- Uatp IP LLC v. Slick Slide LLCInstitutedPTAB · Apr 8, 2025 · PGR2024-00054 · APJ Julia Heaney · PGR · Institution
The Board instituted PGR on claims 1–17 and 22–28 and all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . 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) (2018). Upon consideration of the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one claim challenged in the Petition is unpatentable. Further, Patent Owner has not persuaded us that it is appropriate to exercise our discretion not to institute review. Accordingly, we institute a post-grant review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level patent owner adoptedOther
“On this record, we do not find Patent Owner’s proposed experience level of at least five years in measurement and analysis of coefficient of friction to be supported. As to the necessity of experience in textile engineering and fiber science, Patent Owner’s position, although not supported by declarant analysis of the factors listed above, is consistent with the disclosure of the ’854 patent, which describes features of a mesh layer in textile and fiber terms. See e.g., Ex. 1001, 10:17–11:14, 12:65–13:8, 14:20–24. On the whole, however, we do not discern on this record how specific experience in textile engineering and fiber science of a person of ordinary skill would materially alter the outcome at this stage of the proceeding. For purposes of this decision only, we apply Patent Owner’s proposed definition of a person of ordinary skill in the art, except for the requirement of five years of experience in measurement and analysis of coefficient of friction. The level of skill in the art remains an open issue in this proceeding. Further submissions by the parties may include argument and evidence that would assist in the resolution of this issue at the close of trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “no formal claim construction is necessary in this proceeding.” Pet. 10; Reply 1, 4. Patent Owner contends the terms “mesh layer” and “coefficient of friction” require construction. Prelim. Resp. 14–16; Sur-reply 2–5. We have considered the parties’ arguments and discuss them below with regard to each of the terms Patent Owner contends should be construed. Because our determination that Petitioner demonstrates at least one challenged claim meets the threshold for institution (see SAS Inst., 138 S. Ct. at 1359–60) is not based on construing the term “mesh layer” or “coefficient of friction,” we determine we need not construe either claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing 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.”)). As further discussed below, we invite the parties to address claim construction at trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We agree with Petitioner that the ’854 patent specification does not include clear and explicit lexicography or a disclaimer that would support requiring “coefficient of friction” to be determined by a specific ASTM test method. The portion of the specification Patent Owner asserts as a definition of “coefficient of friction” (see Ex. 1001, 11:31–42) is a description of an embodiment; we find it does not express patentee intent to redefine the term. Further, the statement that “the coefficient of friction … may be determined using the … ASTM D1894 standard test method” (id. at 11:32–35) indicates that use of that specific test method is optional. Accordingly, in the absence of patentee lexicography or disavowal, we do not limit the scope of the term “coefficient of friction” to require that it be measured by a specific ASTM standard. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). We note that the ’854 patent specification sets forth a definition for the coefficient of friction between the surfaces of the mesh material and the slide surface. Ex. 1001, 4:38–46. As stated above, however, we do not expressly construe any claim term at this stage of the proceeding. Should the parties address the construction of “coefficient of friction” at trial, we will make a determination after the close of evidence and any hearing.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,998,854 - PTAB · Apr 10, 2024 · PGR2024-00004 · APJ Scott A Daniels · PGR · Institution
The Board instituted PGR on claims 1–24 and all petition grounds, finding it more likely than not that claims 1–3, 5–6, 8–11, 13–17, and 20–24 are obvious over Emma, Butt, and Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] 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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable based on the grounds presented. Therefore, we institute a post-grant review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or computer engineering . . . [a]lternatively, a POSITA could have had a bachelor’s degree in mechanical engineering, industrial engineering, physics, or a related engineering or discipline, plus at least two years of experience working with control circuits, sensors, kitchen appliances, or similar fields. ordinary skill in the art and states that “[t]he differences do not matter for purposes of this Petition.” Prelim. Resp. 4–5. On this record, Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’746 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“level of smoke” Neither Patent Owner nor Petitioner expressly indicate that any claim terms require express construction. See Petition 13–14; Prelim. Resp 5. However, Petitioner contends that for the phrase “level of smoke,” recited in claims 1, 15, and 22, “Patent Owner interprets ‘level of smoke’ as merely detecting smoke.” Pet. 14 (citing Ex. 1009, 6). Patent Owner argues that it “does not offer a special definition” and “asked the [district] court to give these terms their plain and ordinary meaning.” Prelim. Resp. 5, n 2. Patent Owner explains that a person of ordinary skill in the art “would similarly understand ‘level of smoke’ when read in the full context of the intrinsic record.” Id. in light of the specification, we understand “level of smoke” as a predetermined level of smoke “indicative of a dangerous condition” as the specification of the ’746 patent explains. Ex. 1001, 15:43–44, see also id. at 15:63–65 (The ’746 patent describing “[t]he determination of a level of smoke corresponding to a dangerous condition.”). To the extent the parties disagree, they may address this issue more directly in subsequent briefing. slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“POSITA to reasonably combine Emma with a smoke sensor reference.” Prelim. Resp. 44. We agree that Emma does not disclose a smoke sensor, but Petitioner has provided other prior art references, namely Butt and Smith, and presented several reasons, namely safety reasons, that a person of ordinary skill in the art would consider adding a smoke detector from Butt and Smith to Emma’s microwave oven. Pet. 24, 74–75. Obviousness is not determined from the perspective of the inventors or authors of a single prior art reference. Rather, obviousness is determined from the perspective of a hypothetical person having ordinary skill in the art. It is only that hypothetical person who is presumed to be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Petitioner argues, for instance, that Butt teaches the fire safety aspects of “a controller for interrupting a supply of electricity to an appliance upon detection of a trigger, such as [s]moke.” Pet. 24 (quoting Ex. 1015, 1:16– 18). Dr. Horenstein testifies that from a safety perspective, a person of ordinary skill in the art would have “combine[d] the additional kitchen-safety appliance features of Butt with the Emma microwave/refrigerator so as to enable the Emma microwave to shut down upon the detection of smoke, and to reenable the Emma microwave for a further cooking session when the smoke had cleared.” Ex. 1023 ¶ 124. Where Butt arguably discloses a smoke detector external to an appliance, Dr. Horenstein testifies that a person of ordinary skill in the art would have looked to “Smith to include the smoke sensor in operative connection with the microwave oven with the reset functionality disclosed by Butt for the added benefit of reusing the microwave oven.” Id. ¶ 127 (emphasis added). each directed towards shutting down a component of the device in response to a sensor output indicative of an unwanted condition.” Id. ¶ 127. Dr. Horenstein testifies further that a person of ordinary skill in the art “would have combined the elements as disclosed by known methods for the purposes of modifying Emma’s microwave / refrigerator combination to include Smith’s smoke sensor to be operatively connected with its cooking area and to include Butt’s smoke sensor and reset functionality.” Id. ¶ 126. Dr. Horenstein explains that inclusion of Butt’s reset functionality with Smith’s smoke sensor operatively connected with the cooking area into Emma would result in such elements merely performing the same function as they do separately, i.e., sensing smoke to withdraw electrical power from an electrical cooking appliance and then re-enabling the electrical cooking appliance. Id. Moreover, Dr. Horenstein testifies that the prior art, for example, Butt, specifically recognized the need to solve the problem of fires in the home started by cooking appliances. Id. ¶ 128 (citing Ex. 1015, 1:22–44). Butt explains, that “[h]ome fires are a serious problem in the United States. The National Fire Protection Association reports that between the years 1999- 2002, for example, there were 114,000 reported home fires associated with cooking alone.” Ex. 1015, 122–25. Similarly, Smith expressly teaches “[a] method and apparatus for anticipating the occurrence of a fire in the cooking cavity of a microwave oven.” Ex. 1014, Abstract.” slip op. at 36
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,674,746 - PTAB · Apr 10, 2024 · PGR2024-00003 · APJ Scott A Daniels · PGR · Institution
Instituted PGR on claims 1–28 and all petition grounds; the Board found a reasonable likelihood that claims 1, 13, 15, 20, 22, and 24–25 are obvious over Emma, Butt, and Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] 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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable based on the grounds presented. Therefore, we institute a post-grant review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or computer engineering . . . [a]lternatively, a POSITA could have had a bachelor’s degree in mechanical engineering, industrial engineering, physics, or a related engineering or discipline, plus at least two years of experience working with control circuits, sensors, kitchen appliances, or similar fields. Pet. 14 (citing Ex. 1002 ¶ 50; Ex. 1023 ¶ 6). Patent Owner provides a similar level of ordinary skill in the art and states that “[t]he differences do not matter for purposes of this Petition.” Prelim. Resp. 4. On this record, Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’745 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“level of smoke” Neither Patent Owner nor Petitioner indicate that any claim terms require express construction. See Petition 13–14; Prelim. Resp 5. However, Petitioner contends that for the phrases “level of smoke” and “amount of smoke,” recited in claims 1, 15, and 24, it has “applie[d] what it understands Patent Owner contends is the meaning of this term in this Petition[,] and shows below the claims are invalid under Patent Owner’s construction.” Pet. 13–14 (citing Ex. 1009, 6). Patent Owner argues that it has “does not offer a special definition” and “asked the [district] court to give these terms their plain and ordinary meaning.” Prelim. Resp. 5, n 2. Patent Owner explains that a person of ordinary skill in the art “would similarly understand ‘level of smoke’ when read in the full context of the intrinsic record.” Id. For purposes of this Decision, reading the plain language of the claims in light of the specification, we understand “level of smoke,” or amount of smoke, in the claims generally as a predetermined level of smoke “indicative of a dangerous condition” as the specification of the ’745 patent explains. Ex. 1001, 15:48–49, see also id. at 16:1–2 (The ’745 patent describing “[t]he determination of a level of smoke corresponding to a dangerous condition.”). To the extent the parties disagree, they may expressly address this issue more directly in subsequent briefing. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“from Butt and Smith to Emma’s microwave oven. Pet. 24. Obviousness is not determined from the perspective of the inventors or authors of a single prior art reference. Rather, obviousness is determined from the perspective of a hypothetical person having ordinary skill in the art. It is only that hypothetical person who is presumed to be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Petitioner argues, for instance, that Butt teaches the fire safety aspects of “a controller for interrupting a supply of electricity to an appliance upon detection of a trigger, such as [s]moke.” Pet. 24 (quoting Ex. 1015,1:16– 18). Dr. Horenstein testifies that from a safety perspective, a person of ordinary skill in the art would have “combine[d] the additional kitchen-safety appliance features of Butt with the Emma microwave/refrigerator so as to enable the Emma microwave to shut down upon the detection of smoke, and to reenable the Emma microwave for a further cooking session when the smoke had cleared.” Ex. 1023 ¶ 124. Where Butt arguably discloses a smoke detector external to an appliance, Dr. Horenstein testifies that a person of ordinary skill in the art would have looked to “Smith to include the smoke sensor in operative connection with the microwave oven with the reset functionality disclosed by Butt for the added benefit of reusing the microwave oven.” Id. ¶ 127 (emphasis added).” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,674,745 - PTAB · Jun 20, 2023 · PGR2023-00008 · APJ Kristina M Kalan · PGR · Institution
The Board instituted post-grant review of claims 1–13 on all petitioned grounds, finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute post-grant review, we must determine that the information presented in the Petition, “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). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims of the ’624 patent is unpatentable. Thus, we institute post-grant review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“evaluated the subject matter of Riis during examination of the ’624 patent, we agree that Riis was before the Office, as discussed in connection with our analysis of the first part of the Advanced Bionics framework, above. Examiner T presumably was aware of Riis by virtue of having initialed an IDS containing Riis in the ’624 patent’s application and also by virtue of having initialed an IDS containing Riis in the ’067 Application, but Examiner T did not apply Riis in connection with the examination of the ’624 patent. On this record, Patent Owner also fails to show that the claims of the child application leading to the ’624 patent are substantially similar to those of the parent ’814 patent in which Examiner S considered Riis, and, thus, consideration of Riis during the prosecution of the ’814 patent does not equate to consideration of Riis during the prosecution of the ’624 patent. Regarding Patent Owner’s argument (2) that Petitioner fails to sufficiently show how the Examiner erred in evaluating the prior art, we find Petitioner’s arguments demonstrate that Examiner T, the examiner of the ’624 patent, did not apply Riis (or Wypych or Tatarka) during the examination of the’624 patent. As Petitioner argues, the error lies in that “the Examiner failed to consider the relevance of Riis as it applied to the pending method claims,” because although “Riis was considered during examination of the parent ’999 application, Riis was not similarly considered during examination of the ’018 application which led to the ’624 patent.” Pet. 76–77. We determine that the circumstances here demonstrate that the Examiner erred in evaluating the prior art.” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityNot reached
“35 U.S.C. § 322(a)(2) to deny institution, arguing that the Petition fails to identify every RPI. Prelim. Resp. 10–11, 56–60. Patent Owner argues that the Petition “should also have identified its parent corporation, Huhtamäki Oyj . . . as well as the related corporation Huhtamaki, Inc. . . . as RPIs to comply with the statutory requirements for a PGR.” Id. at 10. On this record, we determine that we need not address whether Huhtamäki Oyj and Huhtamaki, Inc. are unnamed RPIs because, even if they were, it would not create a time bar or estoppel under 35 U.S.C. § 325. See SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (precedential); Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (Board’s jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11 at 10 (PTAB July 18, 2017) (“evidence [of failure to identify all RPIs] is, at best, suggestive regarding an issue that is not jurisdictional”); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest . . . the Director can, and does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). Here, notwithstanding the arguments devoted to the RPI issue in the Preliminary Response, Preliminary Reply, and Preliminary Sur-Reply, we are not persuaded that Petitioner is barred or estopped from this proceeding, or that Petitioner purposefully omitted Huhtamäki Oyj or Huhtamaki, Inc. to gain some advantage. As Petitioner argues, the “RPI analysis is not necessary at institution, because Patent Owner has not alleged Petitioner would be time barred or otherwise estopped based on unnamed RPIs.” Prelim. Reply 5 (quoting SharkNinja, IPR2020-00734, Paper 11 at 18). As SharkNinja states, certain Board decisions go through extensive analysis to determine whether parties should have been named as RPIs, whereas other Board decisions determine that “such a lengthy exercise is unnecessary for the purposes of rendering a decision on institution of trial.” SharkNinja, IPR2020-00734, Paper 11 at 19. Here, as in SharkNinja, we find the latter approach better serves the interest of cost and efficiency. Thus, at this time and on this record, we will not consider whether Huhtamäki Oyj or Huhtamaki, Inc. must be named as RPIs.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention “would have had a relevant technical degree in Chemical Engineering, Polymer Science, Materials Science, or the like, and 2–3 years of experience in laminate or film manufacture or similar packaging manufacture and that less experience may be necessary with additional education and vice versa.” Pet. 17 (citing Ex. 1003 ¶¶ 66–72). In its 4 Neither Patent Owner nor Petitioner appear to present any evidence directed to secondary considerations. See generally Pet.; Prelim. Resp.; Prelim. Reply; Prelim. Sur-Reply. Preliminary Response, Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See generally Prelim. Resp. We adopt Petitioner’s definition, which is consistent with the level of skill in the art at the time of the invention as reflected by the prior art and the ’624 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,260,624
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.