- Google LLC v. Sandpiper CDN, LLCInstitutedPTAB · Nov 25, 2025 · IPR2025-00860 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Dilley, Pai, and Wang combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’573 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks. Work experience can substitute for formal education and additional formal education can substitute for work experience. Pet. 12 (citing Ex. 1006 ¶ 70). Patent Owner asserts that “the Board does not need to resolve the appropriate level of skill for a POSA [person of ordinary skill in the art] for purposes of deciding institution because the Petition fails under any articulation of a POSA.” Prelim Resp. 10. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’573 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that no claim terms need to be expressly construed by the Board and all terms should be given their ordinary meaning. Pet. 12. Patent Owner agrees that the Phillips standard applies. Prelim. Resp. 10. We determine that we need not expressly construe any claim terms at this juncture. 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))).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We consider the disclosures of the Provisional Application, which refer to cases 1 and 2, in which requests are redirected to an origin server for lower popularity content and to a parent server for medium popularity content at steps 522 and 524 as shown in Figure 5, respectively, wherein the edge server receives a redirect from the popularity service without a “followme” flag. See Ex. 1011 ¶¶ 43, 44. The Provisional Application also discloses that, by comparison, if there is a “follow-me” redirect sent to the edge server, it obtains and caches a resource as shown at step 528 for higher popularity content. Id. ¶ 44. On this record, as Patent Owner asserts, these disclosures are consistent with technical reasons provided in the Provisional Application for instructing the edge server not to cache unpopular resources. See Ex. 1011 ¶¶ 68–69. In light of these disclosures, we preliminarily find support for Dr. Shenoy’s testimony that, even with the words “instruction to not cache” are not literally recited in the Provisional Application, caching and not caching are alternative options that indicate the instruction to the edge server that will be implemented for each option. See Ex. 2014 ¶ 56. Further, these disclosures provide support for Dr. Shenoy’s testimony that the disclosures “reasonably convey to those skilled in the art that Patent Owner had possession of the edge server receiving an instruction to not cache the resource (and instead simply forward the redirect).” Id. In re Johnson states that “it is not true that the factual context out of which the question under § 112 arises is immaterial. Quite the contrary. Here, . . . the ‘written description’ in the [] specification supported the claims in the absence of the limitation, and that specification, having described the whole, necessarily described the part remaining.” See Johnson, 558 F.2d at 1019. This is consistent with M.P.E.P. § 2173.05(i) which states, “[i]f alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” M.P.E.P. § 2173.05(i). Further, “the failure of the specification to specifically mention a limitation that later appears in the claims is not a fatal one when one skilled in the art would recognize upon reading the specification that the new language reflects what the specification shows has been invented.” All Dental Prodx, LLC v. Advantage Dental Prod., Inc., 309 F.3d 774, 779 (Fed. Cir. 2002). Even though we do not discern that the Provisional Application explicitly discloses an “instruction to not cache,” at least on this preliminary record, and for the purposes of this Decision, there is positive recital of instructions to cache in the Provisional Application and Petitioner has provided sufficient supporting evidence that caching and not caching are alternative options. Further, there is sufficient evidence, in the context of the disclosures of written description support in the Provisional Application, providing support for Dr. Shenoy’s testimony that Patent Owner had possession of an edge server receiving an instruction to not cache the resource. Nonetheless, we invite additional briefing on these issues, including issues relating to alternative options of caching and not caching. On this preliminary record, we find that the ’573 patent has a priority date of April 2, 2008, which predates the earliest possible date on which Newton-471 could be effective as prior art, September 30, 2014 (the date on which the earliest application in the priority chain of Newton-471 was filed). Accordingly, we preliminarily find that Newton-471 is not prior art to the challenged claims. Thus, on the present record, Petitioner has not demonstrated a reasonable likelihood that it would prevail in showing that claims 1–20 are anticipated by Newton-471.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 10,924,573 - 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 - Silicon Motion Inc. v. K.Mizra, LLCInstitutedPTAB · Mar 5, 2025 · IPR2024-01241 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR of claims 1–2 and 4–15 on all petitioned grounds, finding a reasonable likelihood that claims 1 and 2, 4–7, and 9–15 are obvious over Johnson or Stubbs.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below, and based on the present record, we determine that Petitioner has demonstrated a reasonable likelihood that it will prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition. B.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of Ordinary Skill in the Art Petitioner asserts that one of ordinary skill in the art “would have at least a Bachelor’s degree in Electrical Engineering, Computer Engineering, or a related field, and 2-3 years of experience in memory system design,” or, alternatively, “a Master’s degree in one of those fields and 1-2 years of relevant experience.” Pet. 9 (citing Ex. 1003 ¶¶ 26–29). Patent Owner “does not contest Petitioner’s definition of a person of ordinary skill in the art, but it reserves the right to do so in the event that trial is instituted.” Prelim. Resp. 7. There being no present dispute, we adopt Petitioner’s formulation for purposes of this decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “that no construction is necessary for any terms for the purposes of this Petition as the challenged claims are invalid under any reasonable construction.” Pet. 9. Patent Owner states that “the Board need not construe any claim term in a particular manner to arrive at the conclusion that the Petition is substantively deficient.” Prelim. Resp. 7. 5 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. In view of the parties’ positions, we determine that we need not expressly construe any terms for purposes of this Decision.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“to combine Johnson and Moss is inadequate. See Prelim. Resp. 20–24. We tend to agree. In the “Motivation to Combine Johnson and Moss” section, the Petition first asserts that “Johnson and Moss are in the same field of endeavor,” which is insufficient without more to provide a motivation. See, e.g., Sisvel Int’l S.A. v. Sierra Wireless, Inc., 82 F.4th 1355, 1364 (Fed. Cir. 2023). The Petition then asserts that “[t]o provide enhanced flexibility, [one of ordinary skill in the art] in possession of Johnson would look to Moss to incorporate a plurality of delay elements to the data strobe signal.” Pet. 22. This is not persuasive because (a) Petitioner argues that Johnson already provides a plurality of delay elements, (b) Petitioner fails to explain where or how additional delay elements from Moss would be added to Johnson, and (c) Petitioner fails to explain how or why the modification would “provide enhanced flexibility,” or even what “enhanced flexibility” might mean in 9 “a first sampling circuit to sample the first delayed data signal based on the strobe signal” 10 “a second sampling circuit to sample the second delayed data signal based on the received strobe signal” this context. Petitioner also argues that “Moss further discloses that the size of the data path – i.e. the number of data pins in each data path – is a design choice well within the knowledge and ability of a POSITA, and expressly recites examples of 4, 8, and 16-bit wide data paths.” Pet. 23. We agree that varying the width of the data path would have been within level of ordinary skill and would have depended on the particular application, but the Petition fails to explain how or why that would have made it obvious to incorporate various elements of Moss into Johnson.” slip op. at 19
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,111,608 - PTAB · Feb 15, 2023 · IPR2022-01372 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 3, 4, 7, 16, 24–26, 29, 30, and 34–36 based on a reasonable likelihood of success on at least one anticipation challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA) would have had “a Bachelor of Science in mechanical or electrical engineering and 2–5 years of experience designing perforating gun systems.” Pet. 25. According to Petitioner, “the individual should be familiar with prior art methods of using gravity to orient the shaped charges in a rotatable charge tube.” Id. Petitioner further contends that “[p]ersons with different degrees may also have ordinary skill in the art, and increased education or experience could compensate for shortcomings in other areas.” Id. (citing Ex. 1003 ¶ 51). For purposes of the preliminary response, Patent Owner does not dispute Petitioner’s definition of a POSA. Prelim. Resp. 7–8. For purposes of this Decision, we apply Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art.” slip op. at 9
- Prior constructionTerm construed patent owner constructionDecided for patent owner
“In the related litigation, the district court ruled that the term “collar” has its “[p]lain and ordinary meaning” and “does not inherently require or restrict rotation.” Ex. 1008.7 Petitioner states that it does not contest this construction. Patent Owner asserts that, in the related litigation, the parties and their respective experts agreed that “a collar is an annular or ring-shaped structure.” Prelim. Resp. 8 (citing Ex. 1009, 2–3; Ex. 2001 ¶¶ 38–42). After reviewing the cited evidence and the ’762 Patent’s description of “outer collar 24” as having “annular side wall 62” (Ex. 1001, 7:59–63, Fig. 3), we agree with Patent Owner’s proposed construction for the term “collar” and apply it for purposes of this Decision.” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Patent Owner argues that “Yonghong contains no explicit disclosure of any component that could constitute a collar within the meaning of the ’762 Patent.” Prelim. Resp. 16 (citing Ex. 2001 ¶ 55). Patent Owner argues that Petitioner’s colorization of Yonghong Figure 1 is misleading, that Yonghong’s bushing 4 is not annular, and that “Yonghong’s depiction of the bushing is ambiguous at best.” Id. at 16–20. that, for purposes of institution, Petitioner makes a sufficient showing for the “collar” element of the claims. Petitioner identifies Yonghong’s bushing 4 as the recited “collar.” Based on the current record, we understand Yonghong as disclosing a charge tube assembly having a total of four bushings 4: two “at the connection of the shaft (3) and the sleeve (5)” between the charge tubes sections (of which there are three) and two more “at the charge tube shafts (6) at both ends.” Ex. 1004, 6, 8. Three of these bushings are shown in Yonghong Figure 1, even though only one of them is labeled with a reference numeral. The same is true for bearing seat 7. Furthermore, Yonghong Figure 1 appears to show annular structures, including bushing 4, with one quarter of the annular structure cut away to show a longitudinal cross section on the upper half of each of the upper and lower parts of the drawing. Accordingly, on this record, we do not find that Petitioner’s colorization of Yonghong Figure 1 is misleading. Although the figure does not clearly delineate between bushing 4 and bearing seat 7, Patent Owner does not rely on this lack of clarity in the drawing, nor do we view it as a reason to deny institution. 3. Remaining Elements of Challenged Claims At this stage of the proceeding, Patent Owner does not contest Petitioner’s showing for the remaining limitations of claims 3, 7, 24–26, 29, 30, and 34–36. We determine that, for purposes of institution, Petitioner shows sufficiently that at least claim 24 is anticipated by Yonghong.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,078,762 - Grit Energy Solutions, LLC v. Oren Technologies, LLCRehearing deniedPTAB · Jan 10, 2020 · IPR2017-01917 · APJ Michael L Woods · IPR · Rehearing
The Board denied rehearing and confirmed that claim 13 was not shown unpatentable under §103 because the asserted safety factor was speculative and unsupported.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and 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 its papers. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 3
- Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner
“based on speculation and entitled to little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (according little weight to broad conclusory statements in expert testimony); Gorelik v. Holder, 339 F. App’x 70, 73 (2d Cir. 2009) (noting that “little weight” should be given to an expert’s testimony where the expert’s reasoning is “speculative”); Jenkins v. Astrue, 250 F. App’x 645, 647 (5th Cir. 2007) (holding that “hypothetical testimony” by a vocational expert, which is unsupported by the evidence, may be properly disregarded). Smith is a patent document, not an engineering specification, and does not mention any safety factor, let alone one that is at least 1.15. We credit Mr. Smith’s testimony that confirms this fact. See, e.g., Ex. 2049 ¶ 139 (“Smith is silent about whether his containers are designed with any safety factor, let alone something as specific as Dr. Wooley’s assumed 1.15”) (citing Ex. 2048, 145:25–146:3). Simply because Dr. Wooley testifies that Smith has a safety factor does not make it true. See Trial Practice Guide Update, 5 (August 2018) (“[E]xpert testimony . . . is not a substitute for disclosure in a prior art reference itself.”). We are mindful not to read into Smith that which is not disclosed; such hindsight bias has no role in an obviousness analysis.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“that Smith’s “sidewalls have a rigidity suitable for retaining no less than about 30,000 pounds of proppant when positioned therein,” as recited in claim 13. Ex. 1002, 10:14–17. “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). Petitioner did not meet its burden. In support of its “safety factor” argument, Petitioner relies on Dr. Wooley’s testimony that Smith has a safety factor of at least 1.15. See Pet. 70 (citing in relevant part Ex. 1001 ¶ 181); see also supra Part II.b. Dr. Wooley’s testimony regarding Smith’s safety factor, however, is based on speculation and entitled to little weight. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (according little weight to broad conclusory statements in expert testimony); Gorelik v. Holder, 339 F. App’x 70, 73 (2d Cir. 2009) (noting that “little weight” should be given to an expert’s testimony where the expert’s reasoning is “speculative”); Jenkins v. Astrue, 250 F. App’x 645, 647 (5th Cir. 2007) (holding that “hypothetical testimony” by a vocational expert, which is unsupported by the evidence, may be properly disregarded). Smith is a patent document, not an engineering specification, and does not mention any safety factor, let alone one that is at least 1.15. We credit Mr. Smith’s testimony that confirms this fact. See, e.g., Ex. 2049 ¶ 139 (“Smith is silent about whether his containers are designed with any safety factor, let alone something as specific as Dr. Wooley’s assumed 1.15”) (citing Ex. 2048, 145:25–146:3). Simply because Dr. Wooley testifies that Smith has a safety factor does not make it true. See Trial Practice Guide Update, 5 (August 2018) (“[E]xpert testimony . . . is not a substitute for disclosure in a prior art reference itself.”). We are mindful not to read into Smith that which is not disclosed; such hindsight bias has no role in an obviousness analysis.” slip op. at 7
§ 103 obviousnessPatents in suitUS 9,296,518 - Valve Corporation v. Ironburg Inventions Ltd.Rehearing deniedPTAB · Oct 30, 2019 · IPR2017-01928 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied Valve’s rehearing request, leaving claims 1–24 not shown unpatentable because Valve did not establish that Burns was a prior art printed publication.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“party challenging the decision. The request 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.” 37 C.F.R. § 42.71(d). Therefore, Valve must demonstrate that we misapprehended or overlooked matters previously argued and specifically identify the location in its papers at which it made the argument that we misapprehended or overlooked in order to justify modifying our Final Decision. It has failed to do so. Instead, Valve asks us to reconsider and reweigh evidence and” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“As explained in detail, in our Final Decision, we do not consider Exhibit 1003 to be the same as the document accessible using the 1 The cited pages of Exhibit 1040 (pp. 171–179) refer to a copy of the Burns article provided by the Examiner during prosecution of an unrelated but commonly owned patent that appears to have been retrieved from the “Wayback Machine” web archive. See Ex. 1040, 172 (referring to “WAYBACK MACHINE”). However, neither the cited pages nor the Examiner’s Notice of References Cited lists the Webarchive URL. See id. at 165, 171–179 (listing only URL to xboxer360.com domain as source of Burns article). Webarchive URL. Final Dec. 17–29. The URL listed on Exhibit 1003 refers to a URL on the xboxer360.com domain, not the Webarchive URL on the web.archive.org domain. Ex. 1003, 1–10. Contrary to Valve’s contentions otherwise, URLs are not prior art materials themselves, but merely addresses that might permit a user to access information via the internet. Valve also wholly fails to identify any specific argument or evidence that it advanced during the trial that we misapprehended or overlooked in reaching our decision on the issue of whether Valve had proven that Exhibit 1003 was a prior art printed publication.” slip op. at 4
- ExcludeNot reached
“Ironburg filed a Motion to Exclude Evidence (Paper 30, “Mot.” or “Motion”). Valve opposed the Motion (Paper 31, “Opp.” or “Opposition”). Ironburg filed a Reply in support of the Motion (Paper 32, “Mot. Reply”).” slip op. at 3
§ 102 anticipationPatents in suitUS 9,352,229 - Grit Energy Solutions, LLC v. Oren Technologies, LLCRehearing deniedPTAB · Aug 7, 2018 · IPR2017-00768 · APJ Michael L Woods · IPR · Rehearing
The Board denied the petitioner’s rehearing request, leaving intact its conclusion that claims 1–7 were not shown unpatentable under the instituted grounds.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“the burden of showing a decision should be modified, and 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 its papers. 37 C.F.R. § 42.71(d). Therefore, Petitioner bears the burden of establishing that we misapprehended or overlooked the matters that it requests that we review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“we found that “for at least the following two reasons, we disagree[d] with Petitioner’s argument that transposing Eng Soon’s pin and receptacle would have been a simple substitution to achieve predictable results.” Final Dec. 22 (citations omitted) (emphasis added). In other words, even if we found that Constantin discloses an orifice or receptacle attached to its actuator—which we do not—we also found that transposing Eng Soon’s pin and receptacle as proposed by Petitioner would result in a more expensive system, and we disagreed with Petitioner’s assertion that modifying Eng Soon would have been a mere simple substitution. See Final Dec. 24 (“we agree with Mr. Smith that a POSITA would not modify Eng Soon to ‘reduce cost,’ as Petitioner proposes . . ., when doing so would increase the overall cost of the mobile containers”) (citing Ex. 2040 ¶ 76). Moreover, even if we treat Petitioner’s First Rationale as separate from its Second Rationale—thereby ignoring the Second Rationale when considering the First Rationale—when considered alone, Petitioner’s First Rationale fails to explain adequately why a POSITA would have transposed Eng Soon’s pin and receptacle. See Pet. 53–54. It is not enough to state that “[Eng Soon’s] pin and receptacle perform the same function to achieve the same result, regardless of their position, [and that] a POSITA would have been able to make the swap.” Reh’g Req. 11; see also Pet. 53–54 (“A POSITA reading Constantin would understand that there is no functional difference between these configurations”). In other words, it is not enough to argue that a POSITA could modify Eng Soon in a manner that meets the claims, without adequately explaining why a POSITA would make the modifications. See Personal Web Techs. LLC v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017) (finding that a skilled artisan would have understood that prior art could be combined insufficient; “it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention”). Indeed, we found that the proposed modification would result in a more expensive system. See Final Dec. 24.” slip op. at 9
- BurdenDecided for patent owner
“all challenged claims (claims 1–7) under all grounds, namely, Grounds 1 and 2.” Final Dec. 2. Indeed, the Petition sets forth only two grounds; Ground 1 challenging claims 1–3 and 5, and Ground 2 challenging claims 4, 6, and 7. Pet. 6 (Statutory Grounds of Challenge). In our Final Written Decision, we determined that Petitioner failed to meet its burden that any of the challenged claims are unpatentable. Final Dec. 2–3. In particular, we found that Constantin does not disclose an orifice attached to an actuator and concluded that a POSITA would not have modified Eng Soon as Petitioner proposed. See id. at 17–25. We find nothing in Petitioner’s “G1Constantinbased challenges” that cures these fatal defects. Moreover, Petitioner’s statement in footnote 5 that certain “aspects” of Eng Soon and Constantin can somehow be “vice-versa” swapped with other “aspects” fails to rise to the specificity and particularity required under 35 U.S.C § 312(a)(3) and 37 C.F.R. § 42.104(b). The function of the Board is not to comb through the cited art in order to determine the strongest combination of references to meet the claims, thereby overcoming whatever deficiencies may exist in the Petition. See generally LG Elecs., Inc. v. Rosetta-Wireless Corp., Case IPR2016-01516 (PTAB Apr. 3, 2017) (Paper 25).” slip op. at 11
§ 103 obviousnessPatents in suitUS 8,585,341 - Valve Corporation v. Ironburg Inventions Ltd.Rehearing deniedPTAB · Jan 26, 2018 · IPR2016-00948 · APJ Phillip J Kauffman · IPR · Rehearing
The Board denied Valve’s rehearing request and maintained its determination that claims 1–11, 13, 16, and 17 were not shown obvious over Enright and Tosaki.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“Written Decision (Paper 44, “Decision,” or “Dec.”) in this case. Paper 45 (“Reh’g Req.”). Specifically, Petitioner asks that we: (1) reconsider and adopt the construction of “flexible” proposed in the Petition, (2) consider Section IV.D. of the Petitioner’s Reply, (3) determine that claims 1–11, 13, 16, and 17 are obvious over Enright and Tosaki, and (4) correct three typographical errors.1 Id. at 1.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Petitioner asks that we deviate from the ordinary meaning of “flexible,” yet neither identifies a lexicographical definition nor alleges that the prosecution history warrants such a deviation. See Resp. 1–2, 4–5 (pointing out that Petitioner’s attempt to deviate from ordinary meaning is not well supported); see also Reply 2 (contending that the broadest reasonable interpretation of “flexible” is broader than its ordinary meaning, but not providing a reason for departing from ordinary meaning). Further, Petitioner’s suggestion that the ordinary meaning of a claim term must be expressly stated in the disclosure is incorrect and does not warrant deviation from the ordinary meaning of a term. The proper inquiry, as applied in both our Institution Decision and our Final Written Decision, is whether the ordinary meaning of a claim term is consistent with the specification. See Dec. 36–37; Paper 10, 13–14; In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (the words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification); Resp. 7. Second, Petitioner agrees that “inherently resilient” as claimed means that the elongate member will return to its unbiased position when not under load. Being capable of returning to an unbiased position when not under load of necessity includes being capable of being moved to a biased position under load. In other words, inherent resiliency requires that the elongate member may be moved to a biased position under load and then returns to an unbiased position when not under load. Inherent resiliency and flexibility as claimed are different characteristics. For example, an elongate member formed of hard plastic that could be biased/displaced by a user’s finger to activate a switch mechanism and then return to an unbiased position would be inherently resilient. That same elongate member formed of hard plastic would not itself bend or flex, and therefore would not be flexible as required by claim 1.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“correspond to elongate members as claimed, then in the Reply, Petitioner changes the theory to allege that it would have been obvious to modify Enright’s switches to be flexible as claimed. Compare Pet. 34–35 to Pet. Reply 15. We do not consider this contention because Patent Owner was not afforded notice and opportunity to respond to this new theory of unpatentability. See generally Genzyme Therapeutic Prods. Ltd. V. Biomarin Pharm. Inc., 825 F.3d 1360, 1366–1367 (Fed. Cir. 2016) (determining that the Administrative Procedure Act and due process require notice to a party and the opportunity to submit facts and argument); see also Intelligent Bio- Ays. V. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’” [as required by 35 U.S.C. § 312(a)(3)]); 37 C.F.R. § 42.104(b)(2).” slip op. at 9
- Strike new argumentNew argument disregardedDecided for patent owner
“In the Petition, Petitioner alleges that Enright’s switches 32, 34 correspond to elongate members as claimed, then in the Reply, Petitioner changes the theory to allege that it would have been obvious to modify Enright’s switches to be flexible as claimed. Compare Pet. 34–35 to Pet. Reply 15. We do not consider this contention because Patent Owner was not afforded notice and opportunity to respond to this new theory of unpatentability. See generally Genzyme Therapeutic Prods. Ltd. V. Biomarin Pharm. Inc., 825 F.3d 1360, 1366–1367 (Fed. Cir. 2016) (determining that the Administrative Procedure Act and due process require notice to a party and the opportunity to submit facts and argument); see also Intelligent Bio- Ays. V. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim’” [as required by 35 U.S.C. § 312(a)(3)]); 37 C.F.R. § 42.104(b)(2). 3 Petitioner’s Reply refers to the ground of unpatentability based on Enright, Tosaki, and Oelsch, but Petitioner has not requested that we reconsider that portion of our Final Written Decision. See Pet. Reply 15; Reh’g Req. 1 (seeking reconsideration of the ground of unpatentability based Enright and Tosaki).” slip op. at 9
Claim construction§ 103 obviousnessPatents in suitUS 8,641,525 - NHK Seating Of America, Inc. v. Lear CorporationRehearing deniedPTAB · Sep 23, 2016 · IPR2014-00925 · APJ Mitchell G Weatherly · IPR · Rehearing
The Board denied NHK’s rehearing request, leaving claim 2 not shown unpatentable because NHK did not establish that the asserted tab extended from the identified transfer member or upper armature.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“NHK’s argument for rehearing is unpersuasive even if we were to agree with NHK’s argument that the eyebolt is a “tab.” At trial, NHK failed to establish that the eyebolt extends from cable 6a of DE ’017, which is the structure that NHK identified in its Reply as the claimed transfer member. Reply 23.1 NHK also failed to establish that the eyebolt extends from any structure that NHK equated to the claimed upper armature. In our Final Written Decision, we determined that claim 2 requires that the claimed tab must “extend outward from one or the other of the transfer member and the upper armature.” Final Dec. 23. Because NHK 1 NHK shifted positions again in its Reply in Support of its Request for Rehearing regarding the element in the prior art that constitutes the claimed transfer member when it identified “bowden cable arrangement 6” of DE ’017 as the transfer member. Reh’g Reply 2. A Request for Rehearing is not a proper vehicle for introducing argument or evidence that was not presented at trial. See 37 C.F.R. § 42.71(d) (limiting requests for rehearing to those matters that were “previously addressed in a motion, an opposition, or a reply” during trial). Accordingly, we do not consider NHK’s new argument properly to be before us. failed at trial to demonstrate how the eyebolt meets this requirement of claim 2, we deny the Request for Rehearing.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“NHK’s argument for rehearing is unpersuasive even if we were to agree with NHK’s argument that the eyebolt is a “tab.” At trial, NHK failed to establish that the eyebolt extends from cable 6a of DE ’017, which is the structure that NHK identified in its Reply as the claimed transfer member. Reply 23.1 NHK also failed to establish that the eyebolt extends from any structure that NHK equated to the claimed upper armature. In our Final Written Decision, we determined that claim 2 requires that the claimed tab must “extend outward from one or the other of the transfer member and the upper armature.” Final Dec. 23. Because NHK 1 NHK shifted positions again in its Reply in Support of its Request for Rehearing regarding the element in the prior art that constitutes the claimed transfer member when it identified “bowden cable arrangement 6” of DE ’017 as the transfer member. Reh’g Reply 2. A Request for Rehearing is not a proper vehicle for introducing argument or evidence that was not presented at trial. See 37 C.F.R. § 42.71(d) (limiting requests for rehearing to those matters that were “previously addressed in a motion, an opposition, or a reply” during trial). Accordingly, we do not consider NHK’s new argument properly to be before us. failed at trial to demonstrate how the eyebolt meets this requirement of claim 2, we deny the Request for Rehearing.” slip op. at 4
- Strike new argumentNew argument disregardedOther
§ 103 obviousnessPatents in suitUS 8,434,818
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.