an ‘article of footwear comprising’ an ‘upper.’” Id. (quoting claim 12). We agree that the Specification supports Patent Owner’s construction. slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“A claim’s preamble is not necessarily limiting. See, e.g., Pitney Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). The Petition does not take a position as to whether the preambles of claims 1 and 12 are limiting. See Pet. 53 (“If the preamble [of claim 1] is limiting, Cusinato, Bellak, and Dua each disclose an upper for an article of footwear.”), 85 (claim 12 analysis referring back to claim 1 analysis). We construe the preambles of claims 1 and 12 to be limiting, as guided by case law. It is clear that the preambles are being used to help define the invention, i.e., an upper for an article of footwear in the case of claim 1 and an article of footwear having an upper in the case of claim 12. See Bell Communications Research Inc. v. Vitalink Commcations Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[A] claim preamble has the import that the claim as a whole suggests for it. In other words, when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.”). Moreover, the bodies of both claims recite “the upper” which, in the case of claim 1, derives its antecedent basis directly from the preamble and, in the case of claim 12, relies on the preamble’s article of footwear which is recited as comprising an upper. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As to this hypothetical construct, Petitioner proposes the following: A person of ordinary skill in the art (“POSITA”) in the field of the '781 [patent] in March 2004 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. See EX1002, ¶78. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. Id. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person's working experience compensates for any such lower educational level, or vice versa. Id. Pet. 36. Patent Owner does not oppose Petitioner’s proposal. Prelim. Resp. 14– 15. Thus, for purposes of deciding the Petition, we adopt Petitioner’s proposal.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,986,781
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.