- Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentablePTAB · Nov 20, 2024 · IPR2023-00865 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–19 are unpatentable under § 103 over Carr and Lauka, with additional references for the dependent-claim grounds, because the challenged claims lack priority support in the ’848 application.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Instacart submits that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 27 (citing Ex. 1003 ¶¶ 22–25). Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like” and that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” PO Resp. 7 (citing Ex. 2016 ¶¶ 19–23). But, as Consumeron’s expert acknowledges, Consumeron’s proposed definition “is not materially different” from Instacart’s. See Ex. 2016 ¶ 22. Accordingly, while we adopt the level of skill in the art as defined by Instacart our findings and analysis would be the same under Consumeron’s proposal.” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“8 Consumeron argues Dr. Houh’s testimony should be given little weight because he “admitted he did not evaluate what the ’848 Application reasonably conveys to a skilled artisan.” Resp. 26 (citing Ex. 2011, 74:8– 76:6, 83:4–84:1, 92:22–95:5). We disagree. Dr. Houh’s testimony indicates that he properly considered what the ’848 application reasonably conveys to a POSITA. See Ex. 1003 ¶¶ 52, 56, 58, 61, 65. The portions of his cross-examination testimony cited by Consumeron do not suggest otherwise. For the reasons explained below, we credit Dr. Houh’s testimony over the competing interpretations offered by Consumeron and Dr. Mitzenmacher. 9 The dissent criticizes the majority’s analysis as “overly narrow” and too focused on the preferred embodiment. See Dissent 7–8. We disagree. Our analysis considers the entirety of the ’848 application, including all of the passages cited by Consumeron and the dissent.” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner
“But it does not follow that an agent encountering a stock-out would necessarily respond according to the specific steps recited in claims 1 and 14.10 For example, instead of sending information about a replacement product, the agent could travel to another location to look for the same product, or notify the customer that the desired product could not be found and terminate the transaction. Because the ’848 application only contemplates scenarios where a product can be located, it does not describe the agent’s response in the event the identified product cannot be located or is unavailable, much less reasonably convey possession of a method comprising the specific, responsive steps in claims 1 and 14.11” slip op. at 17
- Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner
“construed the terms “acquisition request” and “acquiring” in our final written decision in the related 1357 IPR to encompass “not only a request for a delivery agent to shop for and purchase goods, but also a request for the agent to pick up or obtain pre-paid goods.” See 1357 IPR, Paper 35 at 11. It is undisputed that the ’465 patent at issue here and the ’835 patent at issue in the 1357 IPR are related and share essentially identical specifications, figures, and claim terms. See Pet. Reply 16; PO Resp. 38 n.6. Thus, for the same reasons as in our final written decision in the related 1357 IPR, we likewise determine here that Instacart’s construction of “acquisition request” is the correct one. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (“Where multiple patents ‘derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.’” (quoting NTP, Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)). Consumeron provides no persuasive justification for us to depart from our prior reasoning in the related 1357 IPR.” slip op. at 23
Patent outcomesUS 11,238,465 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,238,465 - PTAB · Nov 7, 2024 · IPR2024-00884 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–15, finding a reasonable likelihood that claims 1–3, 6–11, 14, and 15 are obvious over Aker, Aker ’724, and Thomas.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relating to the ’602 patent would have “a working knowledge of Doppler radar systems,” a “Bachelor of Science degree in an academic discipline emphasizing electrical, mechanical, instrumentation engineering or other disciplines related [to] measurement science,” and “specific training or at least one to two years of related work experience with Doppler radar systems.” Pet. 4 (citing Ex. 1003 ¶ 18). Petitioner asserts that one of ordinary skill could, alternatively, have a “Master of Science degree in electrical engineering with less than a year of related work experience in the same discipline.” Pet. 5 (citing Ex. 1003 ¶ 18). Patent Owner does not contest Petitioner’s proposal at this time. Prelim. Resp. 21–22. At this stage, and based on Petitioner’s undisputed contentions, we apply Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Based on this preliminary record, we agree with Petitioner that its first proposed construction more naturally follows from the claim language and specification. That construction reads the limitation as requiring a “a radar transceiver configured to transmit and receive radar beams” either “in a front zone . . . or in a rear zone,” but does not require a single transceiver configured to transmit and receive radar beams in both the front and rear zones. See Pet. 6. Based on this record, the specification supports this approach because it describes separate transceivers operating in the front zone and rear zone of the patrol vehicle. See Ex. 1001, 4:29–5:24; see also Fig. 2 (showing front radar transceiver 12 associated with first radar beam 42 and separately showing rear radar transceiver 14 associated with second radar bean 44).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Aker, Aker ’724, and Thomas in the manner Petitioner proposes. See Pet. 9–13. Patent Owner’s arguments do not undermine Petitioner’s showing on these issues, based on the current record, for several reasons. First, Patent Owner premises its arguments on detailed assertions as to how one of ordinary skill in the art would interpret the teachings of the references, and then includes detailed calculations based on those teachings. See Prelim. Resp. 24–36. None of these assertions are supported by any testimony from one of ordinary skill in the art, and, on this record, amount to mere attorney argument. See id. For example, even if Patent Owner’s calculations are arithmetically correct, Patent Owner does not explain or provide evidence that a skilled artisan would gauge the accuracy of GPS for law enforcement based on Patent Owner’s asserted calculations and “baseline” assumptions. See id. at 28–29. While expert testimony is not required at any stage of these proceedings, Patent Owner’s arguments here fail to undermine Petitioner’s arguments and evidence, which include currently unrebutted testimony from one of ordinary skill in the art. See, e.g., Pet. 9–13 (citing Ex. 1003 ¶¶ 31–33, 35–40). Second, the specifics of Patent Owner’s arguments do not justify denial of institution, based on the current record. Patent Owner does not dispute that using GPS to determine the speed of a vehicle as Thomas teaches could be easily incorporated into Aker’s system. Instead, Patent Owner focuses almost entirely on the lack of accuracy when using the GPS approach. As Petitioner points out, the claims do not require a specific level of accuracy and appear to allow for some degree of inaccuracy. See Prelim. Reply 1–2. In addition, Patent Owner does not argue for a claim construction that requires a specific level of accuracy. Prelim. Resp. 17–21. Even if accuracy concerns militate against the proposed combination to some degree, Patent Owner does not assert, with probative evidence, that a specific level of accuracy must be achieved in this art and how the proposed combination fails to meet that standard such that use of GPS for speed readings would be rejected despite their ready availability. See id. at 24–36. These arguments, based on the current record, do not undermine Petitioner’s reasons for its proposed combination. Final resolution of these highly factual disputes based on interpretations of the references and the standards in the art are best resolved after further development during trial.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Fourth, we are not persuaded by Patent Owner’s teaching away argument, based on the current record. See Prelim. Resp. 28–36. Patent Owner does not support its argument with citations to Aker disparaging the use of GPS to obtain speed, or the inaccuracy of such a system generally, or citations to Thomas disparaging the accuracy of its GPS approach or its suitability for use in a patrol car. See id. Instead, Patent Owner appears to argue that the Aker references disclose two methods for obtaining speed, show a preference for one method as more accurate, and Thomas’s GPS method provides no more accuracy than the method Aker disparages. See id. Patent Owner’s arguments rely on inferences drawn by one of ordinary skill in the art when reading the references and error calculations to determine the suitability of GPS-based speed readings. See id. While these arguments may ultimately prevail, they do not appear to reach the threshold of “teaching away” from Petitioner’s proposed combination. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,703,602 - PTAB · Nov 7, 2024 · IPR2024-00829 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–15, finding a reasonable likelihood that claims 1–3, 6–11, 14, and 15 are obvious over Aker, Aker ’724, and Thomas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314. Under § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the challenged claims in the petition.” Id. at § 314(a). Because we determine that Petitioner demonstrates a reasonable likelihood that at least one challenged claim is unpatentable, we institute an inter partes review of all claims as challenged in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art relating to the ’039 patent would have “a working knowledge of Doppler radar systems,” a “Bachelor of Science degree in an academic discipline emphasizing electrical, mechanical, instrumentation engineering or other disciplines related measurement science,” and “specific training or at least one to two years of related work experience with Doppler radar systems.” Pet. 4 (citing Ex. 1003 ¶ 16). Petitioner asserts that one of ordinary skill could, alternatively, have a “Master of Science degree in electrical engineering with less than a year of related work experience in the same discipline.” Id. Patent Owner does not contest Petitioner’s proposal at this time. Prelim. Resp. 18. At this stage, and based on Petitioner’s undisputed contentions, we apply Petitioner’s proposed level of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Here, Petitioner posits that “no formal claim constructions are necessary in this proceeding.” Pet. 5. Patent Owner also states that “no construction is necessary” at this time. Prelim. Resp. 17–18. We determine that we need not expressly construe any terms to resolve the dispute between the parties at this time. Nidec, 868 F.3d at 1017.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the current record, Petitioner sufficiently establishes for the purposes of institution that one of ordinary skill in the art would have been motivated to combine Aker, Aker ’724, and Thomas in the manner Petitioner proposes. See Pet. 7–11. Patent Owner’s arguments do not undermine Petitioner’s showing on these issues, based on the current record, for several reasons. First, Patent Owner premises its arguments on detailed assertions as to how one of ordinary skill in the art would interpret the teachings of the references, and then includes detailed calculations based on those teachings. See Prelim. Resp. 20–33. None of these assertions are supported by any testimony from one of ordinary skill in the art, and, on this record, amount to mere attorney argument. See id. For example, even if Patent Owner’s calculations are arithmetically correct, Patent Owner does not explain or provide evidence that a skilled artisan would gauge the accuracy of GPS for law enforcement based on Patent Owner’s asserted calculations and “baseline” assumptions. See id. at 28–29. While expert testimony is not required at any stage of these proceedings, Patent Owner’s arguments here fail to undermine Petitioner’s arguments and evidence, which include currently unrebutted testimony from one of ordinary skill in the art. See, e.g., Pet. 7–11 (citing Ex. 1003 ¶¶ 25–33).” slip op. at 14
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,194,039 - PTAB · Oct 31, 2024 · IPR2024-00858 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 5–7 and 16–19, finding a reasonable likelihood that claims 5–7 and 16–19 are unpatentable over Samartgis and at least claims 5 and 19 over Leoncavallo.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“U.S.C. § 314(a) due to the advanced state of the parallel district court action, and, in doing so, relies heavily on the district court’s scheduled trial date of September 22, 2025. See Prelim. Resp. 51, 54. While the district court’s scheduled trial date may be earlier than the Board’s projected deadline for a final written decision here, CamelBak’s reliance on that date is misplaced. The Office takes the position that a district court’s scheduled trial dates are “unreliable and often change” and that a more reliable indicator is the district court’s “median time-to-trial for civil actions,” which, in this case, would place the district court’s trial date after the projected deadline of any final written decision here. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”), at 8–9. Thus, CamelBak’s reliance 5 US D586,184 S, issued Feb. 10, 2009 (Ex. 1006, “Miller”). on the district court’s scheduled trial date has no bearing on whether we should discretionarily deny institution. Of greater relevance is Trove’s express stipulation not to pursue the same grounds in the district court action as advanced in the petition or any ground that relies on the prior art references cited in the petition. See Pet. 100. Although not exactly a Sotera stipulation, the Office nonetheless recognizes that such stipulations further mitigate concerns of potentially conflicting decisions and duplicative efforts between us and the district court. See Director’s Interim Procedure, at 7–8. Thus, given Trove’s stipulation and the fact that the district court’s median time-to-trial is after the projected deadline of our final written decision here, we will not discretionarily deny institution under § 314(a).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree that Samartgis is the substantially the same as the corresponding design patent cited during prosecution, mainly because the design patent fails to show the closure retention mechanism that is clearly shown and described in Samartgis and goes to the very heart of Trove’s showing of anticipation and obviousness. Compare Ex. 1004, Figs. 3–5 (showing lug members 15, 16 and ramp sections 23, 25, 27), with Ex. 2001, Figs. 1–8 (omitting any depiction of lug members or ramp sections). Thus, Samartgis clearly was not considered. And, although Leoncavallo and Miller may arguably have been considered during prosecution, “[w]hen instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 42 C.F.R. § 42.108(a). As such, we will not discretionarily deny institution under § 325(d). B. Level of Ordinary Skill in the Art” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Trove proposes that one of ordinary skill in the art would have had: an undergraduate degree in mechanical engineering or equivalent coursework, and a year or more of experience in designing, prototyping, and/or manufacturing fluid containers or similar products . . . [and that] [m]ore work experience may substitute for a lower level of education, and vice versa. Pet. 17–18 (citing Ex. 1003 ¶¶ 25–30). CamelBak appears to agree. See Prelim. Resp. 16 (“Patent Owner assumes Petitioner has correctly stated the level of ordinary skill in the art and does not set forth its own definition.”). At this stage, we see no reason to depart from Trove’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’252 patent.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“At this stage, we do not see the need to resolve the § 112(f) issue in light of Trove’s express and unrebutted showing that the prior art teaches sufficiently analogous structure to that identified in the ’252 patent for performing the disputed functional limitations of the claimed “closure retention mechanism.” See Pet. 35 (asserting that “[Samartgis’s] lug members 15 and 16 also are at least equivalent to the structure identified in the specification (i.e., the two or more spaced-apart tabs on the handle)” because “[l]ike the opposed tabs of the ’252 patent, the lug members 15 and 16 are projections that extend from the inner surface of the handle to engage the closure.”). Indeed, at this stage, CamelBak chooses not to address Trove’s showing in this regard, instead arguing that “the construction of ‘closure retention mechanism’ is irrelevant because [Trove] fails to show lug members 15 and 16 are configured to meet other limitations of claims 5 and 19.” Prelim. Resp. 20 n.7. That said, to the extent either party believes it is necessary for final resolution of patentability, they should explore the § 112(f) issue further during the trial phase.” slip op. at 10
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 8,905,252 - Intelligent Wellhead Systems, Inc. v. Downing Wellhead Equipment, LLCInstitution deniedPTAB · Sep 12, 2024 · IPR2024-00583 · APJ Benjamin D M Wood · IPR · Institution
The Board denied institution on all grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“II. ANALYSIS A. Legal Standards Used in the Merits Analysis “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that, for the ’779 patent, one of ordinary skill in the art “would have had an engineering degree and two or more years’ wellrelated operations experience, or equivalent education/experience.” Pet. 8. Patent Owner does not offer an alternative definition, but its Declarant, Mr. Hughett, submits that one of ordinary skill in the art would have had “a degree in petroleum or mining engineering, mechanical engineering, or a comparable discipline, and at least two years of experience in oil and gas extraction, or an equivalent combination of education and experience.” Ex. 2006 ¶ 17. On the record, we do not discern a meaningful difference between Petitioner’s and Mr. Hughett’s proposed definitions, and therefore adopt Petitioner’s definition for purposes of this Decision. We also presume that the cited prior-art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining the level of ordinary skill in the art may be evidenced by the cited references themselves).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The Specification does not suggest a particular definition of threshold, and neither party suggests that it is a term of art in the relevant field. Therefore, we consult a general dictionary for guidance. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (If “the specification does not assign or suggest a particular definition [of a claim term], in determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance.”). Because Merriam-Webster’s online dictionary, Merriam-Webster.com, provides several definitions for threshold, we refer to the intrinsic record “to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003). Based on the context in which threshold is used in claims 1 and 8, we consider the most relevant definition to be “a level, point, or value above which something is true or will take place and below which it is not or will not.” Merriam- Webster.com/dictionary/threshold (accessed July 30, 2024). The claim context also indicates that threshold encompasses the opposite situation, i.e., the threshold may be a value below which something is true or will take place and above with it is not true or will not take place. Thus, a flow-rate value and time value are “thresholds” when there is an action that will or will not take place (or something is or is not true) depending on whether those values are met. The Specification identifies one particular action that occurs when these thresholds are met: performance of a CP swap from hydraulically fracturing the n1 well (i.e., a first well) to hydraulically fracturing the n1+1 well (i.e., a second well). Ex. 1001, 13:28–52, Figs. 1B, 12. To perform a CP swap, according to the Specification, zipper valves for the n1+1 well are opened while fluid is being pumped to the n1 well, allowing hydraulic fracturing fluid to flow to both wells, after which zipper valves for the n1 well are closed. Id. at 14:14–38, Figs. 15, 16A, 16B, 16C. This procedure is precisely what claims 1 and 8 recite. In addition to requiring “determining that the flow rate is below a flow-rate threshold . . . for a threshold amount of time,” claims 1 and 8 recite, e.g., “(c) during pumping of the fluid into the first well via the first valve, opening a second valve associated with a second well,” and “(e) during pumping of the fluid into the second well via the second valve, closing the first valve associated with the first well.” Ex. 1001, claims 1, 8. Thus, in the context of these claims, a flow-rate threshold and threshold amount of time would be flow-rate and time values that determine whether or not a second valve associated with a second well is opened during pumping of fluid into the first well via the first valve.” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We are not persuaded that Ciezobka teaches or suggests limitation [1.3]. First, we agree with Patent Owner that this limitation necessarily requires comparing the measured flow rate to a threshold. Petitioner also appears to agree that such a comparison is necessary to perform limitation [1.3]. See Pet. 15 (“Ciezobka discloses determining the flowrate of the fluid and comparing the determined flowrate to certain thresholds . . . , and therefore discloses determining that the flow rate of the fluid being pumped into the first well is below a flowrate threshold.”) (emphasis added). Ciezobka does not, however, teach such a comparison. Assuming that the initial flow rate can be considered a “threshold,” Ciezobka’s teaching of the existence of an initial flow rate followed by the existence of a lower pulse flow rate does not constitute a teaching of a comparison of the two flow rates. Second, Petitioner has not established that the “initial flow rate” is a “threshold.” As discussed above, we construe “flow rate threshold” in the context of claim 1 to mean a flow rate value that an actual flow rate must drop below for a threshold amount of time in order for a second valve associated with a second well to be opened. See Section II.C. Ciezobka does not teach that a measured flow rate must drop below the initial flow rate or any other specific flowrate before one of valves 218 or 219 is opened. Instead, the valve is opened after a specific period of time and without comparing the actual flow rate to the initial flow rate. See Ex. 1037, 12:8– 12 (teaching that a pressure pulse is created by closing valve 219 “for a short period of time” ranging from 1 minute to 1 second, preferably 10 seconds). Indeed, opening valve 218/219 causes flow rate drop to one of the wells; it does not occur as a result of the flow-rate drop.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,401,779 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00638 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–11 and all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 23–35; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the associated litigation . . . the grounds raised in the Petition for IPR or any other grounds that could have reasonably been raised before the PTAB in this proceeding” (Paper 7), we do not discretionarily deny institution under Fintiv.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“surface. Patent Owner passes over the disclosure in Kim’s Figure 5b, which appear to depict the claimed big toe-to-little toe slope when the golfer is attempting a swing. Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995), a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). In addition, Figures 1, 2, and 3a of Kim appear to show an incline from the toe to heel (as is typical in shoes). See also Ex. 1005 ¶ 27 (“Except for the outsole 10 including the inclined lower surface 12, the golf shoe 100 of the present invention is substantially the same as conventional golf shoes.”). Thus, on this record, we are persuaded that Kim sufficiently discloses the slopes required by claim 1. Reviewing the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Kim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“2. Analysis Patent Owner argues that Kim does not disclose the slopes required in independent claim 1. Prelim. Resp. 35–40. Patent Owner focuses its analysis on Figure 5a, however, which depicts the golfer standing on a hard surface. Patent Owner passes over the disclosure in Kim’s Figure 5b, which appear to depict the claimed big toe-to-little toe slope when the golfer is attempting a swing. Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995), a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). In addition, Figures 1, 2, and 3a of Kim appear to show an incline from the toe to heel (as is typical in shoes). See also Ex. 1005 ¶ 27 (“Except for the outsole 10 including the inclined lower surface 12, the golf shoe 100 of the present invention is substantially the same as conventional golf shoes.”). Thus, on this record, we are persuaded that Kim sufficiently discloses the slopes required by claim 1. Reviewing the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Kim.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes. Pet. 15 (citing Ex. 1002 ¶ 31). Patent Owner does not contest. Prelim. Resp. 17. Reviewing the ’760 patent and the cited prior art, we determine that Petitioner’s proposed level of skill is reasonable and adopt it for purposes of this Decision.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,064,760 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00636 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that claims 1 and 5 would have been obvious over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 22–34; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the associated litigation . . . the grounds raised in the Petition for IPR or any other grounds that could have reasonably been raised before the PTAB in this proceeding” (Paper 7), we do not discretionarily deny institution under Fintiv.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’786 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes. Pet. 15 (citing Ex. 1002 ¶ 31). Patent Owner does not contest. Prelim. Resp. 17. Reviewing the ’786 patent and the cited prior art, we determine that Petitioner’s proposed level of skill is reasonable and adopt it for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner proposes that the term “athletic positioning” in independent claim 5 should be construed to mean “a heel section higher than the toe section and the outside edge of the toe section higher than the inside edge of the toe section.” Prelim. Resp. 20–22. However, independent claim 5 already appears to give the term “athletic positioning” this meaning, where it describes the various slopes. In particular, the claim recites that the toe section forms an angled support platform that has a first slope along the inner edge of the sole and a third slope along the outer edge of the sole, each of which extend from the toe to the heel. Accordingly, Patent Owner’s proposed construction appears unnecessary in view of the claim. In sum, we do not explicitly construe any limitations at this time.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,674,786 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 11, 2024 · IPR2024-00640 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–5, 7, 9–15, and 17, finding a reasonable likelihood that claims 1, 10, 11, 15, and 17 are obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Athalonz requests that we discretionarily deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel district court action. See Prelim. Resp. 21–34. Under Armour disputes that discretionary denial is warranted (Pet. 72–73), but nonetheless submits a Sotera stipulation (Paper 7) per our authorization. In light of Under Armour’s Sotera stipulation, we will not discretionarily deny institution under § 314(a). See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7.” slip op. at 4
- Skill levelSkill level board ownOther
“Under Armour proposes, and Athalonz agrees, that one of ordinary skill in the art would have had (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years’ experience designing or developing athletic shoes. Pet. 17–18 (citing Ex. 1002 ¶ 31); Prelim. Resp. 12 (accepting Under Armour’s proposed definition “[f]or present purposes”). At this stage, we see no reason to depart from Under Armour’s proposed definition, as it appears reasonable and consistent with the asserted prior art.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionOther
“Based on this description, one skilled in the art would likely understand “gradient compression factor” to mean that the insole material may have varying levels of compressibility. And, when read in the context of claim 1 (and as Under Armour correctly notes), it means that the second material is increasingly less compressible from the inner edge to the outer edge of the forefoot platform. See Pet. 14–15. Athalonz does not dispute that understanding of “gradient compression factor” as used in claim 1. See Prelim. Resp. 13–14 (stating that, “unless otherwise stated below, Patent Owner adopts Petitioner’s claim construction proposals for purposes of this preliminary response”). From our review, the parties’ agreed-upon construction of the term “gradient compression factor” appears consistent with the plain language of the claim and the specification. Thus, we adopt it for purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. “near an outer edge of the sole section” / “proximal to the outer edge of the shoe” / “near an inner edge of the sole section” / “proximal to an inner edge of the shoe” Athalonz argues “[t]here is no reason to apply inconsistent or different constructions” to the terms “near an” and “proximal to” as used in claims 1 and 10, apparently accusing Under Armour of doing so in the context of construing the term “heel platform.” Prelim. Resp. 21 (citing Pet. 15–16). But, aside from making that accusation, Athalonz provides no further explanation. See id. And, based on our review, it does not appear that Under Armour is construing those terms differently. Thus, without more as to exactly how Under Armour is applying an incorrect construction, we need not further address Athalonz’s argument. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,510,456 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 11, 2024 · IPR2024-00637 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1–5 on all asserted grounds, finding a reasonable likelihood that claims 1–5 are obvious over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Athalonz requests that we discretionarily deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel district court action. See Prelim. Resp. 20–32. Under Armour disputes that discretionary denial is warranted (Pet. 55), but nonetheless submits a Sotera stipulation (Paper 7) per our authorization. In light of Under Armour’s Sotera stipulation, we will not discretionarily deny institution under § 314(a). See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022), at 3, 7.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Athalonz first argues that Kim fails to disclose the “three slopes” limitation of claim 1. Prelim. Resp. 32–37. As for that limitation, claim 1 recites a first slope formed by the first and second heights, a second slope formed by the first and third heights, and a third slope formed by the second and third heights. See Ex. 1001, Figs. 3–5. Together, these three slopes form a big toe section that is lower than a little toe section, with both being lower than the heel section of the shoe’s sole. See id. In arguing that Kim fails to disclose the three slopes as claimed, Athalonz focuses on Kim’s Figures 3b and 5a. Prelim. Resp. 33–34. Those figures, however, depict a golfer standing “on a hard ground such as a paved road.” Ex. 1005 ¶ 38; see also id. ¶ 23. Athalonz overlooks the disclosure in Kim’s Figure 5b, which depicts the claimed big toe-to-little toe slope when the golfer is standing “on a green” in the “address position” of the golfer’s swing. Ex. 1005 ¶¶ 24, 35– 36. That is, although the golfer’s stance on the hard surface in Kim’s Figure 5a may not satisfy the claimed three slopes, the golfer’s stance on the softer grass surface in Kim’s Figure 5b most certainly does. See Hewlett- Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995), a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). Thus, we are persuaded that Kim sufficiently discloses the three slopes recited by claim 1.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Aside from “ordinary and customary meaning,” Under Armour does not propose any particular claim construction at this time. See Pet. 10. Athalonz proposes that the term “athletic positioning” in claim 1 be construed to mean “a heel section higher than the toe section and the outside edge of the toe section higher than the inside edge of the toe section.” Prelim. Resp. 17–20. We note, however, that claim 1 already appears to define the term by describing the various heights and slopes of the sole that provide “athletic positioning” of the foot. See Ex. 1001, 43:22–36 (“wherein the athletic positioning shape has . . .”). Thus, because Athalonz’s proposed construction appears unnecessary in view of the claim language, we need not explicitly construe this limitation any more than claim 1 already does.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“obvious over Dufour and Kim and as obvious over Rubin and Kim. See Pet. 2, 26–54. Like Kim, Dufour and Rubin also disclose golf shoes. See generally Exs. 1006, 1007. With respect to the Dufour/Kim challenge, Athalonz contends that Under Armour “mixes and matches [Dufour’s] separate embodiments” to show the claimed three slopes. Prelim. Resp. 43. In particular, Athalonz notes Under Armour’s reliance on Figures 9 and 10, as well as Figures 11 and 12, in Dufour. See id. at 44–46 (citing Pet. 35–36). According to Athalonz, these figures “are directed to two different embodiments with different features.” Id. at 42. Indisputably, Dufour states that Figures 11 and 12 are “another embodiment” compared to that of Figures 9 and 10. Ex. 1006, 3:26–29. That said, however, all of these figures share some common features, and to the extent Under Armour relies on a feature in one figure to better illustrate the same feature in another figure, we find nothing wrong with that approach. Thus, we are not persuaded that Under Armour’s reliance on various figures in Dufour amounts to any meaningful difference. Athalonz also contends that Dufour discloses the heel area of the shoe to be “at the same height as the big toe area.” Prelim. Resp. 42. But, aside from attorney argument, Athalonz does not persuasively explain how Dufour discloses that to be the case. See id. In contrast, Under Armour points specifically to Dufour’s Figures 11 and 12 to satisfy the slope limitation requiring the heel area to be higher than the toe area. See Pet. 32, 34–35. Indeed, the heel area visually appears to be higher than the toe area in Figures 11 and 12, as supported by the testimony of Under Armour’s expert. See Ex. 1002 ¶¶ 81–82. Thus, we reject the notion that the toe area in Dufour is the same height as the heel area. Athalonz’s arguments with respect to the Rubin/Kim challenge generally follow those made with respect to the Dufour/Kim challenge. See Prelim. Resp. 47–55. Thus, we find them equally unpersuasive for the reasons discussed above.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,013,291 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 11, 2024 · IPR2024-00639 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–5 and 8 across all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). The Director’s Memo states that “the PTAB will not discretionarily deny institution . . . in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). Petitioner stipulates that it “will not pursue in the associated litigation, Athalonz, LLC v. Under Armour, Inc., Civil Action No. 2:23-cv-00193-JRG (E.D. Tex.), the grounds raised in the Petition for IPR or any other grounds that could have reasonably been raised before the PTAB in this proceeding.” Paper 7, 1. The stipulation is similar to that provided in Sotera. Accordingly, pursuant to the Director’s Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–5 and 8 of the ’768 patent on all presented challenges. 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes.” Pet. 20–21 (citing Ex. 1002 ¶ 30). According to Petitioner, “the claims are obvious in view of any reasonable definition of a [person of ordinary skill in the art].” Id. at 21. “Patent Owner reserves the right to dispute Petitioner’s definition if an [inter partes review] is instituted” and argues that the “preliminary response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill.” Prelim. Resp. 16 (citing Pet. 20–21). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner’s quoted portion of the ’768 patent states that: The integrated sole 10 and insole 12 is comprised of one or more materials that provides a more compressible area towards the big toe/ball of foot area and increasingly less compressible away from the big toe/ball of foot area to facilitate an athletic position. . . . For example, the integrated sole and insole may include a rigid material as an outersole (e.g., a sport specific bottom) to provide a base. On top of the base, the integrated sole and insole includes one or more varying compressible materials. For example, the next layer is a single resilient material (e.g., rubber, gel, foam, synthetic material, etc.) of varying density to provide a compressible gradient. As another example, the next layer includes a plurality of materials, each having a shape to collectively provide the athletic positioning shape. In addition, at least some of the materials have a different level of compressibility to facilitate the compressible gradient. Ex. 1001, 27:47–67 (emphases added). Based on this description, one of ordinary skill in the art would have likely understood “gradient compression factor” to mean that the insole material may have varying levels of compressibility. And, when read in the context of claim 1, it means that the second material is increasingly less compressible from the inner edge to the outer edge of the forefoot platform. See Pet. 17–18. Patent Owner does not dispute that understanding of “gradient compression factor” as used in claim 1. See Prelim. Resp. 18. From our review, the parties’ agreed-upon construction of the term “gradient compression factor” appears consistent with the plain language of the claim and the Specification. Thus, we adopt it for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,375,768
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.