- PTAB · Mar 20, 2025 · IPR2024-01407 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claim 26 on the Shell and Cole §103 ground, finding a reasonable likelihood that the combination renders the claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Based on a holistic analysis of the Fintiv factors taking into consideration “whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11 at 6), we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Considering these disclosures together with the cited paragraphs of Petitioner’s declaration, Petitioner sufficiently shows on the present record that one of ordinary skill in the art would have understood that, in Shell, when a user attempts a voice call, the user can cause a current data connection to disconnect, because (1) a voice-related connection request will be made, (2) the request for voice connection will be prioritized over data requests, and (3) the request will also be prioritized if it is coming from an active application rather than an application running in the background. Pet. 47; Ex. 1003 ¶ 140; Ex. 1005 ¶¶ 8, 13, 14, 57. On the preliminary record, the relied-upon portions of Shell adequately show a determination of whether an application is an active application for prioritization purposes and disconnecting a current data connection due to a user attempting to make a voice call. Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call would be a user interaction resulting in a request for a voice connection that would be prioritized over the data request of another application using the current data connection. See Ex. 1005 ¶¶ 8, 13, 14, 57. The attempt to make a voice call also involves a user interacting with an application to make it an active background. See Ex. 1003 ¶ 140. Petitioner, thus, sufficiently shows for institution that Shell’s processor is “configured to determine that the different application is an active application based on a user interaction with the different application,” as required by claim 26. Pet. 47; Ex. 1003 ¶ 140.” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“One of ordinary skill in the art, Petitioner argues, would have, thus, been motivated to look to references, such as Cole, that provided mobile devices with network access while addressing cost, power, and network selection. Pet. 13–14 (citing Ex. 1003 ¶ 68; Ex. 1006, code (57), ¶¶ 14–15, 78, 83, 88, 98). Petitioner also argues that Cole describes Internet access control techniques based on conditions, such as power state change and load on current communication links, and that applying Cole to Shell would have “promoted more efficient communications and network access connectivity.” Id. at 14 (citing Ex. 1003 ¶ 68; Ex. 1006 ¶¶ 83, 98). Using Cole’s techniques, the proposed combination, Petitioner explains, would have evaluated network and power conditions, determined whether to apply an Internet access control, evaluated further conditions, such as whether the application is running in the foreground or background, and then determined the priority of packets traveling over the selected network. Pet. 14 (citing Ex. 1003 ¶ 68; Ex. 1005 ¶ 92; Ex. 1006 ¶¶ 11, 78, 83, 88, 98). Petitioner also argues that one of ordinary skill in the art would have incorporated Cole’s communication manager 260 into Shell’s connection manager modules 210 and would have incorporated Cole’s connections.” Id. at 14–15 (citing Ex. 1003 ¶ 70; Ex. 1005 ¶ 32, Fig. 1; Ex. 1006 ¶ 31). Petitioner further argues that the proposed combination would have included the processors, non-transitory memory, and display, as taught by both references, to perform the recited operations. Id. at 15 (citing Ex. 1003 ¶¶ 71–72; Ex. 1005 ¶¶ 38–44, Fig. 1; Ex. 1006 ¶¶ 34, 40, Fig. 2). Petitioner additionally argues that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination because it “would have required only routine programming knowledge well within [ordinary] skill,” “would have amounted to nothing more than the use of a known technique to improve similar devices . . . in a similar way,” and would have been “combining prior art elements according to known methods to yield predictable results.” Pet. 15–16 (citing Ex. 1003 ¶¶ 73, 74; Ex. 1005 ¶¶ 36, 40; Ex. 1006 ¶¶ 34, 35, Fig. 2).” slip op. at 21
- Skill levelSkill level petitioner adoptedOther
“Petitioner’s declarant opines that a person of ordinary skill in the art “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 services and application implementation in communication networks.” Ex. 1003 ¶ 15. The declarant also opines that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. “For purposes of [its] Preliminary Response, Patent Owner does not challenge that definition.” Prelim. Resp. 5 (citing Pet. 13 n.2; Ex. 1003 ¶ 15); see also Ex. 2010 ¶ 27 (stating “[f]or purposes of . . . my analysis, I do not disagree with this proposed level of skill in the art”). Based on the” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,179,359 - PTAB · Oct 31, 2024 · IPR2024-00858 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 5–7 and 16–19, finding a reasonable likelihood that claims 5–7 and 16–19 are unpatentable over Samartgis and at least claims 5 and 19 over Leoncavallo.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“U.S.C. § 314(a) due to the advanced state of the parallel district court action, and, in doing so, relies heavily on the district court’s scheduled trial date of September 22, 2025. See Prelim. Resp. 51, 54. While the district court’s scheduled trial date may be earlier than the Board’s projected deadline for a final written decision here, CamelBak’s reliance on that date is misplaced. The Office takes the position that a district court’s scheduled trial dates are “unreliable and often change” and that a more reliable indicator is the district court’s “median time-to-trial for civil actions,” which, in this case, would place the district court’s trial date after the projected deadline of any final written decision here. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”), at 8–9. Thus, CamelBak’s reliance 5 US D586,184 S, issued Feb. 10, 2009 (Ex. 1006, “Miller”). on the district court’s scheduled trial date has no bearing on whether we should discretionarily deny institution. Of greater relevance is Trove’s express stipulation not to pursue the same grounds in the district court action as advanced in the petition or any ground that relies on the prior art references cited in the petition. See Pet. 100. Although not exactly a Sotera stipulation, the Office nonetheless recognizes that such stipulations further mitigate concerns of potentially conflicting decisions and duplicative efforts between us and the district court. See Director’s Interim Procedure, at 7–8. Thus, given Trove’s stipulation and the fact that the district court’s median time-to-trial is after the projected deadline of our final written decision here, we will not discretionarily deny institution under § 314(a).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree that Samartgis is the substantially the same as the corresponding design patent cited during prosecution, mainly because the design patent fails to show the closure retention mechanism that is clearly shown and described in Samartgis and goes to the very heart of Trove’s showing of anticipation and obviousness. Compare Ex. 1004, Figs. 3–5 (showing lug members 15, 16 and ramp sections 23, 25, 27), with Ex. 2001, Figs. 1–8 (omitting any depiction of lug members or ramp sections). Thus, Samartgis clearly was not considered. And, although Leoncavallo and Miller may arguably have been considered during prosecution, “[w]hen instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 42 C.F.R. § 42.108(a). As such, we will not discretionarily deny institution under § 325(d). B. Level of Ordinary Skill in the Art” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Trove proposes that one of ordinary skill in the art would have had: an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products . . . [and that] [m]ore work experience may substitute for a lower level of education, and vice versa. Pet. 17–18 (citing Ex. 1003 ¶¶ 25–30). CamelBak appears to agree. See Prelim. Resp. 16 (“Patent Owner assumes Petitioner has correctly stated the level of ordinary skill in the art and does not set forth its own definition.”). At this stage, we see no reason to depart from Trove’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’252 patent.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“At this stage, we do not see the need to resolve the § 112(f) issue in light of Trove’s express and unrebutted showing that the prior art teaches sufficiently analogous structure to that identified in the ’252 patent for performing the disputed functional limitations of the claimed “closure retention mechanism.” See Pet. 35 (asserting that “[Samartgis’s] lug members 15 and 16 also are at least equivalent to the structure identified in the specification (i.e., the two or more spaced-apart tabs on the handle)” because “[l]ike the opposed tabs of the ’252 patent, the lug members 15 and 16 are projections that extend from the inner surface of the handle to engage the closure.”). Indeed, at this stage, CamelBak chooses not to address Trove’s showing in this regard, instead arguing that “the construction of ‘closure retention mechanism’ is irrelevant because [Trove] fails to show lug members 15 and 16 are configured to meet other limitations of claims 5 and 19.” Prelim. Resp. 20 n.7. That said, to the extent either party believes it is necessary for final resolution of patentability, they should explore the § 112(f) issue further during the trial phase.” slip op. at 10
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 8,905,252 - PTAB · Oct 23, 2024 · IPR2024-00809 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds, finding a reasonable likelihood that the Limont, Wright, and Xu combination renders claim 1 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its challenge that Limont, Wright, and Xu teach, suggest, or would have been understood to disclose the limitations of claim 1 and that one of ordinary skill in the art would have combined those references in the manner asserted with a reasonable expectation of success.” slip op. at 28
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Here, we do not find that Fintiv factors 1–5 weigh in favor of discretionary denial. Additionally, after weighing Fintiv factors 1–6, we determine that, on balance, these factors do not favor exercising our discretion to deny institution. Therefore, under the circumstances of this case, there is no need to determine whether the Petition establishes compelling merits. G. Conclusion on Fintiv Factors Based on a holistic analysis of the Fintiv factors taking into consideration “whether efficiency and integrity of the system are best served by denying or instituting review” (Fintiv, Paper 11 at 6), we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“argues that one of ordinary skill in the art would have been “motivated to implement a secure environment as taught by Xu on Limont’s mobile device incorporating Wright’s encryption functionality” so as “to provide for the protection of data in mobile devices using techniques such as hardware protections and encryptions” and to address “‘malicious users’ accessing confidential information.” Pet. 40–41 (citing Ex. 1003 ¶¶ 263–267, 379– 286, 431–440; Ex. 1004 ¶ 13; Ex. 1016 ¶ 30). Petitioner also argues that one of ordinary skill in the art would have been “motivated to modify Wright’s encryption functionality using a secure environment as taught by Xu” because “the teachings of Xu beneficially increase Limont’s and Wright’s protections.” Id. at 41 (citing Ex. 1003 ¶ 437; Ex. 1005 ¶¶ 78, 267; Ex. 1016 ¶¶ 25–26). Petitioner further argues that one of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination. Pet. 19 (citing Ex. 1003 ¶¶ 165–222, 263–298, 427–440), 23 (citing Ex. 1003 ¶¶ 296–297; Ex. 1004 ¶¶ 9, 40, Fig. 1), 42 (citing Ex. 1003 ¶¶ 438–440).” slip op. at 26
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Based on Patent Owner’s cited support from the Specification and declarant testimony that has not yet been challenged, we adopt Patent Owner’s proposed plain and ordinary meaning of “network data service” to mean “a service that provides network data.” Prelim. Resp. 5; Ex. 1001, 1:48–49 (“many access networks such as wireless networks, cable networks and DSL (Digital Subscriber Line)”); Ex. 2001 ¶ 30. The parties should consider further addressing Patent Owner’s proposed interpretation during trial.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,198,042 - Google LLC v. Dialect, LLCInstitutedPTAB · Oct 23, 2024 · IPR2024-00752 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR on claims 1–27 on all asserted grounds, finding a reasonable likelihood of success on at least claim 1 over Coffman and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(iii) Conclusion as to Claim 1 We conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable as having been obvious over Coffman.” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“synchronizing” of context information and Coffman’s “updating” of context information. See Prelim. Resp. 1–2, 18, 20–23. However, this overlooks that Coffman describes its “updating” of context information as “the exchange of information to coordinate the conversation involving multiple devices,” such as Coffman’s master device and slave devices. Ex. 1003, 22:32–23:15 (emphasis added), 25:10–14, 26:28–27:20. Based on the present record, we are persuaded by Mr. Schmandt’s testimony that this results in synchronization of context information between the devices, such that (for example) the context stack of Coffman’s master device is updated based on the context stack of Coffman’s slave device(s). See Ex. 1002 ¶¶ 70–71. This is consistent, for example, with the ’652 patent’s description of “[t]he synchronization process” as “attempt[ing] to determine which version of a data element or an agent are the newest or most up-to-date and propagates that element,” including replacing “a portion of the database.” Ex. 1001, 17:25–32. slip op. at 25
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Patent Owner appears to be relying on an implicit claim construction that the term “synchronize” requires perfect synchronization, not allowing any deviation between the respective context stacks of the synchronized devices. This implicit claim construction is contradicted by the ’652 patent specification, which contemplates that “[t]he synchronization may be performed automatically when any two or more of the computers are connected to these networks,” or “[a]lternatively . . . the synchronization” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We conclude, per Advanced Bionics, that the Examiner erred in “overlooking specific teachings” of Coffman / Coffman ’574 when allowing the ’652 patent to issue. Advanced Bionics, at 8–9 & n.9; see also id. at 10 (“[I]f the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive[.]”). Here, the Examiner cited Coffman ’574 as a considered reference, but did not cite Coffman ’574 as the basis for any claim rejections. See supra Section IV.B.1. Nor did the Examiner express any reasons for allowance over Coffman ’574. See id. Patent Owner’s argument that the Examiner allowed the ’652 patent claims over Coffman ’574 for the same reasons that the Examiner allowed the claims over the unrelated Mumick reference is not supported by the prosecution history evidence. In particular, the Examiner cited Mumick’s synchronization of navigation histories as being different from the claimed synchronization of context stacks/sets. See Ex. 1012, 170–171, 447. Coffman / Coffman ’574, by contrast, specifically discloses context stacks/sets. See supra Section III.E.2(ii) (comparing Coffman with claim 1 of the ’652 patent). Patent Owner does not cite to anything in the prosecution history to establish the Examiner considered the specific teachings of Coffman / Coffman ’574 cited in the Petition as disclosing the synchronization of context stacks/sets recited in claims 1, 14, and 20 of the ’652 patent. Indeed, accepting Patent Owner’s reasoning would prove too much, as it would mean the Examiner concluded all of the twelve initially-cited references (see Ex. 1012, 175) as well as all of the approximately 650 later-cited references (see id. at 450–477) were distinguished from the allowed claims by failing to disclose or suggest synchronizing context stacks/sets, because the same reasons for allowance over Mumick were provided in both instances (see id. at 170–171, 447). Thus, we conclude Petitioner’s case for obviousness over Coffman is not a mere “disagreement with a specific finding of record by the Office” during prosecution of the ’652 patent. Advanced Bionics, at 10–11.” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,849,652 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00638 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–11 and all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 23–35; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the associated litigation . . . the grounds raised in the Petition for IPR or any other grounds that could have reasonably been raised before the PTAB in this proceeding” (Paper 7), we do not discretionarily deny institution under Fintiv.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“surface. Patent Owner passes over the disclosure in Kim’s Figure 5b, which appear to depict the claimed big toe-to-little toe slope when the golfer is attempting a swing. Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995), a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). In addition, Figures 1, 2, and 3a of Kim appear to show an incline from the toe to heel (as is typical in shoes). See also Ex. 1005 ¶ 27 (“Except for the outsole 10 including the inclined lower surface 12, the golf shoe 100 of the present invention is substantially the same as conventional golf shoes.”). Thus, on this record, we are persuaded that Kim sufficiently discloses the slopes required by claim 1. Reviewing the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Kim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“2. Analysis Patent Owner argues that Kim does not disclose the slopes required in independent claim 1. Prelim. Resp. 35–40. Patent Owner focuses its analysis on Figure 5a, however, which depicts the golfer standing on a hard surface. Patent Owner passes over the disclosure in Kim’s Figure 5b, which appear to depict the claimed big toe-to-little toe slope when the golfer is attempting a swing. Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995), a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). In addition, Figures 1, 2, and 3a of Kim appear to show an incline from the toe to heel (as is typical in shoes). See also Ex. 1005 ¶ 27 (“Except for the outsole 10 including the inclined lower surface 12, the golf shoe 100 of the present invention is substantially the same as conventional golf shoes.”). Thus, on this record, we are persuaded that Kim sufficiently discloses the slopes required by claim 1. Reviewing the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Kim.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes. Pet. 15 (citing Ex. 1002 ¶ 31). Patent Owner does not contest. Prelim. Resp. 17. Reviewing the ’760 patent and the cited prior art, we determine that Petitioner’s proposed level of skill is reasonable and adopt it for purposes of this Decision.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,064,760 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00636 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that claims 1 and 5 would have been obvious over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 22–34; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the associated litigation . . . the grounds raised in the Petition for IPR or any other grounds that could have reasonably been raised before the PTAB in this proceeding” (Paper 7), we do not discretionarily deny institution under Fintiv.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’786 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes. Pet. 15 (citing Ex. 1002 ¶ 31). Patent Owner does not contest. Prelim. Resp. 17. Reviewing the ’786 patent and the cited prior art, we determine that Petitioner’s proposed level of skill is reasonable and adopt it for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner proposes that the term “athletic positioning” in independent claim 5 should be construed to mean “a heel section higher than the toe section and the outside edge of the toe section higher than the inside edge of the toe section.” Prelim. Resp. 20–22. However, independent claim 5 already appears to give the term “athletic positioning” this meaning, where it describes the various slopes. In particular, the claim recites that the toe section forms an angled support platform that has a first slope along the inner edge of the sole and a third slope along the outer edge of the sole, each of which extend from the toe to the heel. Accordingly, Patent Owner’s proposed construction appears unnecessary in view of the claim. In sum, we do not explicitly construe any limitations at this time.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,674,786 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 11, 2024 · IPR2024-00637 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1–5 on all asserted grounds, finding a reasonable likelihood that claims 1–5 are obvious over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Athalonz requests that we discretionarily deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel district court action. See Prelim. Resp. 20–32. Under Armour disputes that discretionary denial is warranted (Pet. 55), but nonetheless submits a Sotera stipulation (Paper 7) per our authorization. In light of Under Armour’s Sotera stipulation, we will not discretionarily deny institution under § 314(a). See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Athalonz first argues that Kim fails to disclose the “three slopes” limitation of claim 1. Prelim. Resp. 32–37. As for that limitation, claim 1 recites a first slope formed by the first and second heights, a second slope formed by the first and third heights, and a third slope formed by the second and third heights. See Ex. 1001, Figs. 3–5. Together, these three slopes form a big toe section that is lower than a little toe section, with both being lower than the heel section of the shoe’s sole. See id. In arguing that Kim fails to disclose the three slopes as claimed, Athalonz focuses on Kim’s Figures 3b and 5a. Prelim. Resp. 33–34. Those figures, however, depict a golfer standing “on a hard ground such as a paved road.” Ex. 1005 ¶ 38; see also id. ¶ 23. Athalonz overlooks the disclosure in Kim’s Figure 5b, which depicts the claimed big toe-to-little toe slope when the golfer is standing “on a green” in the “address position” of the golfer’s swing. Ex. 1005 ¶¶ 24, 35– 36. That is, although the golfer’s stance on the hard surface in Kim’s Figure 5a may not satisfy the claimed three slopes, the golfer’s stance on the softer grass surface in Kim’s Figure 5b most certainly does. See Hewlett- Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995), a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). Thus, we are persuaded that Kim sufficiently discloses the three slopes recited by claim 1.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Aside from “ordinary and customary meaning,” Under Armour does not propose any particular claim construction at this time. See Pet. 10. Athalonz proposes that the term “athletic positioning” in claim 1 be construed to mean “a heel section higher than the toe section and the outside edge of the toe section higher than the inside edge of the toe section.” Prelim. Resp. 17–20. We note, however, that claim 1 already appears to define the term by describing the various heights and slopes of the sole that provide “athletic positioning” of the foot. See Ex. 1001, 43:22–36 (“wherein the athletic positioning shape has . . .”). Thus, because Athalonz’s proposed construction appears unnecessary in view of the claim language, we need not explicitly construe this limitation any more than claim 1 already does.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“obvious over Dufour and Kim and as obvious over Rubin and Kim. See Pet. 2, 26–54. Like Kim, Dufour and Rubin also disclose golf shoes. See generally Exs. 1006, 1007. With respect to the Dufour/Kim challenge, Athalonz contends that Under Armour “mixes and matches [Dufour’s] separate embodiments” to show the claimed three slopes. Prelim. Resp. 43. In particular, Athalonz notes Under Armour’s reliance on Figures 9 and 10, as well as Figures 11 and 12, in Dufour. See id. at 44–46 (citing Pet. 35–36). According to Athalonz, these figures “are directed to two different embodiments with different features.” Id. at 42. Indisputably, Dufour states that Figures 11 and 12 are “another embodiment” compared to that of Figures 9 and 10. Ex. 1006, 3:26–29. That said, however, all of these figures share some common features, and to the extent Under Armour relies on a feature in one figure to better illustrate the same feature in another figure, we find nothing wrong with that approach. Thus, we are not persuaded that Under Armour’s reliance on various figures in Dufour amounts to any meaningful difference. Athalonz also contends that Dufour discloses the heel area of the shoe to be “at the same height as the big toe area.” Prelim. Resp. 42. But, aside from attorney argument, Athalonz does not persuasively explain how Dufour discloses that to be the case. See id. In contrast, Under Armour points specifically to Dufour’s Figures 11 and 12 to satisfy the slope limitation requiring the heel area to be higher than the toe area. See Pet. 32, 34–35. Indeed, the heel area visually appears to be higher than the toe area in Figures 11 and 12, as supported by the testimony of Under Armour’s expert. See Ex. 1002 ¶¶ 81–82. Thus, we reject the notion that the toe area in Dufour is the same height as the heel area. Athalonz’s arguments with respect to the Rubin/Kim challenge generally follow those made with respect to the Dufour/Kim challenge. See Prelim. Resp. 47–55. Thus, we find them equally unpersuasive for the reasons discussed above.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,013,291 - PTAB · Jun 22, 2023 · IPR2023-00266 · APJ Sean P O’Hanlon · IPR · Institution
Instituted inter partes review of claims 1, 2, 8, 9, 13–16, 20–27, 29, and 30 on all proposed grounds; Petitioner showed a reasonable likelihood of prevailing on obviousness over Schugar and DeWaal.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“above factors. In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Fintiv, Paper 11 at 6. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),3 which provides several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (designated precedential in relevant part). Petitioner states that it “makes a Sotera-style stipulation not to pursue, in the co-pending proceeding district court proceeding, any argument that the Challenged Claims are invalid on any ground that was raised or could 3 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. have been reasonably raised in this IPR, should a Final Written Decision issue here.” Pet. 66.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (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 [the] challenged claims. Id. at 8.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 bears the burden of persuasion to prove unpatentability of each challenged claim by a preponderance of the evidence. 35 U.S.C. § 316(e). This burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition and Patent Owner’s Preliminary Response shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner’s arguments do not address the rationale for combining the reference teachings as set forth in the Petition. Petitioner does not propose to modify Schugar’s games to incorporate features of DeWaal’s games. Rather, Petitioner proposes to implement “Schugar’s method of conducting a sport wagering event on DeWaal’s system hardware and thin-client configuration.” Pet. 22–23. Schugar’s system is designed for games hosted by a casino, and Schugar contemplates coordination between multiple casinos through the use of shared databases. See, e.g., Ex. 1005 ¶¶ 19, 105. Schugar further discloses use of its system in pari-mutuel betting. Id. ¶ 126. Based on the current record, we find persuasive the evidence showing that using a centralized server is the most practical way to conduct such betting arrangements and reduce the risk of cheating. See Pet. 25–26; Ex. 1007 ¶¶ 78–79; Ex. 1004 ¶ 88. Although Patent Owner’s declarant testifies, “I don’t view Schugar’s teachings as requiring hardware, such as a central server, that supports a pari-mutuel pool” (Ex. 2001 ¶ 102), we accord little weight to this conclusory assertion. See 37 C.F.R. § 42.65(a).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,970,969 - PTAB · May 4, 2023 · IPR2022-01567 · APJ Charles J Boudreau · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on the obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“first General Plastic factor weighs against exercising our discretion to deny institution. In General Plastic, the petitioner filed a set of five follow-on petitions after its own earlier petitions for inter partes review of the same two patents were denied on the merits. Gen. Plastic, Paper 19 at 2–3. Petitioner here, as Patent Owner admits, has not previously filed any petition directed to the ’450 patent. Moreover, although General Plastic has not been limited to instances where multiple petitions are filed by the same petitioner (see, e.g., Valve, Paper 11 at 9 (stating that “when different petitioners challenge the same patent, we consider any relationship between those petitioners when weighing the General Plastic factors”)), we find no evidence of record in the present case that Petitioner shares any relationship with Dell. Unlike in Valve, in which the Board found a “substantial relationship” to exist between different petitioners where the earlier and later petitioners not only were co-defendants in district court litigation but the earlier petitioner’s accused products in the litigation incorporated technology licensed from the later petitioner, we find no evidence in the record before us of any similar relationship between Petitioner and Dell. We are not persuaded that Petitioner’s and Dell’s both being defendants in district court litigation involving the ’450 patent rises to the type of “significant relationship” described in Valve. Cf. Valve, Paper 11 at 10. This case also differs from Ericsson, where the Board found that a petitioner had “implicitly created” a relationship with earlier petitioners “by using the prior petitioners’ work as a menu and picking and choosing from their work product.” Ericsson, Paper 8 at 12. Notwithstanding Patent Owner’s citation of Ericsson (Prelim. Resp. 49), Petitioner here does not rely on prior art “pick[ed] and cho[sen]” from any earlier petitions. b. Whether, at the time of filing of the first petition, the petitioner knew of the prior art asserted in the second petition or should have known of it Patent Owner does not contend that Petitioner knew or should have known of the prior art asserted in the Petition at the time Dell filed the petition in IPR2021-01486. Indeed, it appears from the record that the ’450 patent had not yet been asserted against Petitioner as of the time Dell filed its petition in September 2021. See Paper 5, 3; Pet. 3 (identifying March 29, 2022, as filing date of first district court proceeding against Petitioner involving the ’450 patent). Unlike in Ericsson, where the petitioner picked and chose from among references previously cited in earlier petitions challenging claims of the same patent, the prior art asserted here by Petitioner was not cited in any prior petition for review of the ’450 patent. See Ericsson, Paper 8 at 12–13. And again, we find no evidence in the record of any significant relationship between Petitioner and Dell. Thus, whether Petitioner knew of, or should have known of, the prior art relied upon in this Petition at the time Dell filed its petition is of no import under this factor. For this reason, we determine that the second General Plastic factor does not weigh in favor of exercising our discretion to deny institution.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . 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 arguments and evidence presented, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute inter partes review of claims 1–18 of the ’450 patent on all asserted grounds. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Ex. 1003 ¶ 52; see also Pet. 18 (citing Ex. 1003 ¶¶ 52–53). Patent Owner does not provide its own assessment regarding the level of skill in the art, or otherwise dispute Dr. Wilson’s testimony. See generally Prelim. Resp.; see also Ex. 2001 ¶¶ 21–23 (Mr. Alberth acknowledging Dr. Wilson’s assessment and testifying that he “accept[s] Dr. Wilson’s proposed qualifications of a POSITA” for purposes of his Declaration). Based on our review of the record at this stage, we find Dr. Wilson’s assessment to be is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). Nonetheless, we further find that the qualifier “at least” before the number of years of academic or industry experience introduces unnecessary ambiguity into the assessment as it lacks any upper bound. Accordingly, we adopt Dr. Wilson’s assessment, minus the qualifier “at least,” for purposes of determining whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the parties’ arguments, we agree with Petitioner that no terms or phrases in the claims require express construction at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). First, regardless of whether we adopt Patent Owner’s construction of “time-frequency coordinate” as “one dimensional time-frequency coordinate,” we find, as discussed in more detail below, that at least Vijayan089 teaches such a one-dimensional time-frequency coordinate. See, e.g., infra § III.E.3.c. Second, we also conclude that we need not expressly construe the term “time-frequency resource unit.” See Prelim. Resp. 6. Notwithstanding Patent Owner’s contention that Petitioner’s district court co-defendants proposed a construction for that term in co-pending litigation, Patent Owner itself points out that “Petitioner has made no attempt to apply Defendants’ proposed litigation construction . . . for any of its grounds” in this proceeding. Id. at 6–7 (citing Pet. 44–48, 74– 80). Accordingly, we preliminarily find that the parties appear to agree that plain and ordinary meaning of “time-frequency resource unit” should apply in this proceeding. Nonetheless, we identify below a potential dispute with regard to the construction of the claim limitation “each unit containing a set of frequency subcarriers in a group of OFDM symbols” that is underdeveloped on the present record. See infra §§ III.E.3.c, III.F.3.c. The parties are advised to address the construction of that limitation in their briefing in the course of trial. D. Discretionary Denial Under 35 U.S.C. § 314(a)” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,447,450 - Nike, Inc. v. Valmarc CorporationInstitutedPTAB · Apr 18, 2023 · IPR2022-01404 · APJ Hyun J Jung · IPR · Institution
The Board instituted review of claims 1–34 on all petitioned grounds, finding a reasonable likelihood that Nike would prove at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is permitted, but never compelled, to institute an [inter partes review] proceeding.”). Pursuant to 35 U.S.C. § 325(d), in determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In evaluating the exercise of discretion to deny institution under § 325(d), the Board uses the following two-part framework: (1) determining 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, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–34 of the ’736 patent on all presented challenges. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, electrical industry experience working with coded symbologies and networked data systems.” Pet. 13 (citing Ex. 1007 ¶ 51). Petitioner also argues that “[a]n increase in experience could compensate for less education, and vice-versa.” Id. (citing Ex. 1007 ¶ 51). Patent Owner “reserves the right to dispute” Petitioner’s proposed level of ordinary skill, but argues that Petitioner’s arguments fail under its proposal. Prelim. Resp. 16 (citing Pet. 13). Patent Owner also states that it “believes that the definition of a [person of ordinary skill in the art] is not material to the outcome of this Petition.” Id. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Turning to the Specification, Patent Owner refers to a portion of the Specification that indicates that holographs may be “in the form of a self-adhesive decal” and are not effective because they can be counterfeited. Ex. 1004, 2:9–18. Another cited portion states that an object of the ’736 patent is to provide “a specially designed authenticator to be carried by an article.” Id. at 3:11–12. Other cited portions describe that “the Brand ‘source’ authenticator is a relatively thin, circular disk” (Ex. 1004, 4:18–21), and that authenticator blank 52 can be “of predetermined configuration, size and thickness” (id. at 5:59–60) and “is preferably fabricated from good quality steel or other metal, or combinations or compounds of metal” (id. at 5:67–6:2) (emphasis added). The ’736 patent states that “[c]eramics, glass, plastics and other materials, natural and/or synthetic, suitable to accept direct part markings of encoded symbology 58, may just as well be utilized for authenticator blanks 52.” Id. at 6:5–8. Patent Owner also refers to portions that state “[g]enerally encoded symbols, such as symbol 58, are so applied to a carrier strip such as a pressure sensitive label which could then be applied to authenticator 50” but “[i]t is preferable for the instant invention to apply symbology 58 by direct authenticator 50 “may just as well have its encoded symbology 58 applied onto a substrate and the substrate affixed to surface 54 of authenticator 50”), 10:43–46 (stating that “[w]hile symbology 58 is preferably direct part marked onto or into its surface 56 it may also be first applied to a substrate which is thereafter secured to surface 56 of authenticator blank 52”). As shown above, the Specification indicates that an “authenticator”” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,063,736
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.