- Tesla, Inc. v. Graphite Charging Company, LLCAll claims unpatentablePTAB · Jul 31, 2025 · IPR2024-00387 · APJ Ken B Barrett · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1, 4–8, 11–15, and 18–20 over Kimura; claims 2, 5, 9, 12, and 16 over Kimura and Hotta; claims 3, 10, and 17 over Kimura and King.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We understand Petitioner’s phrase “experience working on software and/or hardware used to manage charging processes for electric vehicles” to encompass data processing systems similar to that proposed by Patent Owner, but with a slightly narrower area of application. We determine that Petitioner’s definition, as set out in the block quote above, is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For the purposes of this decision, we apply Petitioner’s definition, as block quoted above, of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same. Cf. Pet. Reply 15 (Petitioner asserting that “[Patent Owner] takes issue with the level of ordinary skill in the art . . ., but never argues that the level impacts how the Board should understand the arguments. Petitioner’s positions apply regardless.”).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“We are not persuaded that the Specification evidences a clear intent by the patentees to redefine (either explicitly or by implication) or to otherwise narrow the scope of the claim terms “request” and “response,” as Patent Owner urges. The statements in the Specification upon which Patent Owner relies are referring to “Request 414” and “Response 418.” See PO Resp. 27 (quoting Ex. 1001, 12:3–4, 12:12–14). As indicated by the reference numbers, the Specification is discussing a specific request and a specific response in the context of Figure 4, which is described as depicting “an illustrative embodiment.” See Ex. 1001, 10:51–53 (“FIG. 4 is a system for managing a charging process of an electric vehicle in accordance with an illustrative embodiment.”), 12:1–19, Fig. 4. By stressing the illustrative nature of the embodiment of Figure 4, the patentees indicated an intent for it to not be limiting. See also Ex. 1001, 15:44–47 (the Specification stating: “The description of the present invention has been presented for purposes of illustration and description, but is not intended to be exhaustive or limited to the invention in the form disclosed.”); Hill-Rom Servs., Inc., 755 F.3d at 1373 (“[T]hose terms [including, datalink 39] are used synonymously only in describing a particular numbered component in the figure depicting the preferred embodiment, and never in describing the datalink of the invention generally.”). At oral argument, Patent Owner’s counsel, relying on the opinion of Dr. Cameron, argued that a person of ordinary skill in the art would “read the definition without the reference numbers.” Tr. 43:23–44:9. Thus, we understand Patent Owner to argue that the Specification provides an explicit definition when one reads out a portion of the Specification—converting, for example, “Request 414 is a message” to “Request is a message.” This is not persuasive as it involves editing the evidence to conform to Patent Owner’s argument, rather than an argument supported by the Specification as written by the patentees. Patent Owner does not direct us to any portion of the Specification that clearly defines “request” and “response” generally or, for example, uses phrasing implying that those terms are defined for “the present invention.” See, e.g., Hill-Rom Services, Inc., 755 F.3d at 1372 (“For example, we have held that disclaimer applies when the patentee makes statements such as “the present invention requires . . .’ or ‘the present invention is . . .’ or ‘all embodiments of the present invention are . . . .’”); Astrazeneca, 384 F.3d at 1339 (discussing defining by implication and determining that the “specification’s statement that ‘[t]he solubilizers suitable according to the invention are defined below’ provides a strong signal of lexicography.”).” slip op. at 17
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We fail to discern a clear disparagement of the use of signals in the Specification that would justify excluding signals from the scope of the claimed invention. The Specification does not mention in these excerpts the use of signals, and thus does not characterize “using signals as less ‘complete, flexible, and interoperable,’” as Patent Owner impliedly argues. PO Sur-reply 11. The Specification characterizes “the most rudimentary charging scenarios” as including situations such as a car owner merely plugging the electric vehicle into a common electric outlet at the owner’s house, and suggests that illustrative embodiments are an improvement in that they apply to “much broader and more complex sets of circumstances than this simple scenario.” See Ex. 1001, 6:60–7:2. An example of a “complex transaction[]” is the car owner using a charging station located away from the owner’s house and being required to pay for the charge. See id. at 7:2– 11. To the extent there is any disparagement, it is merely of the simple scenario of the owner plugging the car into the standard household outlet. Cf. Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1336 (Fed. Cir. 2009) ([T]his court also recognizes that disparaging comments alone do not necessarily show a manifest or express disavowal of the criticized subject matter.”). Additionally, Patent Owner does not direct us to any portion of the Specification that indicates, for example, that the use of messages is a very important feature of the claimed invention and that alternatives (e.g., signals) are disparaged. See Hill-Rom Servs., Inc., 755 F.3d at 1372 (citing Inpro II Licensing, S.A.R.L., 450 F.3d at 1354–55); see id. at 1377 (holding that there is no disavowal or lexicography where “[t]here is no language that extolls the virtues of interfaces that both send and receive messages or language that disparages interfaces that only send messages.”).” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Sur-reply 15 (citing Ex. 1021, 161:5–21). Patent Owner overstates that testimony, which is that “[t]here’s actually disincentive for using messages all together.” Ex. 1021, 161:17–18. Regardless, even if correct, the existence of some disincentives does not necessarily negate a motivation to make the proposed combination. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.”). We find that Petitioner’s assertion—that a person of ordinary skill in the art would be motivated by a desire to assure a safe and commercially-desirable system (Pet. 53)—to have rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Patent Owner argues that Dr. Cameron “explained [that] . . . it would not be simple because Hotta uses two-stage charging subroutines.” PO Sur-reply 16 (citing Ex. 2005 ¶ 118). We disagree with Patent Owner’s characterization of Dr. Cameron’s testimony. The cited paragraph 118 states that Hotta’s figures depict “two-stage charging subroutines different from both the ’391 patent and Kimura,” and that there are “fundamental differences.” Ex. 2005 ¶ 118. Dr. Cameron does not go so far as to opine that combining the teachings as Petitioner’s proposes would not be considered simple by a person of ordinary skill in the art. See id.; see also Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“Leapfrog presents no evidence that the inclusion of a reader in this type of device was uniquely challenging or difficult for one of ordinary skill in the art.”). Dr. MacCarley, on the other hand, credibly testifies that “making use of Hotta’s command keys in Kimura’s system . . . would have been a simple substitution of one known element (Kimura’s lightly- described main switch) for another known element (Hotta’s command keys) to achieve predictable results (a charging process that can be stopped by pressing Hotta’s charging stop command key . . .).” Ex. 1009 ¶ 147. We credit Dr. MacCarley’s testimony over that of Dr. Cameron’s because it is consistent with a sufficiently reasoned rationale of a simple substitution and is supported by the references.” slip op. at 48
Patent outcomesUS 8,103,391 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,103,391 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 16, 2025 · IPR2025-00144 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because neither obviousness ground showed a reasonable likelihood of establishing claims 1–20 were unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“III. CONCLUSION The Petition fails to show there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. Accordingly, we deny the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 23
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“claim 15). We agree that the Specification supports Patent Owner’s construction. Although Petitioner bases its construction on extrinsic evidence, Petitioner argues that its construction “is consistent with” the intrinsic evidence, which, according to Petitioner, “indicates a sole is optional.” Pet. 31. A sole is optional, Petitioner argues, because the Abstract of the ’511 patent states that “[t]he footwear may include an upper and a sole structure.” Pet. 31 (quoting Ex. 1001, Abstr. (Petitioner’s emphasis)). We are not persuaded. Petitioner reads too much into the sentence it quotes from the Abstract and its use of the word “may.” Indeed, by Petitioner’s logic, both the upper and the sole structure would be optional and footwear would lack any required structure. Petitioner also argues that “[o]ther intrinsic evidence” supports its construction. Pet. 31–32 (citing Ex. 1053, 4:55–58; Ex. 1002 ¶92). The alleged intrinsic evidence, however, is an unrelated patent, US 2,675,631, which purportedly was cited during the prosecution of the ’511 patent. Id. This argument is undeveloped by Petitioner. First, Petitioner fails to substantiate that US 2,675,631 is cited in the prosecution history, merely asserting it as fact without pointing to supporting evidence. See id. (no citation to the prosecution history provided). Further, even assuming US 2,675,631 is cited in the prosecution history of the ’511 patent and thus part of the intrinsic evidence,8 Petitioner fails to show that it is probative of 8 The Federal Circuit has held that “[t]he prosecution history, which we have designated as part of the ‘intrinsic evidence,’ consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317 (emphasis added). what the inventors of the ’511 patent meant by “article of footwear.” Petitioner points out that the inventor of US 2,675,631 considers “knitted footwear” as encompassing “hose, golf hose, three-quarter hose, half-hose and socks” but does not explain why such meaning should be incorporated into the ’511 patent. Ex. 1053, 4:55–58 (partly quoted at Pet. 31–32). US 2,675,631 is titled “Footwear Article of The Slipper-Sock Type.” Ex. 1053, Title. As is evidently clear from the specifications of both patents, the ’511 patent and US 2,675,631 are directed to different types of footwear within the broader (dictionary) definition cited by Petitioner. Ex. 1022, 67, 88. Patent Owner also proffers testimony from Dr. Pastore that a person” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“We construe the preambles of claims 1 and 15 to be limiting, as guided by case law. It is clear that the preambles are being used to help define the invention, i.e., an upper for an article of footwear in the case of claim 1 and an article of footwear having an upper in the case of claim 15. See Bell Communications Research Inc. v. Vitalink Commcations Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[A] claim preamble has the import that the claim as a whole suggests for it. In other words, when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the 9 Claim 15 is similar to claim 1, and, in challenging claim 1, Petitioner merely refers back to and relies exclusively on its analysis for claim 1. See Pet. 84 (Ground 1), 124–125 (Ground 2). Thus, although we may we discuss claim 1 alone at times, our analysis applies equally to claim 15. one the patent protects.”). Moreover, the bodies of both claims recite “the upper” which, in the case of claim 1, derives its antecedent basis directly from the preamble and, in the case of claim 15, relies on the preamble’s article of footwear which is recited as comprising an upper. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“However, it is not enough that Clark discloses a sole. See KSR Int'l, 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Petitioner must show that it would have been obvious to modify Cusinato to include a sole. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). On this aspect, Petitioner fails. The Petition summarily states that “a POSITA would consider it obvious to add a sole to Cusinato’s ‘boot-like’ form” but – as noted by Patent Owner – the Petition does not explain why. Pet. 51; see Prelim. Resp. 35 (“The Petition is silent with respect to any alleged motivation.”). Dr. Adanur’s testimony does not add much. He summarily opines that “it would be obvious to add a sole to Cusinato’s ‘boot-like’ form to provide cushioning and protection.” Ex. 1002 ¶160.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,918,511 - Skechers U.S.A., Inc. v. Nike, Inc.InstitutedPTAB · Jun 12, 2025 · IPR2025-00142 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1, 5–9, and 11–17 because Skechers showed a reasonable likelihood that claims 1 and 11 were obvious over Dua, Hong, and/or Choi.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“Here, it is undisputed that Skechers was neither a party to the earlier lululemon IPR nor had ever before challenged the claims of the ’484 patent. Instead, in an attempt to demonstrate a significant relationship between Skechers and lululemon that might justify application of the General Plastic framework, Nike’s sole argument is that “Skechers created a relationship with lululemon by openly admitting that it used lululemon’s petition as a roadmap” and that “[t]his admitted roadmapping creates an implicit relationship between Skechers and lululemon.” PO Sur-Reply 2. We reject the notion that “roadmapping” alone creates a significant relationship. As noted in Videndum, a second petitioner’s reliance on a first petitioner’s earlier-filed petition, “even ‘as a menu or road map,’ is not sufficient to create a significant relationship that favors denial under the first General Plastic factor.” Videndum, at *2 (emphasis added); see also Ford, at *2 (rejecting patent owner’s argument that Ford’s use of prior Volkswagen and Dell IPRs “as a roadmap for its Petition” was sufficient to create “an ‘implicit’ relationship”). In other words, absent some evidence of a non-mandated7 collaboration between Skechers and lululemon (such as proof of a licensing or other technology-sharing agreement regarding the accused product), Skechers’ use of arguments and evidence similar to those in the earlier lululemon IPR does not create a significant relationship. Nor does it appear that Nike could reasonably establish such a relationship given that Skechers is a direct competitor of lululemon, was sued on an entirely different product than lululemon, and was not sued until after lululemon had already sought inter partes review of the challenged patent. See Pet. Reply 1–2 (citing Exs. 1065, 1066).” slip op. at 6
- Other 314aInstitution denied discretionary otherDenied
“In particular, the Board has already performed a detailed analysis of the ’484 patent, including construing the claim terms and applying two of the prior art references—Dua and Hong—that form the primary ground here. As such, the Board is much further along in understanding the challenged claims and the parties’ dispute over their validity than the district court in the parallel litigation. And even if the Final Decision in the lululemon IPR is reversed or remanded on appeal, the Board’s considerable experience with the relevant issues remains. Thus, the fact that the Board has already expended considerable time and resources in deciding the validity of the challenged claims, whereas the district court has not, weighs heavily in favor of institution.10 Indeed, in staying the parallel litigation, the district court expressly recognized the lack of any significant investment by the parties or the court— - “[D]iscovery is still in the early stages.” - “The parties . . . have not yet taken any depositions, any third party discovery, or any expert discovery. . . . Accordingly, this case remains in its early stages.” - “Despite [the parties’] significant work [on claim construction], . . . there is more work ahead of the parties and the Court than behind.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Skechers proposes that one skilled in the art would have had “at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry” or “at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles.” Pet. 10 (citing Ex. 1002 ¶ 68). Nike agrees. See Prelim. Resp. 11 (“For purposes of this Preliminary Response, Nike applies Skechers’ definition of a person of ordinary skill in the art (‘POSITA’).” Accordingly, we adopt the level of ordinary skill in the art as proposed by Skechers.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Skechers notes that “[d]uring the parallel litigation, the parties agreed that the term ‘central portion having a domed, three-dimensional structure’ means ‘central portion having a domed, three-dimensional structure formed during the flat-knitting process, and not afterward’” and that “in the lululemon IPR . . . the Board adopted [this] as its construction.” Pet. 11 (citing Ex. 1005, 2; Ex. 1021, 6) (emphasis added). Nike agrees with that construction. See Prelim. Resp. 11–12 (quoting Pet. 11). Thus, consistent with the parties’ agreement and the Board’s construction in the lululemon IPR, we construe the claimed “central portion having a domed, three-dimensional structure” as meaning it is formed during the knitting process, and not afterward.” slip op. at 11
Claim constructionDiscretionary denialPatents in suitUS 9,730,484 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims under §325(d), finding the petition relied on previously presented art and did not show material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“single §102 rejection based solely on Nishida.” Pet. § 325(d) Reply 3 (emphasis omitted). Specifically, Petitioner argues that: The examiner seemingly failed to consider how it would have been obvious to combine Nishida (or any other reference of record, such as Orei) with knowledge in the art, including the fact that it was “well known to use double needle-bar raschel machines . . . to knit textile elements simultaneously with surrounding textile structures” (Pet., 37–38), and that simultaneous knitting would be obvious because it would “increase yield and reduce manufacturing steps,” as explained in the Petition and supporting evidence. See Pet., 42–44. Id. (alterations in original); see also id. at 4 (Petitioner arguing that the Examiner clearly erred for “failing to seemingly even consider if it would 10 We quote here, to give context to “otherwise,” both aspects that a petitioner must demonstrate in order to meet its burden. In order to determine whether Petitioner has met its overall burden, we need not and do not reach the issue of whether “the previously presented art [Nishida] teaches the limitations of the challenged claims.” Ecto World, Paper 13 at 6. have been obvious to combine Nishida with other prior art, or to implement Nishida using well-known techniques for simultaneously knitting textile elements and surrounding structures having differing textures.”). We do not find this argument persuasive. The cited portion of the Petition is the contention that Orei—not Nishida—would render obvious claim 1. See Pet. 37–38, 42–44 (Ground 1A). Thus, Petitioner has not shown persuasively that the Examiner erred in not making an obviousness rejection based on Nishida because the disputed limitation was purportedly well-known. Additionally, Petitioner’s support for the assertion that this limitation is well-known is not persuasive. The Petition parenthetically quotes from a source stating that plural “articles . . . can be simultaneously knitted side-by-side,” not that an article (a textile element) and surrounding textile structure are known to be simultaneously knitted. See Pet. 38 (quoting Ex. 1050, 201) (emphasis added); see also Pet. § 325(d) Reply 3 (Petitioner quoting its own argument and characterizing it as a “fact” (“The examiner seemingly failed to consider . . . the fact that it was ‘well known . . . “)).” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,266,749 - New Balance Athletics, Inc. v. Nike, Inc.Institution deniedPTAB · Jun 9, 2025 · IPR2025-00020 · APJ Matthew S Meyers · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 11–15 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). 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 “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of the instant Decision, “Nike applies New Balance’s definition for a person of ordinary skill in the art.” Prelim. Resp. 11. Based on the record presented, we determine that Petitioner’s definition of a person of ordinary skill in the art is consistent with the scope and content of the ’932 patent and the asserted prior art, and, at this stage, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner acknowledges that it agreed to the constructions identified by Petitioner. Prelim. Resp. 12. Patent Owner also notes that it agreed to these proposed constructions in the Related Litigation. Id. at 13. However, Patent Owner argues that for purposes of this Preliminary Response, “no terms require construction.” Id. (citing Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)). Based on the record before us, we need not expressly construe any claim terms.” slip op. at 10
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“limitation would have been obvious because one of ordinary skill in the art would have understood that Becker’s stiffer outer lining would have “restrict[ed] the mobility of the ankle, “not allow[ed] for tightening,” and known to “hav[e] the inner lining extend up above the outer lining.” Pet. 33 (citing Ex. 1003 ¶¶ 122–123). Petitioner relies on conclusory reasoning grounded in hindsight to assert that it would have been obvious for “the skin layer [to be] absent from the ankle part of the knitted component,” as required by limitation [11.d]. The difficulty with Petitioner’s position is that neither Becker nor the other cited references disclose, teach, suggest, or otherwise provide motivation for “the skin layer being absent from the ankle part of the knitted component,” as claimed.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,898,932 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 9, 2025 · IPR2025-00151 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–27 unpatentable on the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’636 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“25:5 (limitation 1a1: “a portion of the knitted component defining the upper”). “Where a claim lists elements separately, ‘the clear implication of the claim language’ is that those elements are ‘distinct component[s]’ of the patented invention.” Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (quoting Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004)) (alteration in original). Thus, the claim language suggests that the “integral knit tongue” is a component distinct, at least to some degree, from the “upper.” See also Ex. 1001, 2:27–28 (the Specification stating that “[a] knitted component including the upper and an integral knit tongue is incorporated into the article of footwear.”). Limitation 1d reinforces this understanding by requiring the tongue to be joined to a portion of the throat area of the upper. See id. at 6:35–38 (the Specification indicating that the “throat area” is an area of the upper); cf. Ex. 2014, 18–19 (defining “Throat”: “The main opening of a shoe extending from the vamp [(the front part of a shoe upper that covers the toes and part of the foot)] to the ankle.”). In addition to suggesting that the tongue is a component distinct from the upper, the claim language indicates that the integral knit tongue extends through a throat area. See Ex. 1001, 25:10–11 (limitation 1b: “an integral knit tongue . . . extending through a throat area of the knitted component”). With that context, we turn to the parties’ arguments.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentable
“claim language does not specify it, both parties contend that the “portion of the knitted component” constitutes the majority of the upper. See Pet. 25– 26, 30 (Petitioner applying in this ground that which it characterizes as Patent Owner’s claim construction position); Prelim. Resp. 43 (Patent Owner noting that the Specification states that “a majority of upper 120 is formed from a knitted component 130,” and contending that limitation 1a1 means that “a majority of the upper must be knitted.” (quoting Ex. 1001, 6:57–59)). Nevertheless, we determine for the following reasons that Petitioner has not shown sufficiently that central textile element 60 of Dua-956 defines an upper within the meaning of the claims. See Pet. 26. Petitioner contends that, “[w]ith respect to what defines the upper, the ’636 patent discloses that the ‘upper generally extends over the instep and toe areas of the foot, along the medial and lateral sides of the foot, under the foot, and around the heel area of the foot.’” Pet. 27 (citing Ex. 1001, 1:44–46, 6:66–67). Petitioner reasons that, “[a]s such, the ’636 patent describes the upper as extending around six parts of the foot: (1) the instep area, (2) the toe area, (3) the medial side, (4) the lateral side, (5) under the foot, and (6) the heel area.” Id. Applying this reasoning to the reference, Petitioner contends that, “[o]f the six upper parts identified in the ’636 patent, only two of them—the medial and lateral sides—are not formed by the central textile element 60,” and therefor “the majority of the parts of the upper are formed by the central element 60.” Id. at 30 (citing Ex. 1002 ¶¶ 103–109). Petitioner provides an annotated versions of Figures 8B and 8C of Dua-956, reproduced below, to depict its contentions. Id. at 30. Above are Figures 8B and 8C of Dua-956—which are, respectively, perspective views depicting a second step and a third step in assembling the article of footwear (Ex. 1029, 3:41–45)—with central textile element 60 shaded green. As Petitioner concedes (Pet. 30) and as the annotated figures above show, central textile element 60 does not form the medial and lateral sides of the footwear. Thus, even if central textile element 60 constitutes the majority of parts of the upper, the sides of the upper remain undefined by the central textile element. Petitioner does not explain adequately how the upper is defined when the side components are missing. We determine that Petitioner has not demonstrated adequately for institution that Dua-956 discloses “a portion of the knitted component defining the upper,” as recited in independent claim 1.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable
“Petitioner contends that “both upper 70 and 30' are constructed as a single, unitary knit element that defines the upper, and it would have been obvious to construct upper 30 in the same manner.” Pet. 65. Petitioner next turns to Horii, asserting that “Horii discloses “shoes 1 that are characterized by the fact that the entire upper is constructed of a single piece of upper member 2 that is made through weft knitting or circular knitting.’” Id. at 67 (citing Ex. 1017, 9) (emphasis omitted). Petitioner reasons that “[a] POSITA would have been motivated to manufacture Dua-956’s upper 30, for example, using the multilayer, single fabric of Horii because Horii’s single-piece knit upper would have provided upper 30 with a seamless structure.” Id. at 68. We disagree with Petitioner’s assertion that “[c]onstructing Dua-956’s upper 30 as a single, unitary knit component would not materially change the analysis under Ground 1A.” Pet. 70. In Ground 1A, Petitioner contends that “‘forward portion 61’ of the central textile element 60 is an integral knit tongue that extends through a throat area of the knitted component in the assembled upper 30.” Id. at 34. During the assembly of footwear 10, forward portion 61 is flipped over the top of the footwear and the separate textile elements 40 and 50 (the sides of the footwear) are stitched to the lateral and medial edges (64a and 64b) of forward portion 61—the purported tongue. See Ex. 1029, 9:5–11, Figs. 8B, 8C. Petitioner does not explain adequately how, when modifying the embodiment used in Ground 1A to have a seamless top portion, the purported integral knit tongue is retained in that combination. See Pet. 70 (Petitioner asserting that the proposed combination would still have an exterior surface, an inner surface, lace elements 33, channels 44/54, and loops 35, “along with the other structures identified under Ground 1A,” but not specifically discussing the purported integral knit tongue.). We determine that Petitioner has not demonstrated a reasonable likelihood of demonstrating that claims 1–6, 8–17, and 19–27 would have been obvious over Dua-596 alone or in combination with Horii.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,510,636 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 9, 2025 · IPR2025-00150 · APJ Ken B Barrett · IPR · Institution
The Board denied institution because Skechers did not show a reasonable likelihood that claims 1–23 were unpatentable, principally because the asserted art did not disclose the construed integral knit tongue.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’562 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’562 patent in February 2012 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 22. Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Nike applies Petitioner’s proposed level of skill in the art.” Prelim. Resp. 15. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“inquiries.” Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003). “The first step in both analyses is a proper construction of the claims . . . [and t]he second step in the analyses requires a comparison of the properly construed claim to the prior art.” Id. Although an explicit claim construction analysis by a petitioner is not required in every case, a petition nonetheless must identify how the challenged claims are to be construed and how, as so construed, they are unpatentable under the statutory grounds asserted. 37 C.F.R. § 42.104(b)(3)–(4). And, being part of a prima facia case, such an analysis is part of Petitioner’s burden to demonstrate a reasonable likelihood of prevailing on its patentability challenges. Petitioner has failed to satisfy the threshold burden for every ground based on this construction.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We do not find Petitioner’s contentions regarding the two annotated figures to be persuasive. First, those contentions, and the cited opinions of Dr. Adanur, are based on a claim construction that, as discussed above, we reject and for which neither party advocates. Second, Petitioner does not explain adequately why a person of ordinary skill in the art would discern, even with Petitioner’s added red ovals, a tongue distinct from the upper and tongue extending through the throat area. We also do not find persuasive Petitioner’s contentions regarding differing textures. See Pet. 32–33. Even if differing textures could rise to the level of distinguishing an integral knit tongue from the upper, the purported tongue texture 48" is not confined to the area identified by Petitioner as the tongue. See Pet. 31 (annotated Figure 11, reproduced above). For example, texture 48" outside of Petitioner’s oval appears to wrap approximately halfway around the ankle opening, which is not argued to be consistent with an ordinary artisan’s understanding of a tongue. Or, put another way, there is no indication that the portion of the 48" texture within Petitioner’s red oval, which purportedly represents the tongue, is distinguishable from the remaining portion of the 48" texture outside of the red oval. We are not persuaded that Petitioner has demonstrated a reasonable likelihood of proving that a person of ordinary skill in the art would consider the relatively large area depicted as having texture 48" to be an “integral knit tongue.” In light of the above, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and its dependent claims 2–4 as anticipated by Dua-592.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,060,562 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · May 27, 2025 · IPR2025-00143 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–20 obvious over either asserted combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For this reason, the Petition fails to demonstrate that the asserted prior art teaches, or renders obvious, the subject matter of claims 1 and 12. Thus, there is not a reasonable likelihood of Petitioner prevailing as to either of the independent claims. 2. Dependent Claims The remaining claims, namely claims 2–11 and 13–20, all ultimately depend from either claim 1 or claim 12. Thus, there is not a reasonable likelihood of Petitioner prevailing as to any of the dependent claims. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.”).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“[c]onventional articles of athletic footwear include two primary elements, an upper and a sole structure.” Ex. 1001, 1:3940 (cited at Prelim. Resp. 16). Patent Owner also cites its statement that “[t]he primary elements of footwear 10 are depicted in FIG. 1 as being a sole structure 20 and an upper 30.” Ex. 1001, 4:62– 63 (cited at Prelim. Resp. 16). Additionally, Patent Owner points out (correctly) that every figure of the ’781 patent “depict[s] shoes[] or textile elements that are designed to be incorporated into shoes.” Prelim. Resp. 16. Finally, Patent Owner points to surrounding claim language in both of independent claims 1 and 12 that supports its construction. With respect to claim 1, Patent Owner points out that it “recite[s] an ‘upper’ that is ‘for an article of footwear.’” Id. (quoting claim 1). With respect to claim 12, Patent Owner points out that it “recite[s] . . . an ‘article of footwear comprising’ an ‘upper.’” Id. (quoting claim 12). We agree that the Specification supports Patent Owner’s construction. slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“A claim’s preamble is not necessarily limiting. See, e.g., Pitney Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). The Petition does not take a position as to whether the preambles of claims 1 and 12 are limiting. See Pet. 53 (“If the preamble [of claim 1] is limiting, Cusinato, Bellak, and Dua each disclose an upper for an article of footwear.”), 85 (claim 12 analysis referring back to claim 1 analysis). We construe the preambles of claims 1 and 12 to be limiting, as guided by case law. It is clear that the preambles are being used to help define the invention, i.e., an upper for an article of footwear in the case of claim 1 and an article of footwear having an upper in the case of claim 12. See Bell Communications Research Inc. v. Vitalink Commcations Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[A] claim preamble has the import that the claim as a whole suggests for it. In other words, when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.”). Moreover, the bodies of both claims recite “the upper” which, in the case of claim 1, derives its antecedent basis directly from the preamble and, in the case of claim 12, relies on the preamble’s article of footwear which is recited as comprising an upper. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”).” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As to this hypothetical construct, Petitioner proposes the following: A person of ordinary skill in the art (“POSITA”) in the field of the '781 [patent] in March 2004 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. See EX1002, ¶78. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. Id. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person's working experience compensates for any such lower educational level, or vice versa. Id. Pet. 36. Patent Owner does not oppose Petitioner’s proposal. Prelim. Resp. 14– 15. Thus, for purposes of deciding the Petition, we adopt Petitioner’s proposal.” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,986,781 - Nokia Of America Corporation / Ericsson Inc. et al. v. General Access Solutions, Ltd.No claims unpatentablePTAB · Apr 14, 2025 · IPR2023-01416 · APJ Ken B Barrett · IPR · Final written decision
The Board held claims 1–15 and 18 not unpatentable; the petition failed to prove the asserted anticipation and obviousness grounds, including failure to establish WiMAX as prior art.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“filed with the Office a statutory disclaimer disclaiming method claims 16, 17, 19, and 20. See Ex. 2007; see also Tr. 33, 21:1–12 (Patent Owner’s counsel informing the Board that the disclaimer had been filed in the USPTO Patent Center, and Petitioner’s counsel having no objection to the filing of the disclaimer as an exhibit in this inter partes review); Tr. 34:19 1 Petitioner identifies Nokia of America Corporation, Ericsson Inc., and T-Mobile USA, Inc. as real parties in interest. Pet. 72. 2 Patent Owner identifies General Access Solutions, Ltd. as the real party in interest. Paper 6, 1. (Patent Owner’s counsel stating, “General Access has disclaimed method Claims 16, 17, 19, and 20.”). We treat disclaimed claims as if they never existed. See Facebook, Inc. v. SKKY, LLC, CBM2016-00091, Paper 12 at 8 (PTAB Sept. 28, 2017) (expanded panel) (precedential) (“The Federal Circuit has held consistently that claims disclaimed under § 253(a) should be treated as though they never existed.”) (citing, inter alia, Vectra Fitness, Inc. v. TWNK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in section 253 to mean that the patent is treated as though the disclaimed claims never existed.”); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996) (“A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent.”)). Accordingly, the remaining claims challenged in this proceeding are apparatus claims 1–15 and method claim 18.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“of both types of parameters to be stored in the same “device” is consistent with the claim language. The claim recites “a profile parameter storage device,” “said profile parameter storage device for storing [two parameter] values,” and refers to “the values stored at said profile parameter storage device.” Ex. 1001, 13:10–16. Accordingly, the claim language speaks of a single device for storing both types of parameters.12 And, Petitioner does” slip op. at 32
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“Id. “[A] work is not publicly accessible if the only people who know how to find it are the ones who created it.” Samsung Elecs. Co. v. Infobridge Pte. Ltd., 929 F.3d 1363, 1372 (Fed. Cir. 2019) (citing SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1196 (Fed. Cir. 2008) Application of Bayer, 568 F.2d 1357 (CCPA 1978)). Accordingly, in this case, Petitioner must demonstrate by a preponderance of the evidence that the WiMAX exhibit was disseminated or otherwise made available to interested ordinary artisans outside of the group that created the document. Petitioner has failed to satisfy that burden.” slip op. at 48
Patent outcomesUS 6,947,477 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,947,477 - Tiktok Inc. v. Ntech Properties, Inc.InstitutedPTAB · Mar 10, 2025 · IPR2024-01342 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–10 and all asserted grounds; it found a reasonable likelihood that claim 1 would have been obvious over Whitehead.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our review of the preliminary record, Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review on all challenged claims and all grounds asserted in the Petition. 37 C.F.R. § 42.108(a). However, Patent Owner calls into question some of Petitioner’s challenges.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“Petitioner contends that one motivation for combining would have been that Marcus ’904 includes additional disclosure of targeting media programming to specific users, which would lead to better customization of media programming by Cristofalo. Pet. 38 (citing Ex. 1002 ¶ 122). This assertion is vague and unexplained. Petitioner also asserts that Marcus ’904 provides “additional implementation details” on how final media programming is generated and formatted for display. Id. at 38–39 (citing Ex. 1002 ¶ 123). We fail to see, at this stage, how merely disclosing additional details would motivate a skilled artisan to combine references. If we were to agree with a proposed combination merely because one reference includes details another does not, this could “swallow all of patent law.” Cf. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (addressing patent eligibility). Finally, Petitioner contends that combining Marcus ’904’s advertising sources would unlock new revenue sources for Cristofalo. Pet. 39 (citing Ex. 1002 ¶ 124). Patent Owner argues that this rationale appears to be superfluous, since Cristofalo already discloses targeting advertising to users. Prelim. Resp. 26 (“Cristofalo’s receiving system ‘already’ assembles the programming with advertisements.”); see Pet. 38 (referring to Cristofalo’s “targeted advertising”). We tend to agree at this stage. Thus, we question Petitioner’s rationale to combine Cristofalo with Marcus ’904.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ definitions are similar, although we observe that Patent Owner proposes that the person of ordinary skill would have a bachelor’s degree or professional experience, whereas Petitioner proposes that such a person would have both a degree and experience. See also Ex. 2001 ¶ 17 (Patent Owner’s declarant, Dr. Goodrich, stating that “I note that my definition of a POSITA is similar to that of Dr. Almeroth.”).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[n]o express constructions are required.” Pet. 9. Patent Owner also proposes no express constructions. We agree that no claim terms require construction at this stage.” slip op. at 7
Claim construction§ 103 obviousnesscites AlicePatents in suitUS 8,886,753
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.