- PTAB · Oct 6, 2026 · IPR2025-00525 · APJ Scott C Moore · IPR · Final written decision
Original claim 21 was canceled; the Board denied substitute claim 22 for new matter and held it obvious under §103 based on six combinations.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“First, Patent Owner has not shown possession of the disputed feature of a “radio communication module [that] is configured to utilize a secure identifier, the secure identifier comprising a specified excitation.” In the ’406 application, the term “excitation” is used exclusively to refer to a light beam signal. See Ex. 2015, 7:8–13, 9:8–10, 23:9.2 The ’406 application discloses that an identification box on an aircraft may include both an RF module and a separate light sensor. See Ex. 2015, 7:3–11. But nowhere does the ’406 application describe receiving a light beam (e.g., an excitation) with the RF module of the identification box (as opposed to the light sensor), so as to provide support for proposed substitute claim 22’s recitation of a “radio communication module” configured to utilize “a secure identifier . . . comprising a specified excitation.” We disagree with Patent Owner that it suffices that one of ordinary skill in the art “would recognize that these disclosures are equally applicable to the RF-only embodiments” (Reply 5). “It is not sufficient for purposes of the written description requirement . . . that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). On this record, and having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a radio communications module “configured to utilize a secure identifier” where “the secure identifier compris[es] a specified excitation.” Second, setting aside the “radio communication module” in proposed substitute claim 22, Patent Owner also has not shown that the named inventor was in possession of the feature of a “secure identifier comprising a specified excitation.” Patent Owner’s argument that the ’406 application describes a light beam directed to a particular aircraft (see Reply 4–5) is 2 The same is true of the ’153 provisional. See Ex. 2016 ¶¶ 29, 34. unavailing. The fact that the properties of a particular light beam indicate that the light beam is intended for a particular aircraft does not demonstrate that the light beam is a “secure identifier,” as we have construed that term. Patent Owner has not identified any disclosure in the ’406 application of a “secure identifier” comprising a light beam, let alone that such light beam can be utilized by a “radio communication module.” The only references to “secure” identifiers in the ’406 application describe radio frequency signals. See Ex. 2015, 2:4–6, 15:21–17:12.3 Having reviewed the ’959 Patent, the ’153 provisional, and the ’406 application, we find no evidence in those documents that the named inventor was in possession of the concept of a “secure identifier comprising a specified excitation.”” slip op. at 15
- ScopeDecided for patent owner
“not impermissibly broaden the scope of the claims of the ’959 Patent. As Patent Owner suggests, there were no limitations in original claim 21 on the type of radio signal the radio communication module could receive, and so it follows that proposed substitute claim 22 does not now encompass receiving a broader set of radio signals. We see no basis for Petitioner’s argument that the past tense verb “received” limited original claim 21 to “signals of a compatible ‘type’ and ‘range.’” Opp. 7. Moreover, the claim language (with the proposed deletion shown double brackets) provides that “the radio communication module is configured to receive a [[received]] radio signal.” Any radio signal that the radio communications module receives would necessarily be a “received” radio signal. Thus, deleting the redundant word “received” does not enlarge the scope of this claim limitation. We also are not persuaded by Petitioner’s suggestion that removing the term “received” broadens original claim 21 by deleting a requirement that the radio signal have already been previously received by the claimed device. See Sur-reply 9. Original claim 21 simply recited, using redundant language, that “the radio communication module is configured to receive a received radio signal.” Ex. 1001, 18:5–7. The most natural reading of this language is that the phrase “received radio signal” is just a description of a radio signal that is received by the recited radio communications module. Petitioner has cited no persuasive evidence that one of ordinary skill in the art would have counterintuitively interpreted this language to impose an additional requirement that the “received radio signal” must have been received twice—a first time by some other component of the device, and a second time by the recited radio communication module. Accordingly, we determine that the proposed amendment does not improperly broaden claim scope.” slip op. at 10
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“572 U.S. 898 (2014). See Memorandum: Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021).4 Under Nautilus, a claim is indefinite if fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” 572 U.S. at 910. We agree with Patent Owner that neither of the identified terms are indefinite. Regarding the term “low-altitude aircraft,” we determine the Specification provides a sufficient basis for understanding the scope and meaning of this term with reasonable certainty. The U.S. Court of Appeals for Federal Circuit has explained that, when a term of degree is recited in a claim, it is necessary “to determine whether the patent’s specification provides some standard for measuring that degree.” See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984); see also Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (“Some objective standard must be provided in order to allow the public to determine the scope of the claimed invention.”). Here, the Specification describes the related art as including “small UASs (e.g., aircrafts up to 25 pounds flying up to 500 ft of the low altitude airspace).” Ex. 1001, 1:50–52. One of ordinary skill in the art would understand from the Specification that the cited disclosure provides an objective standard for determining the scope of a low-altitude aircraft as one that is designed to fly up to a maximum altitude of about 500 feet.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In our Institution Decision, we adopted Petitioner’s proposal that one of ordinary skill in the art would have had the following qualifications: [E]ither (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Aerospace engineering, or an equivalent field, as well as at least 2 years of academic or industry experience in the aerospace, avionics, telecommunications, or electronic device manufacturing industry, or (2) at least four years of industry experience in any of the above industries. Paper 13, 5 (citing Pet. 21). Patent Owner has not disputed this formulation; thus, we adopt it for purposes of this Decision. See Paper 13, 10–11 n. 8.” slip op. at 23
§ 103 obviousness§ 112 disclosurecites Graham · NautilusPatents in suitUS 10,713,959 - PTAB · Jun 11, 2025 · IPR2025-00262 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR of claims 1–20 on all grounds, finding a reasonable likelihood that Haley and Lai render the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Other 314aDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 34–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis.” slip op. at 10
- Skill levelSkill level board ownOther
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The parties’ briefs do not propose a specific definition of a level of ordinary skill in the art. See generally, Pet., Prelim. Resp. Dr. Vallee, however, testifies that one of ordinary skill in the art relevant to the ’954 patent: would have either (i) a Master’s degree in mechanical engineering with at least two years of experience in power nailer design; (ii) a Bachelor’s degree in mechanical engineering with at least five years of experience in powered nailer design; or (iii) ten (or more) years of experience in powered nailer design. This experience in powered nailer design would include mechanical design, tool design, manufacturing, mechanics of materials, stress analysis, ergonomics, and human factors. Ex. 1003, ¶ 49. For purposes of this Decision, we adopt and apply Dr. Vallee’s formulation regarding the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 15–26. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 [sic, ’954] Patent to perform the claimed function.” Prelim. Resp. 15. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter member” of the ’954 patent includes a rotatable cam lifter 100 (yellow, below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’954 patent, 9:25–41, 16:32–46, Fig. 12. The ’954 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’954 patent, 32:12–27, 32:45–60. Pet. 15. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,478,954 - PTAB · Jun 11, 2025 · IPR2025-00261 · APJ Mitchell G Weatherly · IPR · Institution
Instituted IPR of claims 1–20 on all grounds after finding a reasonable likelihood that Haley anticipates claims 1, 7, 8, 17, and 20 and Haley with Lai renders the remaining claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record,1 we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues that we should discretionarily deny the Petition based on alleged deficiencies in the Petition. Specifically, Patent Owner argues that “even if arguments as to a few claims might have been properly presented in the Petition, a decision to institute here would require the Board to address—for the first time and with no Petitioner input—critical claim construction issues affecting nearly every claim” in contravention of the requirements of 37 C.F.R. § 42.104(b)(3). Prelim. Resp. 33–35. For the reasons discussed above, we are not persuaded on the current record that Petitioner has violated 37 C.F.R. § 42.104(b)(3), or that critical and unresolved claim interpretation issues justifying discretionarily denying the Petition exist. We, therefore, decline to deny institution on this basis. E. Claims 1, 7, 8, 17, and 20: Anticipation by Haley” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“1. Lifter The Petition contends that the “lifter” limitation is a means-plus- function limitation, Pet. 7, which Patent Owner does not dispute, Prelim. Resp. 10–14. Patent Owner argues, however, that Petitioner has “fail[ed] to identify any structure in the ’007 Patent to perform the claimed function.” Prelim. Resp. 10. We disagree. Petitioner identifies the structures in the Specification corresponding to the “lifter” as follows: The “lifter” (“lifter member”) of the ’007 patent includes a rotatable cam lifter 100 (yellow below left), with pin 104, 106, and 108 (green) on its face surface that engage protrusions 92 (blue) on the driver member 90 (orange). ’007 patent, 9:36–52, 16:39–53, Fig. 12. The ’007 patent also discloses two-pin variants: lifter members 465 and 480 in Figs. 31, 33. ’007 patent, 32:23–38, 32:56–33:4. Pet. 17. This identification of corresponding structure is sufficient to satisfy 37 C.F.R. § 42.104(b)(3). We also note that at this stage of the proceeding, Patent Owner does not dispute that Petitioner has correctly identified the corresponding structure. The parties may further address the proper interpretation of “lifter” at trial.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“gas pressure system” recited in the preamble of independent claims 1 and 17. Prelim. Resp. 21–22. Patent Owner further argues that Petitioner, through its comparison of claims 1 and 17 to Haley, improperly implies that the “gas pressure system” can be “limited to a distinct portion of a power tool.” Id. at 23. Patent Owner contends that such an interpretation is improper because the “gas pressure system” must refer to “the entire system,” because the “structure of the claims themselves . . . include[s] . . . every component of the tool.” Id. We disagree. The “gas pressure system” recited in the preambles of claims 1 and 17 expressly refers to a system that is “for a power tool” and thus does not necessarily refer to “the entire” tool or “every component of the tool.” Ex. 1001, 39:6 (claim 1), 40:51 (claim 17). Neither claim 1 nor claim 17 recites, for example, the lifter or driver, which are required elements of an “entire” tool. Id. at 39:6–22 (claim 1), 40:51–67 (claim 17). The lifter and driver are introduced in dependent claims 2 and 18. Id. at 39:23–30 (claim 2), 41:1–9 (claim 18). Still other necessary components of a tool, e.g., a motor and power source, are introduced in dependent claims 5 and 19. Id. at 39:40–42 (claim 5), 41:10–13 (claim 19). By contrast to claims 1 and 17, independent claims 9 and 14 recite a “portable fastener driving tool” and expressly recite many necessary components of such a tool including the driver, lifter, prime mover, and power source. Id. at 39:54 (claim 9), 40:20 (claim 14). Accordingly, we find that the “gas pressure system” of claims 1 and 17 broadly refers to a portion of a power tool rather than the “entire system” or “every component of the tool.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,034,007 - PTAB · Jun 15, 2023 · IPR2023-00273 · APJ Scott C Moore · IPR · Institution
The Board instituted IPR on claims 5, 7, 8, 14–19, 24, and 25, finding a reasonable likelihood that at least one challenged claim would be unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On this record, it is unclear the extent to which issues in the instant proceeding overlap with those in the parallel district court proceeding. Accordingly, this factor is neutral.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(4) Conclusion for Claim 5 Based on the current record, Petitioner’s contentions (see Pet. 40–42) and the supporting testimony of Dr. Lequesne (see Ex. 1002 ¶¶ 174–182) demonstrate, in a manner that is sufficiently persuasive for purposes of institution, that the subject matter of claim 5 would have been obvious over the combination of Poertzgen and Boucheret. Accordingly, Petitioner has shown a reasonable likelihood that it will prevail on its argument that claim 5 is unpatentable under 35 U.S.C. § 103(a). We, therefore, institute an inter partes review as to all grounds and all challenged claims. 35 U.S.C. § 314(a); 37 C.F.R. § 42.108(a).” slip op. at 29
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANo construction neededNot reached
“In this case, Petitioner asserts that “[n]o construction of any terms is necessary for the purposes of this proceeding.” Pet. 16. Patent Owner argues that, in the asserted grounds based on Weiler, Petitioner improperly construes the claim term “actuator housing” to encompass Weiler’s brake caliper. Prelim. Resp. 12. Patent Owner asserts that this “interpretation conflicts with how the two terms are used in Patent Owner’s specification and claims, and also conflicts with the way the prior art uses the two terms.” Id. at 12–13. This argument is not persuasive for reasons described below in our discussion of Ground 4. Patent Owner also states that it “does not agree with the manner in which Petitioner reads ‘sub-frame’ on the prior art,” but, “[f]or purposes of this Patent Owner Preliminary Response only, Patent Owner does not traverse Petitioners’ reading of ‘sub-frame.’” Prelim. Resp. 13. On this preliminary record, we decline to adopt specific constructions of any claim terms.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On this record, Patent Owner’s arguments are unavailing. It is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR, 550 U.S. at 418. Here, Petitioner has offered declaration evidence that Boucheret’s teaching of adding an isolator between an electric motor and a component to which it is mounted in order to reduce NVH would have led motor 42 and the sub-frame of unit 40. Pet. 36–38. Patent Owner does not argue that the proposed modification would have been beyond level of ordinary skill in the art. See KSR, 550 U.S. at 417 (noting that, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). Patent Owner’s argument regarding the expectation of success in using Boucheret’s grooved radially-mounted dampers at the axial end of Poertzgen’s motor (see Prelim. Resp. 24, 26) suggests that obviousness could only be shown if Boucheret’s dampers could be bodily incorporated into Poertzgen to arrive at the claimed invention. An obviousness analysis is not so constrained. See, e.g., Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference[.]”); see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). We are also unpersuaded by Patent Owner’s assertion that Boucheret would only teach one of ordinary skill in the art to mount Poertzgen’s motor using radial lugs and dampers. See Prelim. Resp. 20. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Here, Petitioner has offered declaration testimony that one of ordinary skill in the art would have had reason to add vibration dampers at the location where Poertzgen’s motor is mounted to a frame (i.e., the” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,021,415 - PTAB · Jan 13, 2022 · IPR2021-01215 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–24 and all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim, including over Yoshimura and Srinivas.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDenied
“pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. On the record before us, Petitioner has not produced evidence that a stay for the results of the instant inter partes review has been requested. The district court stay currently in force is for a limited time, until February 2022. Thus, the stay will expire approximately one month after issuance of this decision on institution. The effect of the current stay on the pending inter partes review proceeding would be extremely minimal, and would not appear to meaningfully allay any concerns of inefficiency or duplication of efforts. Furthermore, the parties’ reliance on other cases in which the district court judge considered requests for stay is misplaced. As the Board has explained, “[a] judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties.” See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). “We decline to infer, based on actions taken in a different case with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.” Id. Accordingly, we find that this factor is neutral; i.e., it does not weigh for or against exercising our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review (“IPR”) of claims 1–24 of U.S. Patent No. 8,407,655 B2 (Ex. 1001, “the ’655 patent”). Paper 2 (“Pet.”). Patent Owner, Synopsys, Inc., (“Patent Owner”), filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). An inter partes review may not be instituted on fewer than all claims challenged in the Petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Having considered the Petition and the Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–24 of the ’655 patent as unpatentable under 35 U.S.C. §103(a). Pursuant to § 314, we institute an inter partes review as to claims 1–24 of the ’655 patent on all grounds raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage of the proceeding, for purposes of institution, Petitioner has provided sufficient explanation, supported by evidence, of how each limitation of these claims is disclosed by Yoshimura. In view of the foregoing, we are persuaded that Petitioner is reasonably likely to prevail on its assertion that claims 1–3, 8, 11–13, 18, 21, and 22 would have been anticipated by Yoshimura.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner alleges that a person having ordinary skill in the art at the time the invention was made would have been motivated to use capacitive load values as a parameter value in Yoshimura, because the capacitive load values at the pins affect the rate at which the pins’ voltage can change, and would be needed to determine whether a timing or power requirement has been violated. Id. (citing Ex. 1003 ¶¶ 180–181). Petitioner further alleges that a person having ordinary skill in the art would have had a reasonable expectation of succeeding in including capacitive load values in Yoshimura’s scenario image and/or multi-scenario ECO database, because Yoshimura’s database already includes similar types of parameter values. Id. at 40–41 (citing Ex. 1003 ¶ 181).” slip op. at 26
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,407,655 - PTAB · Jan 13, 2022 · IPR2021-01212 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board instituted review of claims 1–8, 11–20, and 23–25 on all petitioned grounds after finding a reasonable likelihood that claim 1 was obvious over Sano.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“a stay for the results of the instant inter partes review has been requested. The district court stay currently in force is for a limited time, until February 2022. Thus, the stay will expire approximately one month after issuance of this decision on institution. The effect of the current stay on the pending inter partes review proceeding would be extremely minimal, and would not appear to meaningfully allay any concerns of inefficiency or duplication of efforts. Furthermore, the parties’ reliance on other cases in which the district court judge considered requests for stay is misplaced. As the Board has explained, “[a] judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties.” See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv DI”). “We decline to infer, based on actions taken in a different case with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.” Id. Accordingly, we find that this factor is neutral; i.e., it does not weigh for or against exercising our discretion to deny institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion as to Claim 1 Petitioner’s contentions and cited evidence as to claim 1, summarized above, are persuasive on the preliminary record now before us. As noted, Patent Owner does not present any argument directed to the patentability of the challenged claims at this stage of the proceeding. Based on the current record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious in view of Sano. 3. Independent Claims 13 and 25 Independent claims 13 and 25 recite a computer-readable storage medium and computer system, respectively, for generating a clock-tree on an integrated circuit, but otherwise recite limitations similar to those of claim 1. Petitioner relies on the same teachings of Sano for claims 13 and 25 as those discussed above for claim 1. See Pet. 57–58; Ex. 1003 ¶¶ 138, 140–141. Based on the current record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that independent claims 13 and 25 would have been obvious in view of Sano.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). However, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016). We analyze the asserted grounds of unpatentability in accordance with these principles to determine whether Petitioner has met its burden to establish a reasonable likelihood of success at trial.” slip op. at 20
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,546,567 - Asetek Danmark A/S v. Coolit Systems, Inc.All claims unpatentablePTAB · Sep 30, 2021 · IPR2020-00747 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 3, 5, 7, and 25 are unpatentable as obvious over Lyon and Bezama; the Board did not reach anticipation by Bezama.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention of the ’567 Patent (hereinafter, a “POSITA”) would have had the following education and experience: (i) “completed college level course work in thermodynamics, fluid mechanics, and heat transfer,” and (ii) “two or more years of experience in designing liquid cooling systems for computers, servers, or other electronic devices, or very similar technology, or one with a more advanced degree in the above fields may have had less practical experience.” Pet. 11. Patent Owner contends that a POSITA “would have earned at least a bachelor’s degree, such as a B.S. (bachelor of science), or equivalent thereof, in mechanical engineering or a closely related field and possessed at least three years of specialized experience in heat transfer devices for thermal management in electronics and computer systems, or in similar systems.” PO Resp. 4. Patent Owner represents, however, that none of its arguments or its declarant’s opinions turn on any differences between the parties’ alternative formulations concerning the level of ordinary skill in the art. Id. at 4 n.2. In its Reply, Petitioner does not respond to Patent Owner’s alternative formulation, or identify any issues in this case that might turn on differences between the parties’ alternative formulations. See generally Reply. On this record, we adopt Patent Owner’s proposed formulation” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Considering the intrinsic evidence summarized above, and the evidence and arguments presented by the parties, we determine that the claim limitation “a compliant member matingly engaged with the second side of the housing member” is satisfied when at least a portion of the recited compliant member is fitted within the recessed region defined by the second side of the housing member. This partial construction is sufficient to resolve the issues in dispute. On this record, we decline to address the issue of whether “matingly engaged” could also encompass other types of engagement, and we also decline to construe any other claim terms.9 See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“139); see also Pet. 62 (citing Ex. 1003 ¶ 110) (“Lyon teaches every limitation of the challenged claims, except a compliant material on top of the microchannel fins . . . and a recessed, transverse ‘groove’ on the microchannel fins.”). Petitioner relies on Bezama to supply both of these claim elements, and sets forth rationales for why one of ordinary skill in the art would have had reason to combine these teachings of Bezama with Lyon so as to arrive at the claimed invention. See Pet. 67–68 (citing Ex. 1003 ¶¶ 121–124) (contending that Bezama discloses a recessed transverse groove, and that a POSITA would have known that incorporating such a groove into Lyon’s microchannel walls would have improved fluid flow characteristics); 71–73 (citing Ex. 1003 ¶¶ 128–132) (contending that Bezama discloses that the separator sheet overlying the fins can be made of a compliant material, and that a POSITA would have known that incorporating such a material into Lyon’s Plate 240 would have minimized coolant bypass between the fins and the plate). Patent Owner makes a single patentability argument for claim 1—it contends that neither Lyon nor Bezama discloses a compliant member that is “matingly engaged” with the second side of the housing member. See Resp. 44–49. We find that Petitioner’s contentions regarding the undisputed limitations of claim 1, and the proffered rationales for combining the teachings of Lyon and Bezama, are persuasive and adequately supported. See Pet. 59–77; Ex. 1003 ¶¶ 107–139; see also Paper 11, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”) We now turn to the single disputed limitation of claim 1.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the foregoing reasons, we find that Lyon and Bezama teach or suggest all limitations of claim 1, and that Petitioner has set forth adequate rationales for combining the teachings of these references in a manner that would satisfy claim 1. Petitioner has demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103. b) Claims 2, 3, 5, 7, and 25 Petitioner also identifies portions of Lyon and Bezama that allegedly teach or suggest each limitation recited in claims 2, 3, 5, 7, and 25, and that these contentions are supported by testimony from Dr. Tilton. See Pet. 78– 84; Ex. 1003 ¶¶ 140–151. Petitioner additionally identifies rationales for why a person of ordinary skill in the art would have had reason to combine the teachings of Lyon and Bezama to arrive at the inventions recited in those claims. See id. Patent Owner does not dispute these contentions or set forth any separate arguments for the patentability of claims 2, 3, 5, 7, and 25, but instead relies solely on its arguments with respect to claim 1. See Resp. 49. Patent Owner’s arguments regarding claim 1 are not persuasive for the reasons set forth above. On this record, we find that Lyon and Bezama teach or suggest all” slip op. at 28
Patent outcomesUS 9,057,567 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,057,567 - Eis GmbH v. Novoluto GmbHNo claims unpatentablePTAB · Sep 23, 2021 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–3, 5, 7, 8, 11, 14, 15, and 17–26 were not shown unpatentable under the Taylor anticipation or Taylor-based obviousness grounds.
RulingsFinal written decision- Expert testimonyPatent owner expert creditedDenied
“disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35
- ExcludeMotion to exclude, deniedDenied
“5. Conclusion For the reasons set forth above, we deny the portion of Petitioner’s” slip op. at 73
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“7 Petitioner presents argument that the term “pressure field generator” should be construed as a means-plus-function term limited to the following structure: at least one first chamber, at least one second chamber, and at least one connection element. Reply 25–26. As we find that it is not necessary to construe this term to resolve the issues before us, we do not address these arguments presented by Petitioner.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“disclosure of a suction cup “sealingly” receiving the vulva occurs when the vacuum is applied, not before. See Ex. 2034 ¶ 121. We disagree with Petitioner’s conclusion that “Taylor discloses that arm 26 ‘compresses . . . and then expands bellows 160’ after member 156 ‘sealingly’ engages the vulva.” Reply 9. The single statement in Taylor on which Petitioner relies states, with reference to Figure 3 set forth above in Section II.D.1, “[t]he first stimulator 154 includes a suction cup member 156 that conformingly and sealingly receives the upper portion of the vulva.” Ex. 1004, 5:29–31. We agree with Dr. Jensen that this does not support Petitioner’s conclusion that a seal is achieved before the vacuum is applied, and credit Dr. Jensen’s testimony that reads as follows as consistent with Taylor’s disclosure.” slip op. at 35
Patent outcomesUS 9,849,061 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,849,061 - PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,918,801 - Amazon.Com, Inc. / Amazon.Com LLC et al. v. VB Assets, LLCInstitution deniedPTAB · Feb 24, 2021 · IPR2020-01388 · APJ Sean P O’Hanlon · IPR · Institution
Institution was denied for claims 1–23 because the Petition did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner will prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would have at least a Bachelor-level degree in computer science, computer engineering, electrical engineering, or a related field in computing technology, and two years of experience with automatic speech recognition and natural language understanding, or equivalent education, research experience, or knowledge.” Pet. 4 (citing Ex. 1002 ¶¶ 26–29). Patent Owner does not contest Petitioner’s definition or proffer an alternate definition. See generally Prelim. Resp. The level of ordinary skill in the art often is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Patent Owner also argues that the Petition does not set forth adequate rationale for modifying Cohen to include Yonebayashi’s alleged recognition of pronouns because Cohen’s system presents a “yes-no question” to the user and the “yes” answer is enough for Cohen’s system to reserve a rental car. Prelim. Resp. 18–19. We agree. Petitioner relies on Cohen’s disclosure of presenting to the user questions the answers to which are one word. Pet. 22 (citing Ex. 1012, 19:1–10, 19:24–31), 25 (citing Ex. 1012, 19:8–13, 19:24–34). In each of these examples cited by Petitioner, the user responds by saying “yes.” Ex. 1012, 19:11, 19:32. Petitioner does not explain persuasively why it would be obvious to change this one-word response to include additional words, including pronouns, or why this modification would be of any benefit. Furthermore, even if a user’s utterance were to include the other words as suggested by Petitioner, Petitioner does not explain persuasively why it would be obvious to modify Cohen’s system to look to those additional words instead of the uttered “yes” to which Cohen’s system already responds and which remains in Petitioner’s modified utterances. See Pet. 27 (suggesting that the user respond by saying “Yes, I need that” or “Yes, reserve it” (emphases omitted)).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,269,097
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.