- Aroma360, LLC v. Air Esscentials, Inc.Some claims unpatentablePTAB · Oct 6, 2026 · IPR2025-00707 · APJ Eric C Jeschke · IPR · Final written decision
Claim 5 is unpatentable over Gao-2 and over Gao-2 with Goubet; claims 1, 3, 4, and 6–8 were not shown unpatentable on any ground, and substitute claim 17 was denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“As noted in the Decision on Institution, Petitioner’s proposed definition appears generally consistent with the record, including the prior art. See Dec. Inst. 8 (citing In re GPAC Inc., 57 F.3d at 1579). We remove the phrase “at least” in both listed options, however, as that phrase adds ambiguity. Further, Patent Owner has not argued at trial that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would have understood either the challenged patent or the prior art. In the analysis below, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution, as proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner propose explicit constructions for any claim terms. Pet. 16–17; PO Resp. 5–6. Based on the complete record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. 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 10
- Expert testimonyPetitioner expert creditedDecided for patent owner
“As an initial matter, the record here does not support any sound basis to disregard the entirety of Dr. Micklow’s Declaration for allegedly not reviewing the parties’ claim constructions. See Pet. Reply 2–3 (citing Ex. 1046, 115:15–18). Contrary to Petitioner’s argument, in the cited 11 This refers to the recitation in clauses 1F and 5F that the “diffusion assembly is disposed between said upper chamber and said lower chamber.” discussion, Dr. Micklow does not indicate that he applied an incorrect understanding of a claim term. Cf. Cordis Corp. v. Bos. Sci. Corp., 658 F.3d 1347, 1357–58 (Fed. Cir. 2011) (disregarding testimony “based on an incorrect understanding of the claim construction”), cited at Pet. Reply 1; see also Pet. Reply 3 (arguing that “Dr. Micklow’s opinion that the prior art does not render the claims obvious is premised on an interpretation of certain claim limitations that are inconsistent with both parties’ constructions” (emphasis added)). Instead, we read Dr. Micklow’s testimony as clarifying that he was not involved in claim construction at all and that, as stated, he “made [his] opinions based on what [he] read in the patents.” Ex. 1046, 112:11–12; see also id. at 115:15–18 (“I don’t know if I would even apply claim construction. I applied engineering principles to a document that had been published with the patent office.”).” slip op. at 12
- BurdenNot shown unpatentable
“referring to the same direction as the separation of the “upper chamber” and “lower chamber” (vertically in both Figure 6 of the challenged patent and Figure 1 of Goubet), we turn back now to Petitioner’s discussion of clause 1F, which includes the limitation at issue. There, Petitioner does not discuss why the “diffusion assembly” is allegedly “disposed between” the “upper chamber” and “lower chamber,” but instead, Petitioner discusses why a component of the “diffusion assembly”—the “atomizer assembly”—is allegedly “disposed between” the “upper chamber” and “lower chamber”: Pet. 39. In the end, we need not assess whether the “atomizer assembly” identified by Petitioner is “disposed between” the “upper chamber” and “lower chamber” under the proper construction of that term (which, again, we need not and do not determine here) because the “disposed between” limitation does not involve the “atomizer assembly.” Instead, we find that, by failing to address why the identified “diffusion assembly” is “disposed between” the identified “upper chamber” and “lower chamber,” Petitioner has failed to provide persuasive evidence that Goubet discloses or suggests the “disposed between” limitation. Pet. 38–39 (discussing the claim language “said diffusion assembly is disposed between said upper chamber and said lower chamber” but only discussing the location of the “atomizer assembly”); see 35 U.S.C. § 316(e) (“In an inter partes review . . . , the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.”). For the reasons above, we find, based on the complete record, that Petitioner has not shown by a preponderance of the evidence that Goubet discloses or suggests the “disposed between” limitation.” slip op. at 22
Patent outcomesUS 10,092,918 mixedClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,092,918 - Aroma360, LLC v. Air Esscentials, Inc.All claims unpatentablePTAB · Oct 6, 2026 · IPR2025-00706 · APJ Eric C Jeschke · IPR · Final written decision
Claims 1, 4, and 7–10 are unpatentable as obvious over Goubet and anticipated by Gao; proposed substitute claims 20 and 21 are denied as indefinite and lacking written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“In the Response, Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner, but Patent Owner “reserves the right to address [the definition] should new issues materialize.” PO Resp. 6. Patent Owner did not address this issue in the Sur-reply. As noted in the Decision on Institution, Petitioner’s proposed definition appears generally consistent with the record, including the prior art. See Dec. Inst. 8 (citing In re GPAC Inc., 57 F.3d at 1579). We remove the phrase “at least” in both listed options, however, as that phrase adds ambiguity. Further, Patent Owner has not argued at trial that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would have understood either the challenged patent or the prior art. In the analysis below, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution, as proposed by Petitioner.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). At first glance, the language of the limitation at issue—which, again, recites “the compressed air and the operative fluid mix together in said mixing chamber to form the fluid dispersion”—would seem to require the “fluid dispersion” (under the stipulated construction) to be fully formed in the “mixing chamber.” In other words, the language of the limitation alone would seem to support Patent Owner’s proposed construction for the “form the fluid dispersion” limitation. But the claim construction analysis does not end with consideration of the claim language alone. Next, we turn to the Specification. The Federal Circuit has said that the specification “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Here, the discussion in the Specification of precisely the same language as in the limitation at issue strongly supports that “to form a fluid dispersion” in the limitation at issue requires only initial mixing of the compressed air and operative fluid in the mixing chamber, with further “formation” of the ”fluid dispersion” occurring downstream of the mixing chamber: More importantly, the “predetermined amount” of compressed air and the “preselected amount” of the operable fluid are initially mixed together in the mixing chamber 226 to form a fluid dispersion. The diffusion chamber 112" is further structured to facilitate the formation of a plurality of substantially uniform droplets, as defined hereinabove, in the fluid dispersion prior to discharge from the diffusion chamber 112" through discharge port 132. Ex. 1001, 10:62–11:2 (emphasis added) (discussing Figure 6), quoted, in part, at Pet. Reply 6–710; see also Ex. 1001, 5:64–6:4 (same language, except without double primes, in a discussion of Figures 1 and 2). To be sure, certain passages in the Specification could be read to indicate that a “fluid dispersion” must be fully formed in the “mixing chamber.” See, e.g., Ex. 1001, 6:11–12 (“More in particular, the suppression chamber 232 receives the fluid dispersion from the mixing chamber 226.”); see also id. at 7:22–33, 11:39–52 (both implying that a “fluid dispersion” is formed in the mixing chamber). But the passage block quoted directly above (and the similar one bridging columns 5 and 6) more directly addresses the issue at hand—i.e., the scope of “form the fluid dispersion”—by using the same” slip op. at 13
- Expert testimonyPatent owner expert discountedMixed
“As an initial matter, the record here does not support any sound basis to disregard the entirety of Dr. Micklow’s Declaration for allegedly not reviewing the parties’ claim constructions. See Pet. Reply 2 (citing Ex. 1046, 115:15–18). Contrary to Petitioner’s argument, in the cited discussion, Dr. Micklow does not indicate that he applied an incorrect understanding of a claim term. Cf. Cordis Corp. v. Bos. Sci. Corp., 658 F.3d 1347, 1357–58 (Fed. Cir. 2011) (disregarding testimony “based on an incorrect understanding of the claim construction”), cited at Pet. Reply 1. Instead, we read Dr. Micklow’s testimony as clarifying that he was not involved in claim construction at all and that, as stated, he “made [his] opinions based on what [he] read in the patents.” Ex. 1046, 112:11–12; see also id. at 115:15–18 (“I don’t know if I would even apply claim construction. I applied engineering principles to a document that had been published with the patent office.”).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (“Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’”) (citation omitted). Based on the complete record, we agree with Patent Owner that “Petitioner’s asserted motivation boils down to the conclusory statement that given Goubet and Kaiser, ‘it was well known in the field at the time of the invention that droplets of greater uniformity result in uniform droplet evaporation.’” PO Resp. 31 (quoting Pet. 59). We agree with Patent Owner that Petitioner’s discussion of the alleged reasons to combine (Pet. 59) is insufficient to support the proposed combination here. See Magnum Oil, 829 F.3d at 1380. Specifically, we are not persuaded that Kaiser’s teachings—which relate to combustion (Ex. 1014 at 43)—would have led one of ordinary skill in the art to the proposed modifications, which would allegedly “improve the smoothness (i.e., less harsh) of the aroma generated as the oil droplets evaporate in the surrounding airspace.” See Pet. 59 (emphasis added); White Pet. Decl. ¶ 251 (same); see PO Resp. 32 (“Rather, Dr. White merely describes the ability to achieve the effect as in the claimed patent, not why a [person of ordinary skill in the art] would look to the field of electrospray injection and combustion in mesoscale power-generation systems, using high-voltage electric fields to generate charged fuel droplets for controlled combustion in catalytic micro-combustors when considering atomization for scents.”). For these reasons, we determine, in light of the complete record, that Petitioner has not shown by a preponderance of the evidence that one of ordinary skill in the art at the time of the invention would have had reason to combine Goubet and Kaiser, as proposed. slip op. at 32
Patent outcomesUS 10,583,449 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 10,583,449 - Under Armour, Inc. v. Athalonz, LLCAll claims unpatentablePTAB · Sep 10, 2025 · IPR2024-00640 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–5, 7, 9–15, and 17 are unpatentable: claims 10, 11, 15, and 17 over Won, and claims 1–5, 7, 9, and 12–14 over Won and Talarico ’911.
RulingsFinal written decision- 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. 17–18 (citing Ex. 1002 ¶ 31). 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. For institution, we preliminarily adopted Petitioner’s proposal. Inst. Dec. 4. “For purposes of this proceeding, Patent Owner does not dispute Petitioner’s level of ordinary skill.” PO Resp. 13 (citing Pet. 17–18). Patent Owner contends that its declarant Mr. Markison “far exceeds the proposed level of ordinary skill in the art” and, because he is registered as a patent attorney and licensed as an attorney, “can offer good faith and objective opinions on the issues in this proceeding.” Id. at 13–14 (citing Ex. 2008 ¶¶ 11–13, 17–30, 42–44). Based on the full record, we maintain and affirm that one 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); Inst. Dec. 9; Ex. 1002 ¶ 30; Ex. 2008 ¶ 44.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner notes that, although claim 1 recites a heel platform made of a “first material” and a forefoot platform made of a “second material,” the first and second materials can be the same based on Patent Owner’s apparent interpretation in related litigation. Pet. 27 n.1 (citing Ex. 1012, 30–44). Petitioner applies Patent Owner’s apparent interpretation to the challenges of this proceeding “[w]ithout conceding alternative arguments.” Id. At institution, we were persuaded by Patent Owner’s arguments and adopted a construction that the “first” and “second” materials are “different in some manner.” Inst. Dec. 7–8. Patent Owner responds that we should maintain the same construction and disputes Petitioner’s evidence that the “first” and “second” materials can be the same material. PO Resp. 15–19 (citing Pet. 27 n.1; Inst. Dec. 8, 12–13; Ex. 1012, Ex. E, 38, 52; Ex. 2014, 15). Patent Owner also argues that Petitioner should not be allowed to present new arguments or evidence in reply. Id. at 19–21. Petitioner replies that interpreting “first” and “second” materials to be different materials contradicts the plain language of the claims, the Specification, and Patent Owner’s infringement contentions. Pet. Reply 1–5 (citing Pet. 27 n.1; Prelim. Resp. 16–17; PO Resp. 16–18; Ex. 1001, 10:9– 19, 17:52–54, 21:64–22:4, 27:47–51, Figs. 43, 49, claims 1, 6; Ex. 1023, 47:1–48:1, 215:6–217:12, 224:13–225:19; Ex. 1025, 319; Ex. 1026). Patent Owner replies that Petitioner presents new arguments and evidence in reply. PO Sur-reply 5–9 (citing Pet. 27 n.1; Inst. Dec. 13; PO Resp. 16–21; Pet. Reply 1–3, 14 n.1; Paper 19). Patent Owner also argues that, even if Petitioner’s asserted new arguments and evidence are considered, they fail to support an interpretation of “first” and “second” Resp. 16–17; Pet. Reply 1–3; Ex. 1001, 17:50–54, 27:50–54, Figs. 43, 93; Ex. 1023, 215:6–217:12; Ex. 2014, 19–22)” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Other Terms Based on the full record, express interpretation of other terms is not necessary to resolve the parties’ dispute. 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 13
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“Patent Owner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). Evidence of how the inventor viewed claim terms can be useful in considering claim interpretation, and, thus, we agree with Petitioner that the exhibit is relevant. For the reasons stated below, however, we do not need to rely on the exhibit. Accordingly, Patent Owner’s Motion to Exclude Exhibit 1024 is dismissed as moot.” slip op. at 6
Patent outcomesUS 11,510,456 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,510,456 - PTAB · Mar 24, 2025 · IPR2024-01235 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR of claims 1–3, 6–11, and 14–16 on all proposed grounds after finding a reasonable likelihood of prevailing on the §103 ground over Mañosa and Patel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016), 815 F.3d at 1363 (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”)). This burden of persuasion never shifts to Patent Owner. See 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 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedPrinted publication not establishedMixed
“[T]here is no presumption in favor of institution or in favor of finding a reference to be a printed publication under § 42.108(c) or any other authority. . . . [T]he burden is on the petitioner to identify with particularity evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent, and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“May” expresses a possibility. The Specification reflects this interpretation of “may” when it states that “[i]n one embodiment, the organic material is not lyotropic. Thus, the organic material may not be a phospholipid.” Ex. 1001, 8:27–28 (emphasis added). One of ordinary skill would understand from this that the organic material “may not be” a phospholipid if the organic material is not lyotropic. It follows that if the organic material is lyotropic, then the organic material may be a phospholipid. Reading the statement “[t]he organic material may not be . . . a phospholipid” (id. at 8:59–63) in light of the earlier stated possibility that the organic material may be a phospholipid if the organic material is lyotropic, one of ordinary skill in the art would interpret “may not be” as excluding phospholipids under some conditions, not under all conditions. Taking the Specification’s discussion about phospholipids as exemplifying the permissive nature of the word “may,” we are unpersuaded that in stating that “[t]he organic material may not be [PMMA], a polyvinylidene difluoride-containing polymer, such as [PVDF] or PVDF- TrFE-CTFE, or a phospholipid, such as [DHPE]’” (Ex. 1001, 8:59–63), the specification “contains a clear and unmistakable disavowal of the compounds PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE” and “disclaims the listed compounds” from the “organic material” of the claims under all conditions, as Patent Owner argues. Prelim. Resp. 6–7. Moreover, the claims themselves limit the “organic material” only to the extent that it is “barocaloric cooling or heating agent” and can perform in the manner claimed. See Ex. 1001, claim 1, supra. As broadly worded, the claims do not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE per se from the group of organic materials employed by the claimed method. Adopting Patent Owner’s construction would impermissibly import a limitation (i.e., not exclude PMMA, PVDF, PVDF-TrFE-CTFE, and DHPE) into the claims. For the reasons stated, at this stage of the proceeding, we agree with Petitioner’s broad construction of “organic material.” We do not adopt Patent Owner’s proposed construction whereby PMMA, PVDF, PVDF- TrFE-CTFE, and DHPE are excluded from the scope of the claim term “organic material.” The parties are invited to address this issue further during trial, if desired. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner shows that (a) Mañosa (i.e., inorganic compounds such as Ni-Mn-In, Gd5Si2Ge2, and La-Fe-Co-Si) and (b) Patel (i.e., PVDF-TrFE- CTFE) teach materials exhibiting inverse BCEs. Pet. 59 (citing, inter alia, Ex. 1007, pages 4–8; Ex. 1009, 1, 4–5; Ex. 1004 ¶ 108). In our view, at this stage, Petitioner sufficiently shows (via the five reasons listed supra) why it would have been obvious to one of ordinary skill in the art to substitute the barocaloric cooling or heating agent of Patel for that taught in Mañosa, thereby reaching the claimed method with a reasonable expectation of success. Cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (U.S., 2007) (“The Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”)” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,230,656 - PTAB · Jan 28, 2025 · IPR2024-01137 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR of claims 1–7 and 9–23 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our consideration of discretionary denials is guided by the Director’s Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued on June 21, 2022 (“Memorandum”).7 The Memorandum states that, consistent with Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), “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.” Memorandum, 3 (footnote and emphasis omitted).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c. Discussion At this stage, we preliminarily determine Petitioner has shown that Nakajima teaches or reasonably suggests each element of claim 1, but we encourage the parties to develop the record regarding the meaning of “pivotal about an axis” as recited in Limitation 1[b][3][i] during the trial phase. As cited by Petitioner, from the closed position, for example, the Nakajima’s mouthpiece would appear to move based on clockwise rotation about hinge shaft 19. Pet. 35. Patent Owner appears correct that at some point in the opening (or closing) process, Nakajima’s mouthpiece additionally moves based on rotation about protrusions 25. Prelim. Resp. 44–45. At this stage, we preliminarily determine that such additional rotation is not foreclosed by the plain language of the claims.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person 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.” Pet. 18 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies the level of skill set forth in the Petition. Prelim. Resp. 35. At this stage, we apply Petitioner’s proposed definition, as it appears reasonable and consistent with the level of skill reflected in the asserted prior art and the ’255 patent. D. Claim Construction” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner contends that “adapted to” in independent claims 1 and 20 means “‘designed or configured to’ and is not satisfied by mere hypothetical capability.” Prelim. Resp. 36; see Prelim. Resp. 36–41. We address Patent Owner’s arguments below with our discussion of Petitioner’s Ribartis-based arguments. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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)). E. Alleged Obviousness” slip op. at 8
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,676,255 - Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentablePTAB · May 13, 2024 · IPR2023-00180 · APJ Mitchell G Weatherly · IPR · Final written decision
Claims 11–14, 19, and 20 are unpatentable: Johnson anticipates claims 11–13 and 19; Sutton anticipates claims 11, 19, and 20; and Sutton with Fry renders claim 12 obvious.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not dispute [Petitioner’s] proposed level of skill in the art” in this case. PO Resp. 9–10; see also Ex. 2001 ¶ 37 (Patent Owner’s declarant, Dr. Stone, accepting and applying Petitioner’s proposed level of ordinary skill). In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’220 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“then save.” PO Resp. 10 (citing Ex. 2001 ¶¶ 48–56). According to Patent Owner, “[m]erely saving data is not enough.” Id. Petitioner disagrees, contending that Patent Owner’s proffered interpretation of “record” is inconsistent with the Specification, which “repeatedly distinguishes between ‘record’ and ‘measure’” and uses “‘record’ in connection with saving/storing and ‘measure’ in connection with sensing.” Reply 2–3 (citing Ex. 1001, 2:28–34, 8:51–53, 11:61–62, 11:65–67, 13:5–6, 15:18–24, 15:41–45, 20:2– 6; Ex. 1017 ¶¶ 13–19). Based on our review of the parties’ argument and cited evidence, we find that “record” means “save” and does not encompass “measure or capture” as Patent Owner argues. The Specification describes the act of measuring as being performed by various sensors or other devices. See, e.g., Ex. 1001, 8:51–53 (“sensors for measuring”), 11:65–67 (“accelerometers . . . for measuring”), 15:18–24 (“Global Positioning Satellite (GPS) navigation device” for measuring distance traveled and an “EKG monitor” for “measuring the electrical activity of the user”). The Specification also expressly distinguishes the act of measuring from the act of recording when discussing how the location of a user is measured and recorded. The Specification states: The inclusion of GPS device 713 and accelerometer 715 in a single mobile device 700 allows device 700 to record athletic activity data in multiple workout settings. . . . If, . . . the individual is running outdoors such that the individual moves from one location to another, the GPS device 713 or recording of data therefrom (e.g., GPS device is always active, but recording is turned on and off) may be activated and used instead [of the data measured by accelerometer 715]. Id. at 19:59–20:6 (emphasis added). Even though GPS “is always active” and measuring the location of the user, “recording is turned on and off.” Accordingly, the Specification expressly distinguishes that act of measuring from the act of recording.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“Petitioner persuasively contends that the Specification discloses at least six additional ways for a user to select an option to share athletic information that would be excluded under Patent Owner’s proposed interpretation. Reply 11–12 (citing Ex. 1001, Figs. 53F, 53S, 53V, 54C, 77, 82, and accompanying text at 45:22–44, 46:23–28, 47:42–44, 47:63–48:15, 53:27–52). Petitioner also persuasively argues that portion of the Specification cited by Patent Owner fails to sufficiently express intent to limit the scope of “sharing option selection” to “a user command or confirmation.” Id. at 13 (citing Thorner v. Sony Comp. Entm’t Amer. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012) (lexicography requires “clear” expression of intent to redefine the term (emphasis omitted))). Patent Owner’s attempt in the Sur-reply to cite cases for the proposition that claims need not cover all embodiments is unavailing because we discern no clear intent in the Specification to limit the claim to one specific embodiment. For all these reasons, we reject Patent Owner’s proposed interpretation of “the sharing option selection” 8 and instead read it according to its plain meaning, which encompasses, for example, the 8 The phrase “sharing option selection” is introduced in element 11D, and we conclude that phrase carries the same meaning as it does in element 11E. selection of an option to automatically share athletic information in advance of a workout.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Patent Owner argues that Johnson’s device 601 “does not ‘record’ (i.e., measure or capture, and then save) athletic activity.” PO Resp. 23. Patent Owner contends that “Johnson’s device 601 merely receives and displays pre-recorded athletic activity data that it ‘receives’ from a separate ‘collection’ device” [501], which is the device that “records” the athletic activity. Id. at 24. Patent Owner argues that “writing” data to memory is not “recording” data because it “does not include capturing or measuring the athletic activity itself, only saving it.” Id. Patent Owner concedes that Johnson’s device 601 stores the user’s athletic activity. PO Resp. 24; Sur-reply 8. Patent Owner’s argument that Johnson fails to describe element 11C depends upon us ruling in its favor on the meaning of element 11C. As explained in Part V.A above, we reject Patent Owner’s argument that “record” as used in element 11C also requires the apparatus to “measure or capture” athletic activity. Accordingly, based on Petitioner’s argument regarding element 11C, which we adopt as our own, and the evidence cited in support, we find that Petitioner has shown by a preponderance of evidence that Johnson describes the limitations of element 11C.” slip op. at 19
Patent outcomesUS 10,232,220 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,232,220 - PTAB · Feb 28, 2024 · IPR2023-01238 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR of claims 1–20, finding a reasonable likelihood that claims 1 and 11 are obvious over Van Vliet and Cable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.1” slip op. at 2
- BurdenMixed
“Petitioner does not fully address this limitation. In particular, the Petition does not include a discussion of how the reels are connected to be fed from a manifold. See generally Pet. 26–27. Rather, the Petition argues that the hoses are stored on reels and that the hoses “are connected via fluid outlets 22 to receive fuel from [the] manifold.” Id. at 27. The Petition does say that the hoses are connected to the reels (id.), but does not attempt to establish any type of relationship between the reels and the manifolds. We further note that although indisputably Van Vliet’s schematic diagram shows flow passages through manifolds 36, 38 and hoses 24, nowhere do we discern where or how Van Vliet definitively discloses the reels 30 are connected to be fed from a manifold, as required by claim 1. Indeed, according to Petitioner’s own expert, one skilled in the art would understand that Van Vliet’s schematic diagram “is a high-level representation and is not intended to depict the physical appearance or form” of the system’s components. Ex. 1003 ¶ 132 n.138. At most, the diagram indicates the hose’s flow passage as wrapping around the reel. And, while Van Vliet describes that “hoses 24 are preferably stored on reels 30,” nowhere does it mention or otherwise suggest that the hoses are fluidly connected to the reels. Ex. 1004 ¶ 15. To the contrary, Van Vliet explains that “each hose 24 is connected to a fuel outlet 22 by a dry connection 60 and to a cap 26 by a dry connection 62.” Id. ¶ 22. In other words, Van Vliet’s hose 24 cannot be connected to reel 30 if the ends of the hose are connected to dry connections 60 and 62, which are not part of the reel. In that case, the hose’s flow passage does not run through the reel, and thus the reels 30 are not connected to be fed from a manifold, as required by claim 1. c) Conclusion For the above reasons, the Petition does not sufficiently identify how Van Vliet teaches or suggests the limitations of independent claim 1. 3. Claims 11 and 12 Similar to claim 1, claim 11 requires “a plurality of reels in the container, each said reel individually connected with the at least one manifold.” Ex. 1001, 10:64–65. The Petition relies on the analysis of claim 1 to address this limitation. Pet. 31–32. As noted above, the Petition does not attempt to establish a relationship between the reels and the manifolds, such as arguing that a reel and manifold in Van Vliet are connected. Thus, the Petition fails to show how claim 11 and its dependent, claim 12, would be anticipated by or rendered obvious over Van Vliet.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In this regard, we preliminarily agree with Petitioner that Patent Owner’s “proposed construction ignores the[] express differences in the claim language chosen by the patentee.” Prelim. Reply 2 (citing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1370 (Fed. Cir. 2018) (“[W]hen an applicant uses different terms in a claim it is permissible to infer that he intended his choice of different terms to reflect a differentiation in the meaning of those terms”) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004))). Had the patentee desired to limit the claims to fluid connections, the patentee could have used the explicit language throughout, instead of only in choice locations. An example of this is claim 1 where the claim requires the “reels are connected to be fed from the [] manifold.” Ex. 1001, 10:21–23. “To be fed” limits the type of connection to a fluid connection between the manifold and reel, while the word “connected” alone does not infer any particular type of connection.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“the motivation to combine “does not provide any reason in particular that is directed to motivating a POSITA to modify Van Vliet to have a fluid connection to its reels as in Cable.” Id. at 35. Patent Owner is mostly correct, as the majority of the section titled “Rationale and Motivation for Combining Van Vliet and Cable” is directed to aspects of Cable relied on for the dependent claims. However, this section also includes the following: “Incorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results.” Pet. 37 (citing Ex. 1003 ¶ 1752). Petitioner’s declarant testifies that Van Vliet and Cable describe similar systems for delivering fluid from a mobile trailer via hoses to multiple destinations. Further, the elements incorporated into Van Vliet from Cable are either already present in Van Vliet (e.g., reels) or were simple elements well-known in the art at the time of the ‘955 Patent. Incorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results. Ex. 1003 ¶ 175. Patent Owner does not contest Petitioner’s argument that using Cable’s reel configuration in Van Vliet’s system is a simple substitution that “merely involve[s] combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 175; Pet. 37.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,974,955 - Shopify, Inc. / Priceline.Com LLC et al. v. DDR Holdings, LLCRehearing grantedPTAB · Oct 26, 2020 · IPR2018-01014 · APJ Patrick M Boucher · IPR · Rehearing
Granted petitioner’s rehearing request and held claims 1–3, 5, 7, 8, 11–13, 15, 17, and 18 unpatentable over the listed prior-art grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Petitioner’s argument on rehearing is persuasive, particularly under the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“the broadest-reasonable-interpretation standard of claim construction applied in this proceeding. See Dec. 12–13 (Final Written Decision noting that, for an inter partes review proceeding based on a petition filed prior to November 13, 2018, “the Board interprets claims of an unexpired patent using the broadest reasonable construction in light of the specification of the patent in which they appear”). Petitioner clarifies that the Petition identifies Exhibit 1009’s buy page as corresponding to the “composite web page contain[ing] one or more selectable URLs” recited in the claim and identifies the “view cart,” “modify cart,” and “check out” pages linked to the “buy” page as corresponding to the recited “hierarchical set of additional pages.” See Req. Reh’g 11 (asserting “the Petition demonstrated that the ‘view cart,’ ‘modify cart,’ and ‘checkout’ links satisfy the second ‘wherein’ clause”). In doing so, Petitioner points us to specific portions of its Petition that we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22. Petitioner thus demonstrates that the buy page shown in Exhibit 1009, i.e., the recited “composite web page,” contains one or more selectable URLs connecting the “view cart,” “modify cart,” and “check out” pages to the buy page, i.e., the recited “hierarchical set of additional web pages,” as required by the claim. Because each of those pages “pertain[s] to a subset of the product offerings in the electronic catalog,” such as those selected for purchase, Petitioner demonstrates, by a preponderance of the evidence, that each limitation of the second “wherein” clause of claim 3 is met by the Digital River Publications.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“we find provide sufficient support for this position. Specifically, the Petition cites to paragraph 102 of Dr. Shamos’s Declaration, and both the Petition and that Declaration cite multiple times to page 1 of Exhibit 1009. See Pet. 21; Ex. 1002 ¶ 102. In describing the correspondence to the “hierarchical set of additional pages,” Dr. Shamos testifies that “[t]he buy pages also provide a link (i.e., selectable URL) to a shopping cart, which, as described by the 21 Software Drive website, allows a user to add products to a shopping cart, view a shopping cart, modify a shopping cart, and check out.” Ex. 1002 ¶ 102 (citing Ex. 1009, 1). We credit this testimony, which is unrebutted on the record before us. Indeed, Dr. Shamos’s testimony that a skilled artisan would have understood Exhibit 1009’s sequence of URLs as satisfying the claimed “hierarchical set of additional webpages” is consistent with the manner in which the ’825 patent itself describes its shopping cart functionality—namely, as nothing more than the ability to “ADD TO CART,” “VIEW SHOPPING CART,” “UPDATE QUANTITIES,” and “CHECK OUT.” Ex. 1001, Fig. 22.” slip op. at 6
§ 103 obviousnessPatents in suitUS 8,515,825 - Samsung Electronics Co., Ltd v. Uusi, LLC D/B/A NartronSome claims unpatentablePTAB · Sep 17, 2020 · IPR2016-00908 · APJ Kamran Jivani · IPR · Remand
Claims 40, 41, 43, 45, 47, 48, 61–67, 69, 83–86, 88, 90, 91, 94, 96, 97, 99, 101, and 102 are unpatentable as obvious; claims 37–39 were not shown unpatentable.
RulingsRemand decision- RemandOther
“Appeals for the Federal Circuit, which vacated our Decision and remanded the matter to us. Samsung Elecs. Co. v. UUSI, LLC, 775 F. App’x 692 (Fed. Cir. 2019). As to the earlier instituted claims, the Court instructed that we should consider “whether Samsung has shown that there would have been a reasonable expectation of success in combining the teaching of Gerpheide with the teachings of Ingraham [I]/Caldwell to arrive at the claimed invention.” Id. at 697. The Court further instructed us to “consider the patentability of claims 37, 38, and 39” (id.) because, on April 24, 2018, the Supreme Court of the United States held that a decision to institute under 35 U.S.C. § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). Pursuant to the Federal Circuit’s instruction in this case and in light of SAS Inst., Inc., we modified our Decision on Institution to institute review of claims 37–39 of the ’183 patent as obvious over Ingraham I, Caldwell, and Gerpheide. Paper 40. We further held a teleconference on August 15, 2019, with respective counsel for the parties, to hear their proposals on how to proceed with this trial. Paper 41, 2. Having considered the parties’ proposals, we authorized the parties to submit concurrent briefs and subsequent responses addressing the following issues (id. at 6):” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person having ordinary skill in the art at the time of the invention would have had a minimum of: (1) a bachelor’s degree in electrical engineering, or equivalent thereof; and (2) “two to three years of experience in the relevant field, which includes touch systems technology.” Pet. 3 (citing Ex. 1002 ¶ 19). Patent Owner’s witness, Dr. Cairns, opines that a person of ordinary skill “in the art of capacitive touch sensors would have had at least a bachelor’s degree in physics or electrical engineering or equivalent industry experience in the field.” Ex. 2002 ¶ 14. In our Final Written Decision, we noted that the levels of ordinary skill proposed by the parties do not differ significantly, but adopted Petitioner’s proposed definition as more representative, indicating that our analysis would be the same under either definition. Paper 35, 9–10. On remand, neither party disputes the definition adopted in the Final Written Decision. Furthermore, no argument presented by the parties on remand would be affected by adopting one of the proposed definitions over the other. We maintain here the definition adopted in the Final Written Decision.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“transition term[s]” should be considered in determining the meaning of a claim term, but asserts without further support that the presence of a semicolon after “supply voltage” and the use of the transition term “wherein” do not compel the preliminary construction. Id. As we addressed in denying Petitioner’s Request for Rehearing, claim 37 employs the open-ended transition term “comprising” followed by a colon to indicate that a list elements follows, and employs semicolons to separate the elements of that list. Paper 17, 5. The first element of the list, element 37a, describes an oscillator and includes the supply voltage limitation preceded by a comma and the transition term “wherein.” Id. Element 37a then ends with a semicolon and the claim proceeds to element 37b, which recites a microcontroller. Id. Petitioner thus nominally acknowledges consideration of punctuation, but advances a construction that asks us to disregard punctuation affirmatively recited in the claim. To do so would be “inconsistent with the punctuation [patentee] chose for this claim.” In re Pelz, 379 F. App’x 975, 978 (Fed. Cir. 2010). Likewise, as to Petitioner’s assertion that we read an additional limitation into the claim (Pet. Br. 10), we observe that, if the claim is limited to a particular exemplary embodiment, such a limitation results from the claim being drafted to cover only that embodiment. While we confirmed in the Decision on Institution that the use of the term supply voltage is consistent with its use in the Specification (Dec. on Inst. 9), the limitation of the claim to the oscillator is based on the language of the claim, not on definition or disavowal. Therefore, even accepting, for the sake of argument, that there is no disavowal or definition in the Specification of “supply voltage,” the term refers in independent claim 37 to supply voltage of the oscillator.” slip op. at 18
- Expert testimonyOther
“We disagree with Patent Owner’s arguments because they are not responsive to the combination of teachings at issue in the references before us. Patent Owner focuses on particular features of Gerpheide that it alleges either “would not work . . . in the proposed Caldwell-Ingraham system” or “can only work” in the presence of a component Patent Owner argues that “neither Ingraham nor Caldwell uses.” PO Br. 1–2, 12–13. These arguments are based on a mistaken premise that one or more components or physical configurations of Gerpheide must be incorporated into the combination of Ingraham I and Caldwell in order to show a reasonable likelihood of success. Under the Federal Circuit’s construction of the “selectively providing” limitation, the combination of Ingraham I, Caldwell, and Gerpheide need not incorporate the specific features of Gerpheide identified by Patent Owner. Petitioner asserts, supported by evidence from Dr. Subramanian, that the Ingraham I-Caldwell combination would have been modified based on Gerpheide “to provide features that adjust[] the oscillator signal frequency provided to the input portions 13 to negate the effect of interference on the input portions 13 and touch sensing circuits.” Pet. 26–27. This modification would not require any of the particular components or configurations of Gerpheide highlighted by Patent Owner. Thus, even if one or more of Patent Owner’s arguments as to the infeasibility of incorporating particular aspects of Gerpheide were correct, Patent Owner’s arguments do not address Gerpheide’s particular teaching of adjusting oscillator signal frequency to negate the effect of interference, and therefore, Patent Owner’s arguments are not responsive to the proposed combination and evidence relied upon by Petitioner. In view of the above, we find that Petitioner has shown that the skilled artisan would have combined Gerpheide with Ingraham/Caldwell as proposed with a reasonable expectation of success in achieving the claimed subject matter.” slip op. at 26
Patent outcomesUS 5,796,183 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 5,796,183 - Supercell OY v. Gree, Inc.All claims unpatentablePTAB · Sep 23, 2019 · PGR2018-00055 · APJ Lynne H Browne · PGR · Final written decision
Claims 1–12 are unpatentable under § 101; the Board denied the motion to amend because substitute claims 13–24 are also patent ineligible.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“claims provide more detail than the original claims, we do not agree that in this instance such detail renders the proposed substitute claims patent eligible. As explained above in Part II.B.2.a, the original claims are directed to a judicial exception (namely a certain method of organizing human activity), which is patent ineligible. The proposed substitute claims do not remedy this deficiency in the original claims. Rather, the proposed substitute claims merely add more detail to the ineligible subject matter. For example, substitute claim 13 recites “controlling . . . an effect of an attack . . . according to . . . a plurality of attack values, each of the plurality of attack values assigned to each attack of the number of attacks within the predetermined time by any characters in the group.” PO MTA 27. This recitation clearly provides more detail than was provided in original claim 1; however, the additional detail specifies how the video game is conducted (i.e., the rules to be followed) as opposed to a technological improvement. In other words the proposed substitute claims, like the original claims, recite following rules (specifically, rules for a battle game), which is a certain method of organizing human activity that has been found to be patent ineligible. Guidance at 52. For this reason, and the reasons discussed above in Part II.B.2.b regarding the original claims, we determine that the proposed substitute claims are directed to a judicial exception (abstract idea). We also determine that the proposed substitute claims do not integrate the recited abstract idea into a practical application for the reasons discussed above in Part II.B.2.c and that the additional elements beyond the recited abstract idea do not recite an inventive concept for the reasons discussed above in Part II.B.2.d. Accordingly, we find that substitute claims 13–24 are not patent eligible.” slip op. at 52
- BurdenFwd mixedMixed
“We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept.” slip op. at 27
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“Even if Patent Owner’s assertions that the limitations of claim 1 are analogous to the identified limitations in Examples 37 and 38 of the Guidance and do not recite mathematical concepts, this is not dispositive on the issue of whether claim 1 is directed to patent-ineligible subject matter. The Guidance identifies “following rules” such as “rules for conducting a wagering game” as one method of organizing human activity that is patent ineligible. Guidance, 84 Fed. Reg. at 52 (citing In re Smith, 815 F.3d at 818). The preamble to claim 1 recites “[a] method for providing a battle game to each of a plurality of client devices via a network.” Ex. 1001, 7:54– 55. The preamble of Example 37 recites “[a] method of rearranging icons on a graphical user interface (GUI) of a computer system” and the preamble of Example 38 recites “[a] method for providing a digital computer simulation of an analog audio mixer.” USPTO, Subject Matter Eligibility Examples: Abstract Ideas 1 (Jan. 7, 2019), https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_ 20190107.pdf. Neither of the example claims has anything to do with a method of providing a battle game or following rules, and thus, cannot demonstrate by analogy that claim 1 is patent eligible.” slip op. at 22
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“We are persuaded that Petitioner is correct because once again Patent Owner relies on the limitations that are encompassed by the judicial exception for the inventive concept. Our analysis under step 2B, like our analysis above under step 2A prong 2, looks to the additional elements beyond the judicial exception. Guidance, 84 Fed. Reg. at 56 (“For example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.”). Patent Owner identifies no additional elements beyond the judicial exception as providing an inventive concept and does not argue that the additional elements beyond that judicial exception are not well-known, routine, and conventional. For these reasons, we determine that claims 1–12 do not provide an inventive concept. e. Conclusion re Subject Matter Eligibility For the reasons set forth in Parts II.B.2.a–d, we are persuaded that Petitioner has met its burden of showing that claims 1–12 are not subject matter eligible.” slip op. at 27
Patent outcomesUS 9,687,744 unpatentableClaim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · NautilusPatents in suitUS 9,687,744
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.