• Sterlite Technologies Inc. v. Afl Telecommunications, LLC.Institution denied
  PTAB · Apr 9, 2025 · IPR2025-00127 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–4, 8, or 13 were unpatentable over either proposed obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art As noted above, resolving the question of obviousness requires determination of the level of ordinary skill in the art. Graham, 383 U.S. at 17–18. Here, however, as Patent Owner observes (Prelim. Resp. 10), 8 Patent Owner does not present arguments or evidence of secondary considerations in its Preliminary Response. Therefore, secondary considerations do not constitute part of our analysis herein. Petitioner has provided no assessment as to the level of ordinary skill to be considered in evaluating the grounds of obviousness that are advanced by Petitioner. The absence of such assessment calls into question the fundamental adequacy of Petitioner in carrying its burden to show a reasonable likelihood of success of unpatentability of the challenged claims that necessarily must take into account the level of ordinary skill in the art.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In any event, we do not discern that there is any apparent dispute between the parties as to the meaning of any claim term. In considering the record at hand, we determine that it is unnecessary to make explicit, or further address, any claim term in deciding whether or not to institute trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the 9 Throughout their briefings, the parties refer to the limitations designated [1.1] through [1.7] using the term “element,” e.g., “element [1.7]” (see, e.g., Pet. 23; Prelim. Resp. 23). For consistency with the parties’ chosen nomenclature, we do the same in this Decision. controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “A POSITA would have been motivated to modify Summers’ fiber optic cable 50 to include Kaji’s intermittently-fixed optical fiber tape 2A to obtain the predictable result of enabling a higher density of optical fibers to be packed in Summers’ fiber optic cable 50, as contemplated by Kaji. *** a POSITA would have had a reasonable expectation of success because such modification would amount to nothing more than a simple substitution of Summers’ four-fiber ribbons 52 with Kaji’s intermittently-fixed optical fiber tape 2A by known methods of cable manufacturing. ***” slip op. at 20

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,287,591
• Ewald Dörken AG v. Schaeffler Technology AG & Co. KG.Institution denied
  PTAB · Feb 20, 2025 · IPR2024-01365 · APJ James J Mayberry · IPR · Institution

  The Board denied institution on all three obviousness grounds because the Petition did not show a reasonable likelihood of prevailing on claims 1–7.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024) (permitting the Board to institute trial on behalf of the Director). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner contends that “[a] person having ordinary skill in the art (‘POSITA’) would have been a person having, as of 21 July 2017: (1) at least an undergraduate degree in engineering and/or material science, or similar education; and (2) two or more years of experience with coatings.” Pet. 7–8; see Ex. 1009 ¶ 25 (providing the same level of ordinary skill). Patent Owner does not dispute Petitioner’s level of ordinary skill in the art. Prelim. Resp. 5. We apply Petitioner’s definition of the level of ordinary skill in the art. We determine that this definition is consistent with the prior art of record and the skill reflected in the Specification of the ’756 patent, based on our review of the record.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededOther

    “Petitioner submits that . . . the claims should be given their plain and ordinary meaning.” Pet. 11. Patent Owner does not propose any specific constructions. See Prelim. Resp. 4–5.8 We determine that we need not expressly construe any other claim terms to resolve the parties’ disputes on the current record. 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.’” (emphasis added)) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). To the extent that the scope of any other claim term requires discussion, however, we provide it in our assessment of the challenges, which we turn to next. slip op. at 11

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Ex. 1003 ¶¶ 18–19. Petitioner provides no additional discussion on this disclosure, including how it satisfies the zinc flake coating limitation. See Pet. 15–17, 20. Petitioner’s sole citation to Dr. Haber’s declaration associated with this claim limitation is to paragraph 35, which provides the same claim chart as is in the Petition. See Pet. 17; Ex. 1009 ¶ 35.” slip op. at 12

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,098,756
• Alivecor, Inc. v. Apple Inc.Some claims unpatentable
  PTAB · Dec 23, 2024 · IPR2023-00950 · APJ Josiah C Cocks · IPR · Final written decision

  Claims 1–14 were not shown unpatentable; claims 15–22 were shown unpatentable over Markel. The revised contingent motion to amend was dismissed as moot.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “In carefully and faithfully wrangling the parties’ views and explanation as to the meaning of limitation [1.c.iii], we conclude that Petitioner’s “correct interpretation” of that limitation is that a first pad is recognized as a distinct structure or component from a first portion of an enclosure, and that the pad is positioned underneath that first portion in a manner such that the pad is concealed from a user. We adopt that interpretation. We determine that it is unnecessary to discuss an express construction for any other term to resolve this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Nevertheless, our analysis and the end result are the same under either proposed definition.” slip op. at 13

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 33

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableMotivation not foundNot shown unpatentable

    “Petitioner does not appear to disagree that Markel, itself, does not convey that an electrode, or any structure identifiable as a “pad,” is positioned underneath any surface of any enclosure. Rather, Petitioner’s theory of unpatentability is premised on modification of Markel to so position such a pad. Although seemingly acknowledging that Markel contemplates a concealment technique involving molding an electrode into an exterior surface, Petitioner extrapolates from that disclosure that a skilled artisan would be motivated to try an alternative means of concealing an electrode pad by placing the pad underneath an outer layer or portion, i.e., “audio output portion 610.” See Pet. 20 (citing Ex. 1003 ¶ 135). Neither Petitioner, nor Dr. Kenny, however, meaningfully explains why a skilled artisan would have deviated from Markel’s express teachings of concealing an electrode via molding techniques to then arrive at an entirely different concealment approach of placing an electrode pad underneath the audio output portion. Petitioner’s modification proposal in that regard appears borne of hindsight bias based on the disclosure of the ’257 patent rather than any dutiful consideration of what Markel’s actual teachings would have conveyed to a skilled artisan. See Ex. 2004 ¶ 84 (Dr. Kenny explaining why Petitioner’s proposed modification to Markel to hide the electrode underneath a plastic conductive layer was based on improper hindsight). Such hindsight bias is impermissible. See, e.g., Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). Patent Owner makes a more persuasive case as to what a person of ordinary skill in the art reasonably would have understood from Markel’s disclosure. In particular, we agree with Patent Owner that the record before us readily conveys that a skilled artisan would have followed Markel’s practice of forming or molding electrodes from conductive plastic rather than locating a separate electrode component underneath a conductive plaster layer. See, e.g., PO Resp. 30–31 (“[a] POSITA would find nothing in cited portions of Markel to inform or encourage placement of an electrode underneath an exterior layer.”). Indeed, as Patent Owner articulates, Petitioner “fails to provide any reasoning as to why a POSITA would have found Markel’s method of concealment to be deficient, or why a POSITA would have been motivated in light of Markel’s manner of concealment to nevertheless place an electrode underneath the exterior portion of the device.” Id. To that end, we credit Dr. Kenny’s supporting testimony as consistent with Markel’s express teachings. See, e.g., Ex. 2001 ¶¶ 77–83; Ex. 2004 ¶¶ 81–88. We credit that testimony over the countervailing testimony of Petitioner’s declarant, Dr. Berger (see, e.g., Ex. 1003 ¶¶ 122, 135–139), as we agree with Patent Owner that Dr. Berger’s testimony “is not supported by Markel’s actual disclosures.” PO Resp. 31.” slip op. at 32

  Patent outcomesUS 10,076,257 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,076,257
• Elmos Semiconductor SE v. Texas Instruments IncorporatedInstitution denied
  PTAB · Nov 5, 2024 · IPR2024-00802 · APJ Bach V Hoang · IPR · Institution

  The Board denied institution because Petitioner failed to show a reasonable likelihood that any of claims 1–20 would be unpatentable on any asserted obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “An inter partes review may not be instituted unless “the information presented in the petition . . . 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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner asserts that “a person having ordinary skill in the art (‘POSITA’) at the relevant time, would have had at least a bachelor’s degree in electrical engineering, or equivalent experience of at least two years working in the field of the design electrical driver systems for Light Emitting Diodes (LEDs).” Pet. 20. Patent Owner has not addressed the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as articulated above. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ432 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Based on the record before us, we do not find it necessary to expressly construe any claim terms or phrases to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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))). Petitioner’s constructions do not affect our determinations, and, even under Petitioner’s constructions, Petitioner fails to show a reasonable likelihood of success with respect to its proposed grounds of unpatentability for the challenged claims of the ’432 Patent.” slip op. at 10

  • BurdenNot shown unpatentable

    “First, even under Petitioner’s assertion that “controller RG . . . performs the functions of an error amplifier and amplifier output stage” (id. at 37), Petitioner has not adequately shown that controller RG meets all three of “an error amplifier,” “a control voltage,” and “an amplifier output stage.” Petitioner’s assertions that those elements are “interior to” or “include[d]” in controller RG are conclusory and unsupported. Petitioner summarizes and reproduces portions of Sudhaus regarding the output currents of controller RG, but has not explained the relevance of its summary and reproduction with respect to each recited claim element. See id. at 37–38 (citing Ex. 1005, 2:32–33, 4:25–28, 4:46–50, 8:47–55), 40– 41. Nor has Petitioner explained why or how the summarized or reproduced portions of Sudhaus show that those claim elements are interior or included in controller RG. See id. Further, Petitioner also fails to show how Sudhaus teaches the claimed interactions and relations between the error amplifier, control voltage, and amplifier output stage. The claim recites the error amplifier compares voltages to “generate a control voltage” and the amplifier output stage controls output current “based on the control voltage.” Petitioner has not explained what specific signal controller RG generates that teaches a “control voltage” used to control output current. Nor has Petitioner stated, let alone explained how, controller RG generates a control voltage in the claimed manner and controls output current based on that control voltage. Simply because controller RG produces outputs that are allegedly similar to the claimed outputs does not by itself show that controller RG produces the claimed outputs using the claimed elements in the claimed manner.” slip op. at 16

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 11,653,432
• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Oct 15, 2024 · IPR2023-00745 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4 and 8–22 were not shown unpatentable because Mills did not disclose the required embedded structure and Markel combined with Mills did not teach it; the revised motion to amend was dismissed as moot.

  RulingsFinal written decision

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached

    “Patent Owner’s Revised Contingent Motion to Amend asserts that in “the event the Board finds at least one challenged [Revised Motion to Amend] claim unpatentable, [Patent Owner] respectfully requests that the Board grant this Motion with respect to the corresponding proposed substitute claim(s).” Paper 27, 1. Because we determine that Petitioner has not established that any of the challenged claims 1–4 and 8–22 are unpatentable, Patent Owner’s Revised Contingent Motion to Amend is moot.” slip op. at 61

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. Patent Owner’s proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. We adopt Petitioner’s level of the level of ordinary skill in art because it is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). Our analysis and the end result are the same under either proposed definition.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “structure where a lead is embedded in a portion of the enclosure from other embodiments where a lead is merely positioned against or in parallel contact with a portion of the enclosure. See Ex. 2003 ¶¶ 36–37. The Specification describes distinct embodiments such as “lead 472 of the heart sensor can be positioned against the back surface of bezel 460,” or “[a]lternatively, lead 472 can be placed within the thickness of bezel 460 (e.g., in a pocket within the bezel wall), but underneath the outer surface of the bezel.” Ex. 9:44–48. We agree with Patent Owner, and Dr. Kenny, that “[t]his passage distinguishes a lead that is embedded in a portion of the enclosure from a lead that is merely ‘positioned against’ or in parallel contact with a portion of the enclosure.” PO Resp. 6–7 (citing Ex. 2003 ¶¶ 33–35). See also Ex. 2008, 31:10–33:18, 109:18–110:19 (Petitioner’s expert, Mr. Oslan, suggesting that a first component or object in parallel contact with and positioned under a second component or object would not necessarily indicate that the first component or object is embedded in the second component or object). Similarly, we also agree that “the claims of the ’257 use the term ‘embedded in’ while also using the word ‘embedded’ in other contexts, which” indicates distinct claim scope for “the term ‘embedded in,’” versus “the broader term ‘embedded.’” Ex. 2003 ¶ 38. For instance, claim 9 distinctly requires “embedded with,” which is a broader term that, according to Dr. Kenny, encompasses embodiments where a lead may be adjacent/parallel to the first portion of the enclosure. Id.” slip op. at 18

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “under the exterior of the first portion” (see Pet. 21–22, 24–25; Pet. Reply 4); and (3) leaf spring 62 is embedded in housing 12 and electrode 14 (see Pet. 22–24). None of Petitioner’s mappings disclose every element of claim 1 and Petitioner improperly jumps between these various mappings without fully examining a single mapping for each and every limitation of claim 1. See Pet. 18–25. In essence, Petitioner invites the Board to piece together a single theory that meets all claim elements from these disparate theories that each require distinct structure within Mills. See Amazon.com, Inc., et al. v. Avago Technologies General IP (Singapore) PTE. LTD., IPR2017-01112, Paper 11, at 13 (PTAB Aug. 23, 2017) (“Petitioner is inviting us to assume the role of archeologist of the record, which invitation we decline.”).” slip op. at 36

  Patent outcomesUS 10,076,257 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,076,257
• New Balance Athletics, Inc. v. Nike, Inc.Institution denied
  PTAB · Sep 26, 2024 · IPR2024-00778 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood of prevailing on any challenged claim: Clark and Mills each failed to disclose required limitations.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2

  • BurdenDecided for patent owner

    “in a continuous fashion, as shown in Figure 5, and this will include the portion that will be used for the upper (the textile element) and the material that is trimmed away (the surrounding textile structure)” (citing Ex. 1003 ¶¶ 124–125)). Notably absent, however, from the above-identified portions of the Petition and testimony of Dr. Bookstein is any reference to material that is “trimmed away” or why any such material is regarded as surrounding a textile element, or any other component of Clark. In a later portion of the Petition addressing the second clause of limitation 1a, Petitioner makes reference to Clark’s column 4, lines 61 through 66, as disclosing a “trimming process.” Pet. 23–24 (citing Ex, 1003 ¶ 128). That portion of Clark generally expresses that “the exposed edge of the upper may be trimmed in any desired outline . . . and the trimmed edge may be bound or finished as desired.” E. 1004, 4:61–66. We agree with Patent Owner that, to the extent Petitioner and Dr. Brookstein rely on that portion of Clark to account for the first clause of limitation 1a, Petitioner does not meaningfully explain why Clark’s disclosure of “the potential trimming of an ‘exposed edge’ (singular)” of any textile element means that the textile element is regarded as “hav[ing] been knitted with a surrounding textile structure.” See Prelim. Resp. 15–16 (citing Ex. 2003 ¶ 38). We credit Dr. Pastore’s testimony to that end, over that of Dr. Brookstein (see, e.g., Ex. 1003 ¶ 128), as we find that Dr. Pastore’s testimony is more consistent with Clark’s actual disclosure and what it would have conveyed to one of ordinary skill in the art.” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner states, “[f]or purposes of this Preliminary Response only, Nike applies New Balance’s proposed level of skill in the art.” Prelim. Resp. 13. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’749 patent and the asserted prior art, and we apply it in our patentability evaluations below.” slip op. at 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “in a continuous fashion, as shown in Figure 5, and this will include the portion that will be used for the upper (the textile element) and the material that is trimmed away (the surrounding textile structure)” (citing Ex. 1003 ¶¶ 124–125)). Notably absent, however, from the above-identified portions of the Petition and testimony of Dr. Bookstein is any reference to material that is “trimmed away” or why any such material is regarded as surrounding a textile element, or any other component of Clark. In a later portion of the Petition addressing the second clause of limitation 1a, Petitioner makes reference to Clark’s column 4, lines 61 through 66, as disclosing a “trimming process.” Pet. 23–24 (citing Ex, 1003 ¶ 128). That portion of Clark generally expresses that “the exposed edge of the upper may be trimmed in any desired outline . . . and the trimmed edge may be bound or finished as desired.” E. 1004, 4:61–66. We agree with Patent Owner that, to the extent Petitioner and Dr. Brookstein rely on that portion of Clark to account for the first clause of limitation 1a, Petitioner does not meaningfully explain why Clark’s disclosure of “the potential trimming of an ‘exposed edge’ (singular)” of any textile element means that the textile element is regarded as “hav[ing] been knitted with a surrounding textile structure.” See Prelim. Resp. 15–16 (citing Ex. 2003 ¶ 38). We credit Dr. Pastore’s testimony to that end, over that of Dr. Brookstein (see, e.g., Ex. 1003 ¶ 128), as we find that Dr. Pastore’s testimony is more consistent with Clark’s actual disclosure and what it would have conveyed to one of ordinary skill in the art.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,266,749
• Fervo Energy Co. v. Ormat Technologies Inc.Institution denied
  PTAB · Sep 18, 2024 · IPR2024-00665 · APJ Josiah C Cocks · IPR · Institution

  Institution denied because Petitioner failed to show a reasonable likelihood of proving any challenged claim unpatentable under the proposed obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “II. ANALYSIS A. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a).” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends the following assessment in connection with a person of ordinary skill in the art: The Challenged Claims pertain to a method of recovering geothermal heat. However, “[m]any of the techniques are derived from oil and gas industry.” EX1001 at 4:23-24. Accordingly, here, a person of ordinary skill in the art (“POSITA”) is a person with a Bachelor’s degree, Master’s degree, and/or Ph.D. in Chemical Engineering, Petroleum Engineering, Energy Resource Engineering, or the like, or at least five years of experience engineering, drilling, and constructing wells. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could also have met the relevant standard for a POSITA. Pet. 16–17 (citing Ex. 1004 ¶¶ 34–36). Patent Owner does not offer its own assessment of a POSITA. For purpose of this Decision, we adopt Petitioner’s assessment.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther

    “own for any claim term. Patent Owner does, however, note that “claim element 9c[13] includes the terms ‘means for,’ which are presumed to invoke 13 The referenced “claim element 9c” reads in-part “Means for producing a water density difference and a pressure difference between said first means-plus-function treatment under Section 112.” Prelim. Resp. 17 (citing Samsung Electronics Co., Ltd. v. Power2B Inc., IPR2022-01378, Paper 12 at 11 (PTAB Mar. 15, 2023) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part))). Patent Owner further submits that “[u]nder Rule 104(b)(3),[14] Petitioner had an obligation to provide a construction of claim element 9c that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” Id. We agree with Patent Owner that the term “means for” when appearing in a claim triggers a rebuttable presumption that treatment under § 112 applies. On the record before us, however, Petitioner has not explained why the noted presumption has been rebutted or does not apply, and has not provided a construction of the pertinent “means for” term in the Petition in contradiction to the requirements of 37 C.F.R. § 104(b)(3).” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “While it is certainly the case that “a prior art reference is relevant for all that it teaches to those of ordinary skill in the art,” see In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992), it is incumbent on a petitioner, in advancing a permissible theory of obviousness, to explain why a skilled artisan would recognize to pick and choose certain aspects of a reference and combine them with other aspects of the reference, particularly so where the reference itself does not suggest such combination. See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests” ) (citation and inner quotes omitted). Here, Petitioner’s oscillation between different embodiments of Rinaldi in an attempt to reach the requirements of claim 1 is not adequately explained, and more closely resembles impermissible hindsight. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). In sum, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its assertion that claim 1 is unpatentable as a part of Petitioner’s proposed Ground 1.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,320,221
• Masimo Corporation v. Apple Inc.No claims unpatentable
  PTAB · Sep 11, 2024 · IPR2023-00664 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–24 were not determined unpatentable because the cited combinations failed to teach or suggest the claimed selectable widget functionality and lacked a coherent rationale to combine.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that: A POSITA [person of ordinary skill in the art] of the ’352 patent would have had at least a bachelor’s degree in a discipline related to human-computer interaction, such as Human Factors, Computer Science, Computer Engineering, or an equivalent discipline, and at least two years of experience working with touchscreen user interfaces. More education could substitute for less work experience, and vice-versa. Pet. 12 (citing Ex. 1003 ¶ 34).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “In our Decision to Institute, we construed “input that is directed to a portion of” a user interface. Paper 8, at 9; see also Pet. 24–25. Because this interpretation is not necessary for our final determination, we do not repeat it here.” slip op. at 9

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3. Petitioner’s reliance of the testimony of Dr. Rosenberg (see Ex. 1003 ¶ 91) is unpersuasive because Dr. Rosenberg merely restates the Petitioner’s assertions without reliance on persuasive evidence of record. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, at 5 (Feb 10, 2023) (Vidal, Dir.) (“[T]he Board was correct in giving little weight to Petitioner’s expert because the expert declaration merely offered conclusory assertions without underlying factual support and repeated, verbatim, Petitioner’s conclusory arguments.”). When addressing Chae’s three graphics in Figure 6(b) during cross-examination, Dr. Rosenberg testifies that “[t]hey’re not a numbered element, so they’re not spoken about specifically those three ones”). Ex. 2005, 56:9–14, 54:21–22 (“Chae doesn’t talk about the weather icon”). Further, the final record does not support Dr. Rosenberg’s testimony that a person of ordinary skill in the art would have understood that “part of the well-known functionality of widgets was that selecting a widget would cause ‘display of an application corresponding to the respective user interface object.’” Ex. 1003 ¶ 91. None of the references relied upon by Petitioner discloses this alleged “well-known functionality of widgets,” nor does the evidence of record support any industry standard usage of the term widget in the appropriate timeframe. See Ex. 2003 ¶¶ 46–48. Petitioner has also not persuasively shown that selections of Chae’s SIM card icons result in the display of an application as claimed. See Ex. 1005 ¶¶ 152–154, Fig. 22; see also Tr. 43:14–17 (“the claimed interface object causes display of the corresponding application, but selection of this paragraph 152, Figure 22 widget causes selection of something different, a sim environment.”). We find Patent Owner’s position more persuasive, when Chae uses the word widget, it is not using that word to refer to something that launches into an application, but instead Chae’s widgets show use-state information related to a SIM environment. See Ex. 1005 ¶¶ 152–154; Tr. 33:3–12. Specifically, Chae discloses “widgets that show use-state information of the first and second SIMs (SIM1 and SIM2),” and “when a user selects one of [the] widgets,” it “unlocks the SIM corresponding to the dragged widget.” Ex. 1005 ¶¶ 152, 153, Fig. 3 (unlocking SIM displays home screen customized to unlocked SIM). Chae does not support that these widgets relate to the graphic items in its Figure 6(b), nor does Chae explain how its widgets could be understood as the claimed “user interface objects” of the widget screen user interface. As explained persuasively by Dr. Cockburn, “the only widgets that are described in Chae are widgets relating to the use state of the multiple SIM cards,” and “[t]hese widgets described in Chae do not correspond to applications and thus do not cause display of applications when the widgets are selected.” Ex. 2003 ¶ 46 (quoting Ex. 1005 ¶ 152).” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Based on the final record before us, we conclude that Petitioner has not persuasively shown that the combination of prior art teaches the required widget limitation of “a respective user interface object . . . when selected, causes display of an application corresponding to the respective user interface object” as recited in claim 1. Petitioner relies on Chae’s Figure 6(b), which is reproduced below: Chae’s annotated Figure 6(b) “illustrates unlocking the second SIM (SIM2) according to the method for operating a mobile terminal.” Ex. 1005 ¶ 19. Ex. 1005, Fig. 6(b). Although Figure 6(b) “displays different items” (Ex. 1005 ¶ 109) such as the depictions of people (Lauran and Chris) and partly cloudy weather, Chae does not suggest that selecting these graphics causes display of an application. See PO Resp. 21. Petitioner contends that an ordinary artisan would have understood that selecting one of Chae’s graphics items must cause display of an application (see Pet. 55; Pet. Reply 11), but Chae does not teach or suggest this feature. As Dr. Cockburn persuasively testifies, “nothing in Chae indicates that the icons displayed in Figure 6(b) are dynamic or change in any way in response to content in the corresponding applications, and that the icons when selected causes display of the corresponding applications.” Ex. 2003 ¶ 46. The mere possibility that Chae’s generic graphical objects could perform a function is speculation because nothing in Chae teaches that selecting that graphical object would display a corresponding application. See id. The display of icons in Figure 6(b) does not inform the person of ordinary skill in the art whether the item has to indicate or contain content from an underlying application, and also whether it is selectable to get to that corresponding application as required by the claims. See Tr. 32:21–33:3.” slip op. at 24

  Patent outcomesUS 11,106,352 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,106,352
• Next Step Group, Inc. v. Deckers Outdoor CorporationInstitution denied
  PTAB · Aug 6, 2024 · IPR2024-00525 · APJ Kimberly Mcgraw · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving the challenged design claim unpatentable on any of its ten asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “We have authority under 35 U.S.C. § 314, which provides that inter partes review may not be instituted unless the information presented in the Petition shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). After considering the Parties’ papers and the evidence of record, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to the one claim challenged in the Petition. Thus, we do not institute an inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable

    “December 15, 2015”). The date that a product was listed as first available on a website, however, is not sufficient evidence that the content of the listing, including the photographs depicted therein, were published at that time. See Ex parte Basulto, Appeal 2020-00129, 2021 WL 1264902, at *2 (PTAB Apr. 2, 2021) (stating “the date [a] product was listed on Amazon.com is not compelling evidence that the content of [the] listing itself as shown in the document, and the photographs relied on within it were published at that time”). Selling products online is dynamic. Id. Product listings may be updated and photographs of the products may change. Id. While a statement on a commercial website as to when a product was “first available” might constitute evidence as to when the product was first offered for sale, such a statement is not sufficient evidence that the listing itself, or any photograph depicted therein, has not changed over time. See Ex parte Zhang, Appeal 2021-000087, 2021 WL 633718 at *3 (PTAB Feb. 16, 2021) (stating “while the [webpage] date indicates that the product information was last updated on [date], there is no additional evidence to corroborate that the picture was publicly accessible on that date”). We have also reviewed the customer reviews that Petitioner asserts show “the listing were [sic] public, printed publications.” Reply 17 (citing Ex. 1009, 6; Ex. 1015 ¶ 17–18. None of the reviews dated prior to the critical date of November 8, 2019, however, contain any images of the UGG Neumel Boot. See Ex. 1009, 6). Thus, Petitioner does not provide sufficient evidence that any of the images on pages 1–9 of Exhibit 1009 were available on the website prior to the critical date.” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “Here, the pull-tab does serve a useful purpose as it can be used to pull the footwear onto the foot. Based on the evidence presented, however, we disagree with Petitioner that the pull tab is primarily functional and should be removed entirely from the construction of the claimed design. Petitioner presents a number of arguments to support its position that the pull tab is functional, not ornamental. Petitioner asserts that the pull tab is “obviously not ornamentation but instead is a functional element that is used to pull the footwear on to the foot, an important function and part of the Patent Owner’s marketing message.” Pet. 18–19 (citing Ex. 1011 ¶¶ 64–67; possible, the type of pull tab shown in the ’161 patent “is the kind that is generally used in shorter shaft, lower ankle height footwear to make it easier to pull up and put the boot on the foot.” Pet. 19 (citing Ex. 1009, the UGG Neumel Boot). Petitioner further asserts that the pull tab is “securely attached for actual use, countering that it is ornamental” and that “[a]ny other pull tab (e.g., not at the top of the footwear as in the UGG Neumel Boot) would not be as efficient and hence not an acceptable alternative.” Id. (citing Ex. 1011 ¶¶ 64–67; Ex. 1013, 25–27). We are not persuaded by these arguments. The “marketing material” relied on by Petition, as discussed by Mr. Holden, merely states that Ultra Mini Ugg Boots “have a slightly lower ankle to make it easier for you to slip on,” that the UGG boots are “fantastic” for those who “may struggle with pulling on other styles,” and the boots “are fantastic for those who may struggle with pulling on other styles and are looking for more comfort and durability.” See Ex. 1011 ¶ 66 (citing Ex. 1003). None of the marketing material cited by Petitioner even mentions a pull tab. Nor does the present record support Petitioner’s contentions that,” slip op. at 27

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Petitioner’s arguments are not persuasive. First, the images of the Emu Stinger Micro Boot that Petitioner relies upon are from pages 1–6 of Exhibit 1002, which as noted above, Petitioner has not sufficiently shown to constitute a printed publication prior art. Thus, Petitioner’s arguments are based on images in a reference that does not qualify as prior art to the claimed design. The images found on pages 8 and 9 of Exhibit 1002 are not the same images as those relied upon in the Petition. Compare Ex. 1002, 8– 9, with Pet. 35–36. Thus, for at least this reason, Petitioner fails to demonstrate a reasonable likelihood that it would prevail in showing the ’161 patent is anticipated by the Emu Stinger Boot. Second, even if we were to consider any of these images of the Emu Stinger Micro Boot depicted in Exhibit 1002, Petitioner’s arguments are not persuasive because the arguments fail to adequately address differences between the claimed design and the prior art as viewed by an ordinary observer. See Door-Master Corp., 256 F.3d at 1313 (stating for anticipation to be found, the claimed design and the prior art design must be substantially the same). For example, the Figures of the ’161 patent depict (1) a stitch pattern design that includes a wavy line on the back heel of the boot (see Figs. 1–3, 5), (2) a pull tab that extends over the top part of the back of the boot and opening for insertion of the foot that appears to constitute more than 50% of the length of the boot (Figs. 2, 3, 6), and (4) a backward sloping top line. Petitioner does not address the differences between (1) the stitch pattern (2) the pull tab, or (3) the size of the opening for the foot at all in its anticipation argument. See Pet. 35–38.” slip op. at 37

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Graham
• Alivecor, Inc. v. Apple Inc.Rehearing denied
  PTAB · Jul 18, 2024 · IPR2024-00095 · APJ Hyun J Jung · IPR · Rehearing

  The Board denied AliveCor’s rehearing request, finding no abuse of discretion in denying institution because the Petterson–Nakada combinations did not teach or suggest the claimed replacement of one user interface with another.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if the decision is based on an erroneous interpretation of law, if substantial evidence does not support a factual finding, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000); see also Reh’g Req. 8 (citing 37 C.F.R. § 42.71(c)). Also, 37 C.F.R. § 42.71(d) sets forth, in relevant part that: rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the 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.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Our determinations regarding Nakada did not support Petitioner’s argument that Nakada’s “system is returned to the beginning state of the routine, which in the case of Petterson would be FIG. 2B.” Pet. 71; Dec. 39–40. We also stated that “the proposed combination does not address adequately Nakada’s description of powering down its display.” Id. at 40 (citing Pet. 48–50; Prelim. Resp. 25–26; Ex. 1011, Fig. 4). We, thus, determined Petitioner failed to show sufficiently that either Petterson or Nakada teaches or suggests “replacing display of the second user interface with the first user interface.” Dec. 38–41 (citing Pet. 48–50, 68–69, 70–71; Ex. 1003 ¶¶ 379, 382; Ex. 1011, Fig. 4). The “totality of the combination” lacked replacing a user interface with any other user interface. Dec. 40–41 (determining “the asserted references neither individually nor combined as proposed would have, ‘in response to detecting that the first criteria are no longer met for a second period of time that is longer than the first period of time, replac[ed] display of the second user interface with the first user interface’”); Reh’g Req. 8 (arguing “the Board overlooked the totality of the combination and Petitioner’s arguments and supporting evidence regarding the modification of Petterson that would have been obvious . . . in view of Nakada”).” slip op. at 7

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “After considering the arguments and cited evidence of the Petition, we determined that Petitioner did not show a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’533 patent. Paper 7 (“Decision” or “Dec.”). Petitioner subsequently filed a Request for Rehearing. Paper 8 (“Reh’g Req.”). For the reasons stated below, Petitioner has not shown that we abused our discretion in denying the Petition, and thus, Petitioner’s Request for Rehearing is denied.” slip op. at 2

  § 103 obviousness
  Patents in suitUS 10,568,533

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.