- PTAB · Jul 22, 2025 · IPR2025-00254 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that claims 1–20 are unpatentable under § 103(a).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “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) (2018). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of all challenged claims. We, therefore, institute an inter partes review of claims 1–20 on the grounds asserted in the Petition. B.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’490 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“art. Prelim. Resp. 30–34. Limitation [1.10] reads, “wherein the first and second partial search strings are separated by a string separator character in the first search field.” Ex. 1001, 30:8–10. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 23–24 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.16 Consequently, based on the current record, for the purposes of this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing. If Boolean modifiers are excluded from the definition of a “string separator character,” then the Londergan Search Bar and Search Builder features, which accept only Boolean operators, do not teach or suggest 16 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’490 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 32; compare Ex. 1001, 31:14–17 (claim 12, “string separator character”), with id. at 32:19–23 (claim 20, Boolean “modifiers”). Moreover, Patent Owner persuasively argues that “a POSITA would not understand Boolean operators such as ‘AND’ to function as string separator characters” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 32 (citing Ex. 1059, 162; Ex. 2001 ¶ 110). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the search incrementally to use a single-character string separator character, such as a plus sign, as was known in the art (e.g., EX1057, 60, 109, 129, 151), or a comma, as described by the Lotus Notes references (EX1059, 159-165), at least because a POSITA knew that a goal of the incremental search is to minimize the number of characters the user has to enter before obtaining the desired search results. Pet. 24 n.7. limitation [1.10].17 See Ex. 1061, 140–42. The Wilcox Search Bar similarly is limited to strings separated by a Boolean operator. See Ex. 1059, 160–62. The Wilcox Query Builder, however, does teach multiple search strings separated by a string separator character, specifically a comma. Id. at 163 (“If you want to search for documents that contain all of several words, type them in this box, separated by commas.”). Thus, while we do not accept all of Petitioner’s reasoning, there is evidence to support Petitioner’s overall argument that the proposed combination discloses multiple search strings separated by a string separator character, as we have preliminarily construed the term.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“extreme technical difficulties with even using incremental searches.” Prelim. Resp. 21, 25 (citing Ex. 1021, 126). Patent Owner argues that “[a] POSITA is not motivated to undertake a modification of the prior art with something that the art teaches would be difficult or impossible to do.” Id. at 21 (citing Natera, Inc. v. NeoGenomics Labs., Inc., 106 F.4th 1369, 1377–78 (Fed. Cir. 2024)). We do not interpret Raskin in this manner. Patent Owner points to a passage in Raskin stating, “almost all interface-building tools make it easy to implement delimited searches and difficult or impossible to implement incremental searches.” Ex. 1021, 126. There is a difference, however, between “difficult to implement” and “difficult to use.” For the end-user, Raskin concludes that “[f]rom the point of view of interface engineering, the advantages of incremental searching are so numerous and the advantages of delimited searches so few that I can see almost no occasions when a delimited search would be preferred.” Id. at 126 & n.7 (“A search is either incremental or excremental.”). It is reasonable to conclude that one of ordinary skill would have been motivated to choose a search method that offered numerous advantages to end-users. Finally, Patent Owner argues that “Raskin’s entire philosophy to user interfaces was incompatible with Lotus Notes.” Prelim. Resp. 22–25. According to Patent Owner, “Lotus Notes is all about centralized collaboration around documents, files, and file structures[,]” while Raskin “goes in a completely different direction, espousing the elimination of filenames and ‘hierarchical file structures’ including directories and folders.” Id. at 23 (citing Ex. 1021, 119). Patent Owner claims that modifying the Lotus Notes references with Raskin would “effectively render[] Lotus Notes’ functionality of hierarchical viewing of and responding to documents unusable.” Id. Petitioner, however, does not propose to incorporate Raskin’s views on hierarchical file structures into the combination of Wilcox and Londergan. It is not necessary for the entirety of Raskin’s teachings to be physically compatible with the Lotus Notes systems described in Wilcox and Londergan. Orthopedic Equip., 702 F.2d at 1013 (“Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference.”); In re Sneed, 710 F.2d at 1550. Raskin is cited for one purpose: its teachings regarding incremental search. On the current record, we find Petitioner has demonstrated that one of ordinary skill would have been motivated to modify the combination of Lotus Notes references according to those teachings in Raskin. slip op. at 23
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,552,490 - PTAB · Jul 22, 2025 · IPR2025-00253 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR on claims 1–10 and all petitioned grounds, finding a reasonable likelihood that claims 1 and 10 are obvious over Wilcox, Londergan, Raskin, and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “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) (2018). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (2025) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner does not comment on Petitioner’s formulation or offer any competing formulation in its Preliminary Response. See generally Prelim. Resp. Mr. Haeberli, however, testifies as follows in his Declaration: 29. In my opinion, the POSITA at the time of the alleged invention of the Asserted Patents would have had a (1) a Bachelor’s degree in a pertinent discipline, such as computer science, electric engineering, computer engineering, or a related field and (2) have 2–4 years of experience in working with computing devices and have an understanding of indexed search systems utilized by such computing devices. 30. I am aware that Petitioner has provided its own definition . . . . 31. I believe Petitioner’s definition is not meaningfully different from my definition of a POSITA. My opinions would not change regardless of which definition of POSITA is applied. Ex. 2001 ¶¶ 29–31. We find Mr. Haeberli’s formulation to be consistent with the evidence of record at this stage of the proceeding, including the asserted prior art and the ’035 patent, and, accordingly, we adopt and apply that definition for purposes of this Decision. B.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“in the prior art. Prelim. Resp. 30–34. Limitations [1.4] and [10.4] both recite: “wherein the first and second strings are separated by a string separator character in the first search field.” Ex. 1001, 29:44–46, 30:41–43. Petitioner asserts that both of the Lotus Notes references teach receiving a first search string and a second search string in a single search field, separated by “a string separator character (e.g., a comma and/or a Boolean AND operator).” Pet. 26–27 (footnote omitted). We are not fully persuaded by Petitioner’s argument. In particular, the evidence does not support Petitioner’s argument that a Boolean operator such as “AND” is a string separator character. Patent Owner has pointed to intrinsic and extrinsic evidence demonstrating that a string separator character consists of just one character.17 Consequently, based on the current record, for the purposes of 17 As Patent Owner argues, the intrinsic evidence does not support this interpretation of the claim language. Prelim. Resp. 31–32. “First, the ’035 patent distinguishes between string separator characters (such as space, comma, etc.) and ‘modifiers’ (such as AND, OR, NOT, etc.).” Id. at 31 (citing Ex. 1001, 8:45–59, 22:34–46). Moreover, Patent Owner persuasively argues that “a POSITA would not have understood Boolean operators like AND to be a string separator as used in the claims” and “would have known that the operator AND is a search syntax instruction rather than a string separator.” Prelim. Resp. 31 (citing Ex. 1059, 162; Ex. 2001 ¶ 109). Even Petitioner acknowledges in a footnote that it may not be appropriate to include the Boolean AND operator in the definition of “string separator character.” Petitioner argues: To the extent Patent Owner argues the Boolean AND operator is not a string separator character (which Petitioner does not acquiesce is appropriate), it would have been obvious to a POSITA when implementing Raskin’s teachings to perform the this Decision we preliminarily construe the term “string separator character” to mean “a single-character string separator.” The parties are invited to address the appropriateness of this construction in future briefing.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“based on the fact that all three references “generally relate to searching.” See Prelim. Resp. 20. The fact that Raskin does not explicitly discuss searching across multiple files does not mean that there would be no motivation to combine Raskin with the Lotus Notes references. Although a conclusion of obviousness must be supported by findings and analysis establishing a reason to combine or modify the known elements in the manner proposed, the analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, [but] can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. We conclude on the current record that Petitioner’s rationale for combining Raskin with the Lotus Notes references is not over-broad.” slip op. at 22
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 7,370,035 - PTAB · Jun 11, 2025 · IPR2025-00263 · APJ Barry L Grossman · IPR · Institution
Instituted IPR for claims 1–30 on all asserted grounds; the Board found a reasonable likelihood that claims would be unpatentable over Haley and Lai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We have determined that there is a reasonable likelihood that Petitioner will prevail on at least one challenged claim. Accordingly, we institute an inter partes review on all challenged claims on each asserted ground. PGS Geophysical, 891 F.3d at 1360 (A decision to institute is a “yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.”).” slip op. at 42
- BurdenInstituted
“limitations of clauses 1.3 and 1.4, but concedes that Haley does not disclose that its driver member has “at least one longitudinal edge with a plurality of spaced-apart protrusions,” as required by clause 1.4. Petitioner further asserts, however, that it would have been obvious “to replace Haley’s hydraulic lifter with the claimed ‘lifter,’ disclosed by [Lai]”. Pet. 13. (citing Ex. 1003 ¶ 54). Dr. Vallee’s cited Declaration testimony provides his opinion on this issue, which is consistent with Petitioner’s argument. Petitioner also asserts that “Lai discloses an electrically-powered, mechanical lifting mechanism with a structure that is essentially identical to the ‘lifter member’ disclosed in the ’776 patent. Pet. 13. Petitioner provides side-by-side colored figures from the ’776 patent and from Lai, reproduced below, to illustrate its argument. Pet. 14. According to Petitioner, the side-by-side comparison of Petitioner’s colored versions of Fig. 12, from the ’776 patent, with Petitioner’s colored versions of Figs. 4 A–D, reproduced above, illustrate why and how the proposed modification would have been obvious. As described by Petitioner, the “lifter member” of the ’776 patent includes a rotatable cam lifter 100 (yellow), with pins 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). Pet. 13 (citing Ex. 1001, 9:30–46, 16:34–48, Fig. 12). Petitioner also cites the “two-pin variants: lifter members 465 and 480” shown in Figs. 31, 33 of the ’776 patent. Id. Petitioner also asserts that, as shown in the side-by-side comparison” slip op. at 33
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededOther
“Petitioner asserts the term “lifter member” in the claims of the ’776 patent is “a means-plus-function term” because the claims “lack any ‘recital of structure, material, or acts in support thereof’ for the ‘lifter’ element.” Pet. 7 (citing 35 U.S.C. § 112(f)). Petitioner also asserts “[t]he Federal Circuit held that the term ‘lifter member’ in the related patents is a means-plus-function term subject to §112(f).” Pet. 7. Petitioner cites no authority for this assertion. We understand this assertion to refer to the decision in Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369 (Fed. Cir. 2022), identified by Petitioner as a related matter. Pet. 2. In this case, which involved patents from the same family as the ’776 patent (see Section I.C of this Decision), the Federal Circuit concluded that “§ 112 ¶ 6 applies to the ‘lifter member’ limitation, and it must be construed to cover only ‘the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof.’” Id. at 22 F.4th 1379–1381. “Where multiple patents derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.” Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373, 1378 (Fed. Cir. 2019) (citing SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (internal quotation marks omitted). Patent Owner asserts that Petitioner: fails to comply with the requirement of 37 C.F.R. § 42.104(b)(3) to specifically identify the structure in the specification associated with that element. As ‘lifter’ is present in every challenged claim under all four grounds, Petitioner’s failure to provide a claim construction for ‘lifter’ is fatal to its Petition. Prelim. Resp. 13. We disagree. First, the claims in the ’776 patent do not use the single word “lifter” alone. The term used in some of the claims, see, e.g., independent claims 1 and 17, and the claims dependent from claims 1 or 17, is “lifter member.” We recognize that the written description in the ’776 patent states “the rotary-to-lifter 100 is also sometimes referred to herein as a ‘lifter member,’ or simply as a ‘lifter.’” Ex. 1001, 9:5–7. This suggests that that term “lifter” is intended to mean the “lifter member,” which makes the use of either term a distinction without a substantive difference. Moreover, neither independent claims 9 or 24, nor the claims dependent from claims 9 and 24, use the word “lifter” or “lifter member. Second, as stated in Petitioner’s Preliminary Reply, the Petition “identifies the portions of the specification that describe the corresponding structure for the ‘lifter’ when comparing its structure to that of the Lai prior art.” Prelim. Reply 1. The Petition provides a colored version of Figure 12 from the ’776 patent (reproduced below) and identifies the following corresponding structures from the Specification of the ’776 Patent: The “lifter member” of the ’776 patent includes a rotatable cam lifter 100 (yellow [ ]), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’776 patent, 9:30–46, 16:34–48, Fig. 12. The ’776 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. [citing] ’776 patent, 32:15–30, 32:48–63. Petition at 13. Based on the record before us, we determine that this identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has identified the correct corresponding structure. To the extent the parties wish to further address the construction of this claim limitation, they may do so during trial, as permitted by our rules.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“to mean “a chamber that is distinct from the displacement volume of the hollow cylinder and contains part of the working air volume during operation.” Pet. 8. According to Petitioner “there is nothing in the intrinsic record or any of the claims of the ’776 patent that prevents the ‘main storage chamber’ from being in the hollow cylinder, so long as it is distinct from its separately-recited ‘displacement volume.’” Id. at 9 (emphases added). Patent Owner asserts that “[g]rounds 2 and 4 each requires this Board to interpret the ‘storage chamber’ to be the same structure as the hollow cylinder.” Prelim. Resp. 31. According to Patent Owner, “[t]he Federal Circuit, considering both parties’ claim construction arguments, rejected that construction.” Id. Patent Owner does not provide any citation to support its reference to the Federal Circuit decision. It appears to be a reference to the Kyocera decision considering review of the ITC determination. See Kyocera, 22 F.4th at 1383. That decision, however, construed claims in a related patent to “require two distinct structures: the main storage volume and a smaller “hollow cylinder” contained within the main storage volume. Based on the record before us, Petitioner’s proposed construction is consistent with the Federal Circuit’s construction, which states two structures can be distinct even if one distinct structure is “contained within” the other distinct structure. Although the parties dispute the construction of the “storage chamber” claim limitation, this dispute relates only to Grounds 2 and 4. See Prelim. Resp. 31. We need not resolve it to determine whether to institute review. The parties are welcome to develop their arguments regarding this claim limitation during trial. 3. Conclusion Regarding Claim Construction Our claim construction analyses in this decision to institute a trial do not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. Claim construction will be determined at the close of all the evidence and after any hearing. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, or otherwise during trial, as permitted by our rules.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,241,776 - PTAB · Jun 11, 2025 · IPR2025-00264 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR of claims 1–15 on all asserted grounds, finding a reasonable likelihood that Koki would prove the claims obvious over Haley and Lai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may institute an inter partes review when “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). If we institute an inter partes review, the trial must encompass all claims and grounds identified in the Petition. 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). For the reasons set forth below, we conclude that there is a reasonable likelihood that Petitioner will prevail in establishing the unpatentability of all challenged claims. We, therefore, institute inter partes review of claims 1–15 on the grounds asserted in the Petition. B.” slip op. at 2
- BurdenInstituted
“not identical” to the structure that Petitioner identifies as corresponding to the “lifter” claim limitation. Prelim. Resp. 19. We agree that these structures are not identical. But on this record, they appear, at least preliminarily, to be equivalent. As Petitioner explains, both structures utilize a rotatable cam with pins to translate a driver (driver member 90 of the ’167 Patent and hammer 6 of Lai) into a position where the driver is ready for use. See Pet. 12–15. Patent Owner does not otherwise contest Petitioner’s showing that Lai teaches or suggests the subject matter set forth in limitations 1.4, 1.5, and 1.6, and we find Petitioner has made a sufficient showing that Lai does so.” slip op. at 20
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Lifter The Petition explicitly states that the “lifter” limitation is a means- plus-function limitation—a contention Patent Owner does not dispute. See Pet. 6; Prelim. Resp. 9–11. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 [sic] Patent to perform the claimed function.” Prelim. Resp. 10. We disagree. The Petition identifies the following corresponding structures from the Specification of the ’167 Patent: The “lifter” of the ’167 patent includes a rotatable cam lifter 100 (yellow, below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’167 patent, 9:36-52, 16:39-53, Fig. 12. The ’167 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31 and 33. ’167 patent, 32:21-36, 32:54- 33:2. satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has identified the correct corresponding structure. To the extent the parties wish to further address the construction of this claim limitation, they may do so during trial.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner has identified the storage chamber of Haley as being chamber 85, a volume of space bounded by housing 40, extension cylinder 76, and elongate accumulator shell 80. See Pet. 9–10; Ex. 1004 Fig. 1. Haley’s elongate accumulator shell 80 (which Petitioner identifies as the removal top cap) is not the same as chamber 85; it is merely one component of the structure that encloses chamber 85. See id. And, though the Petitioner-identified removable top caps of Haley (a cylinder-shaped component, see id.) and Saari/Enstrom (a removable sleeve that extends into the interior of Saari/Enstrom’s cylinder, see id. at 48–49) have different Petitioner-identified storage chambers. We, therefore, are not persuaded that Petitioner’s contentions necessarily rely on implicit and inconsistent claim constructions.” slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,845,167 - PTAB · Jun 11, 2025 · IPR2025-00262 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–20 on all grounds, finding a reasonable likelihood that Haley and Lai render the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Other 314aDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 34–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis.” slip op. at 10
- Skill levelSkill level board ownOther
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The parties’ briefs do not propose a specific definition of a level of ordinary skill in the art. See generally, Pet., Prelim. Resp. Dr. Vallee, however, testifies that one of ordinary skill in the art relevant to the ’954 patent: would have either (i) a Master’s degree in mechanical engineering with at least two years of experience in power nailer design; (ii) a Bachelor’s degree in mechanical engineering with at least five years of experience in powered nailer design; or (iii) ten (or more) years of experience in powered nailer design. This experience in powered nailer design would include mechanical design, tool design, manufacturing, mechanics of materials, stress analysis, ergonomics, and human factors. Ex. 1003, ¶ 49. For purposes of this Decision, we adopt and apply Dr. Vallee’s formulation regarding the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 15–26. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 [sic, ’954] Patent to perform the claimed function.” Prelim. Resp. 15. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter member” of the ’954 patent includes a rotatable cam lifter 100 (yellow, below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’954 patent, 9:25–41, 16:32–46, Fig. 12. The ’954 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’954 patent, 32:12–27, 32:45–60. Pet. 15. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,478,954 - PTAB · Jun 11, 2025 · IPR2025-00261 · APJ Mitchell G Weatherly · IPR · Institution
Instituted IPR of claims 1–20 on all grounds after finding a reasonable likelihood that Haley anticipates claims 1, 7, 8, 17, and 20 and Haley with Lai renders the remaining claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 33–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis. E. Claims 1, 7, 8, 17, and 20: Anticipation by Haley” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 10–14. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 Patent to perform the claimed function.” Prelim. Resp. 10. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter” (“lifter member”) of the ’007 patent includes a rotatable cam lifter 100 (yellow below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’007 patent, 9:36–52, 16:39–53, Fig. 12. The ’007 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’007 patent, 32:23–38, 32:56–33:4. Pet. 17. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“gas pressure system” recited in the preamble of independent claims 1 and 17. Prelim. Resp. 21–22. Patent Owner further argues that Petitioner, through its comparison of claims 1 and 17 to Haley, improperly implies that the “gas pressure system” can be “limited to a distinct portion of a power tool.” Id. at 23. Patent Owner contends that such an interpretation is improper because the “gas pressure system” must refer to “the entire system,” because the “structure of the claims themselves . . . include[s] . . . every component of the tool.” Id. We disagree. The “gas pressure system” recited in the preambles of claims 1 and 17 expressly refers to a system that is “for a power tool” and thus does not necessarily refer to “the entire” tool or “every component of the tool.” Ex. 1001, 39:6 (claim 1), 40:51 (claim 17). Neither claim 1 nor claim 17 recites, for example, the lifter or driver, which are required elements of an “entire” tool. Id. at 39:6–22 (claim 1), 40:51–67 (claim 17). The lifter and driver are introduced in dependent claims 2 and 18. Id. at 39:23–30 (claim 2), 41:1–9 (claim 18). Still other necessary components of a tool, e.g., a motor and power source, are introduced in dependent claims 5 and 19. Id. at 39:40–42 (claim 5), 41:10–13 (claim 19). By contrast to claims 1 and 17, independent claims 9 and 14 recite a “portable fastener driving tool” and expressly recite many necessary components of such a tool including the driver, lifter, prime mover, and power source. Id. at 39:54 (claim 9), 40:20 (claim 14). Accordingly, we find that the “gas pressure system” of claims 1 and 17 broadly refers to a portion of a power tool rather than the “entire system” or “every component of the tool.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,034,007 - PTAB · Jun 6, 2025 · IPR2025-00300 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–12 on all asserted grounds and granted LG’s motion to join the Vizio IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“ANALYSIS A. Institution of Inter Partes Review We instituted an inter partes review in the Vizio IPR on all challenged claims and all asserted grounds of unpatentability. Vizio IPR, Paper 12; see also Vizio IPR, Paper 1 (the “Vizio Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Vizio IPR. Compare Pet. 1–2, with Vizio Petition, 1–2. Petitioner also relies on an identical declaration from the same declarant as relied upon by the petitioner in the Vizio IPR. Mot. 1 (“[Petitioner] . . . relies upon the same expert declaration as relied upon in the Vizio IPR.”); Ex. 1003, 1 (cover page indicating Declaration of Henry Houh in support of the petition submitted in IPR2024-00723), 134 (signature page dated March 21, 2024). Because the grounds of unpatentability in the instant Petition are identical to those in the Vizio IPR, for the same reasons stated in our Decision to Institute in the Vizio IPR we institute inter partes review in this proceeding on the grounds presented in the Petition. See Vizio IPR, Paper 12, 12–41 (analyzing challenges in the Vizio Petition).” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because the “Petition is substantively identical to the petition in the Vizio IPR,” “challenging the same claims of the ’384 Patent on the same grounds while relying on the same prior art, arguments, and evidence,” and relying “upon the same expert declaration as relied upon in the Vizio IPR.” Mot. 1, 4–5. Petitioner represents that joinder will not impact the Vizio IPR schedule. Id. at 5–6. Petitioner also represents that it “explicitly agrees to take an ‘understudy’ role” and “will assume the primary role only if Vizio cease to participate in the Vizio IPR.” Id. at 6– 7.” slip op. at 11
NonePatents in suitUS 9,578,384 - Shopify Inc. v. DKR Consulting LLCInstitution deniedPTAB · Jun 2, 2025 · IPR2025-00131 · APJ Robert L Kinder · IPR · Institution
The Board denied institution of IPR on claims 1–20 because a district court had entered judgment finding all challenged claims patent ineligible under § 101.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherInstitution denied
“of the Challenged Claims in this proceeding having been found invalid, we see no reason to institute inter partes review. As stated in Hulu, if the Federal Circuit reverses the District Court’s Judgment that the Challenged Claims are invalid as patent ineligible under Section 101, “Petitioner may raise such invalidity arguments in the district court on remand.” Hulu at 3. Thus, consistent with Hulu, we deny institution of inter partes review because the District Court has entered judgment determining all Challenged Claims of the ’785 patent invalid under 35 U.S.C. § 101. Discretionary denial in the circumstances of this proceeding promotes administrative efficiency and the integrity of the patent system. Discretionary denial also preserves Petitioner’s ability to assert the same obviousness challenges, should the need arise, in the District Court litigation.” slip op. at 12
Discretionary denialPatents in suitUS 10,846,785 - Shopify Inc. v. DKR Consulting LLCInstitution deniedPTAB · May 29, 2025 · IPR2025-00133 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution of IPR2025-00133 because a district court had found all challenged claims patent-ineligible, making review administratively inefficient.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“B. Discretionary Denial Based on Hulu The Hulu decision held that “[b]ecause the patent claims already stand invalid, it is unnecessary to institute another proceeding to review them for patentability under other grounds.” Hulu at 2. The decision reasoned that “[i]n the event the Federal Circuit reverses the district court’s decision, Petitioner may raise such invalidity arguments in the district court on remand.” Hulu at 3 (remanding the panel’s institution decisions and denying institution). The Hulu rationale is grounded in the statutory estoppel provisions of 35 U.S.C. § 315(e) that apply only to a “final written decision;” statutory estoppel does not prevent a petitioner from raising the same invalidity grounds in district court if the petition is denied. See Intuitive Surgical, Inc. v. Ethicon LLC, 25 F.4th 1035, 1041 (Fed. Cir. 2022) decision.”). Even if inter partes review is instituted but later terminated with respect to a petitioner, e.g., after settlement, no statutory estoppel attaches to the petitioner, a real party in interest, or privy. See 35 U.S.C. § 317(a) (“If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review.”). Thus, discretionary denial would not eclipse Petitioner’s ability to assert invalidity of the Challenged Claims in the District Court litigation. The Petition explains that the District Court granted a Motion to Dismiss and found all of the Challenged Claims to be patent ineligible under 35 U.S.C § 101. 130 Pet. 2 (citing Ex. 1025, 10, 14; DKR Consulting LLC v. Shopify, Inc., Case No. 2:23-cv-06904 (C.D. Cal.)); see also Ex. 3001 (District Court judgment stating “[p]ursuant to this Court’s Order Granting Defendant’s Motion to Dismiss, it is ordered that judgment is entered on all claims in favor of Defendant Shopify, Inc.”). In the Show Cause Paper, Petitioner confirms the scope of the District Court Judgment as applying to all of the challenged claims of the ’678 and ’237 patents. See Show Cause Paper at 6 (“All challenged claims are subject to the district court’s Order and Judgment.”). All of the Challenged Claims in this proceeding having been found invalid, we see no reason to institute inter partes review. As stated in Hulu, if the Federal Circuit reverses the District Court’s Judgment that the challenged claims are invalid as patent ineligible under Section 101, “Petitioner may raise such invalidity arguments in the district court on remand.” Hulu at 3. because the District Court has entered judgment determining all challenged claims of the ’678 and ’237 patents invalid under 35 U.S.C. § 101. Discretionary denial in the circumstances of this proceeding promotes administrative efficiency and the integrity of the patent system. Discretionary denial also preserves Petitioner’s ability to assert the same obviousness challenges, should the need arise, in the District Court litigation.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“I. CONCLUSION For the reasons given above, we deny the Petitions in the 130 and 133 IPRs. Therefore, we do not institute inter partes review. II. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petitions in IPR2025-00130 and IPR2025-00133 are denied, and inter partes review is not instituted.” slip op. at 15
Discretionary denialPatents in suitUS 11,488,237 - Shopify Inc. v. DKR Consulting LLCInstitution deniedPTAB · May 29, 2025 · IPR2025-00130 · APJ Miriam L Quinn · IPR · Institution
The Board denied institution of IPRs challenging claims 1–20 of the ’237 patent and claim 7 of the ’678 patent because a district court had held all challenged claims patent-ineligible.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“Dismiss and found all of the Challenged Claims to be patent ineligible under 35 U.S.C § 101. 130 Pet. 2 (citing Ex. 1025, 10, 14; DKR Consulting LLC v. Shopify, Inc., Case No. 2:23-cv-06904 (C.D. Cal.)); see also Ex. 3001 (District Court judgment stating “[p]ursuant to this Court’s Order Granting Defendant’s Motion to Dismiss, it is ordered that judgment is entered on all claims in favor of Defendant Shopify, Inc.”). In the Show Cause Paper, Petitioner confirms the scope of the District Court Judgment as applying to all of the challenged claims of the ’678 and ’237 patents. See Show Cause Paper at 6 (“All challenged claims are subject to the district court’s Order and Judgment.”). All of the Challenged Claims in this proceeding having been found invalid, we see no reason to institute inter partes review. As stated in Hulu, if the Federal Circuit reverses the District Court’s Judgment that the challenged claims are invalid as patent ineligible under Section 101, “Petitioner may raise such invalidity arguments in the district court on remand.” Hulu at 3. because the District Court has entered judgment determining all challenged claims of the ’678 and ’237 patents invalid under 35 U.S.C. § 101. Discretionary denial in the circumstances of this proceeding promotes administrative efficiency and the integrity of the patent system. Discretionary denial also preserves Petitioner’s ability to assert the same obviousness challenges, should the need arise, in the District Court litigation.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“I. CONCLUSION For the reasons given above, we deny the Petitions in the 130 and 133 IPRs. Therefore, we do not institute inter partes review. II. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petitions in IPR2025-00130 and IPR2025-00133 are denied, and inter partes review is not instituted.” slip op. at 15
Discretionary denialPatents in suitUS 11,455,678
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.