- PTAB · Mar 25, 2026 · IPR2024-01380 · APJ Arthur M Peslak · IPR · Final written decision
The Board cancelled original claims 1–10 and granted substitute claims 11–19 because Petitioner did not prove claim 11 obvious over Torrence and Piepho.
RulingsFinal written decision- 112 supportGranted
“relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Id. “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Yingbin-Nature (Guangdong) Wood Ind. Co., Ltd. v/ Int’l Trade Com’n, 535 F.3d 1322, 1334 (Fed. Cir. 2008). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “This inquiry . . . is a question of fact.” Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Further, inventions in the mechanical and electrical-based arts usually involve predictable factors and can be more predictable than other fields, such as chemistry and biology. See In re Fisher, 427 F.2d 833, 839 (CCPA 1970);” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction We determine that no express construction of any claim term is necessary for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“[c]ombin[e] the tapered region of Piepho with the shaft of Torrence, the tapered region would extend from an uppermost extremity of the shaft.” RMTA Opp. 9. But, Petitioner concedes that neither reference discloses a tapered region extending from the uppermost extremity. Petitioner argues that Torrence’s shaft is straight (Amended RMTA Sur-reply 9) and that “[t]he tapered region of Piepho does not extend to the extreme end of the shaft.” RMTA Opp. 11 (emphasis added). Because neither Torrence nor Piepho discloses a shaft with a tapered region that “extends from an uppermost extremity of the shaft,” we find that the combination of Torrence and Piepho does not teach limitation 11[a]. We now analyze whether Petitioner provides reasoning with a rational underpinning why a person of ordinary skill in the art would have been motivated to modify Torrence with Piepho to extend Torrence’s taper from the upper extremity of its shaft. slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,827,568 - PTAB · Feb 10, 2026 · IPR2025-00687 · APJ Kristina M Kalan · IPR · Remand
On remand, the Board instituted IPR on claims 1–8 and 10–18 over all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsRemand decision- RemandInstituted
“Paper 34, 1 (requesting “Director Review of the Director’s August 22, 2025 Decision Referring the Petition to the Board (‘Referral Decision’)”). Patent Owner argued that institution of IPR2025-00687 and IPR2025-00688 “should be discretionarily denied.” Id. at 5. Petitioner opposed. Paper 37. The Director granted review and found that “granting institution of two petitions that each challenge the same claims of the ’370 patent and ’218 patent 2” was an “abuse[] of discretion.” Paper 40, 1. The Director remanded the cases “to the Board panel to determine which of the two petitions challenging each of the ’370 and ’218 patents to institute.” Id. at 3. Pursuant to the Director’s instruction that we choose only one of the two petitions challenging the ’370 patent to institute, and for the reasons set forth below, we choose to institute review of the ’370 patent in this Petition, and not in IPR2025-00688.” slip op. at 3
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b). Petitioner bears the burden of demonstrating compliance with 35 U.S.C. § 312(a)(2) and § 315(b). See, e.g., Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152 (PTAB Jan. 24, 2019)” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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). Furthermore, the prior art itself can reflect the appropriate level of ordinary skill in the art. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “[does] not, at this time, contend that any term requires construction,” and instead, states that “[a]ll terms have been accorded their plain and ordinary meaning.” Pet. 11 (citing Ex. 1002 ¶¶ 212–215). Patent Owner asserts that it “does not presently propose any constructions,” but discusses the Board’s claim construction in IPR2020- 00834, Paper 18, 7–8. Prelim. Resp. 7. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to construe any claim term expressly.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,933,370 - PTAB · Feb 10, 2026 · IPR2025-00717 · APJ Zhenyu Yang · IPR · Remand
On remand, the Board instituted IPR of claims 1–4 and 6–26 on all six asserted obviousness grounds, finding a reasonable likelihood of prevailing.
RulingsRemand decision- Director reviewDirector review, grantedOther
“The Director granted Director Review, finding that the panel “abused its discretion in granting institution of two petitions that each challenge the same claims” of the ’218 patent. Paper 39, 2. The Director vacated the DI and remanded the case “to the Board panel to determine which of the two petitions” to institute. Id. at 4.” slip op. at 4
- Parallel petitionsDecided for petitioner
“On November 4, 2025, we instituted inter partes review of all challenged claims based on all the grounds raised in the Petition. Paper 35 (“DI”). In the DI, we noted that “Petitioner filed an explanation regarding the necessity of multiple petitions,” and “Patent Owner d[id] not challenge that multiple petitions are necessary” in the Preliminary Response. Paper 23, 3 n.3.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Therefore, we institute inter partes review of all challenged claims based on all the grounds raised in this Petition.3” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that “[a] person of ordinary skill in the art [“POSITA”] would have at least a bachelor’s degree in chemical engineering, mechanical engineering, or a related field of study with at least two years of experience implementing pollution control in power generation plants for natural gas, coal, and/or industrial waste incineration.” Pet. 11 (citing Ex. 1002 ¶¶ 48–51). Patent Owner does not dispute the level of ordinary skill in the art. See generally Prelim Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a POSITA because it is consistent with the skill level reflected in the disclosures of the ’218 patent and prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,926,218 - PTAB · Sep 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Remand
The Board instituted IPR of claims 1–21 on all asserted grounds after finding a reasonable likelihood of prevailing on the Nishida-based challenges.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“partes review of U.S. Patent No. 8,266,749 B2 (“the ’749 patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–21 of the ’749 patent. Nike, Inc. (“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 10) and Patent Owner filed a Sur-reply (Paper 13). We discretionarily denied institution under 35 U.S.C. § 325(d). Paper 20. Petitioner filed a request for Director Review of the Decision denying institution. Paper 21. Director Review was granted, the Decision denying institution of inter partes review was vacated, and the case was remanded to the Board. Id. at 4. Specifically, the case was “remanded to the Board with instructions to consider Petitioner’s Nishida grounds and to determine whether the Petition should be instituted.” Id. at 3–4.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the Petition and the Preliminary 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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’749” slip op. at 2
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In support of Petitioner’s position, Dr. Adanur testifies that “Nishida discloses that the unfinished surface area 1.1 is part of the web 1 itself,” that Nishida discloses that the computer-controlled process can (using Nishida’s phrase) “put in” up to seven different textile fibers or yarns into the web of material in one operation, and that, “[t]hus, Nishida discloses simultaneously knitting its layouts 2 and tongue 40 (each a ‘textile element’) with the unfinished surface area 1.1 (a ‘surrounding textile structure’).” Ex. 1002 ¶ 216 (citing Ex. 1022, 2:12–20, 4:47–55, 5:45–49). For purposes of institution, we credit that testimony over the testimony of Dr. Pastore, because, on the current record, we regard Dr. Adanur’s testimony as more consistent with the evidence. This and the other related issues may be explored more fully during the trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’749 patent in March 2004 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 23–24. Patent Owner states that, “[f]or purposes of this Preliminary Response, Nike applies Skechers’ definition for a person of ordinary skill in the art.” Prelim. Resp. 14. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - PTAB · Aug 13, 2025 · IPR2025-00070 · APJ Neil T Powell · IPR · Remand
The Board instituted inter partes review of claims 1–21 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable over Capalik.
RulingsRemand decision- Director reviewOther
“Patent Owner then filed a Request for Director Review, arguing that Petitioner did not need two petitions to challenge the ’872 patent’s claims. Paper 19. Acting Director Coke Morgan Stewart granted Director Review. Paper 25 (“Director Review Decision” or “DR Dec.”); IPR2025-00068, Paper 25. The Director Review Decision vacated this proceeding’s Institution Decision and the 68 Institution Decision, remanding “to the Board panel to Authorizing the parties to brief “how the Board should construe the term ‘association,’” the Director Review Decision instructed us to “consider the parties’ claim construction arguments in making [our] determination.” Id.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Thus, the parties agree on the correct construction of “association.” And the parties persuade us to adopt their construction: “association” does not require any classification as authorized or unauthorized. Pet. 4–8; PO Remand Br. 1–3; Pet. Resp. Br. 1–2. This construction of “association” is the one applied in this Petition’s claim challenges, which comports with (1) our earlier determination that the Petition demonstrates a reasonable likelihood of prevailing and (2) Petitioner’s preference for this Petition over the 68 Petition. Pet. 4–8, 13–74; Dec. 10–22; Paper 3, 2; Pet. Resp. Br. 2, 5.” slip op. at 13
- BurdenDecided for petitioner
“D. The Merits of Petitioner’s Claim Challenges In our Institution Decision, after weighing the parties’ arguments and evidence, we determined that the Petition demonstrates a reasonable likelihood of establishing unpatentability of at least claim 1 of the ’872 patent as obvious over Capalik. E.g., Dec. 16–22. Based on all of the arguments and evidence currently of record, we remain persuaded that the Petition demonstrates a reasonable likelihood of prevailing on at least claim 1 of the ’872 patent. Indeed, as discussed above in Section II.A, the parties’ agreement on the correct construction of “association” reinforces this determination. III. CONCLUSION In view of the foregoing, having determined that Petitioner has demonstrated a reasonable likelihood of establishing at least claim 1 of the ’872 patent is unpatentable, we institute trial as to all challenged claims on all grounds stated in the Petition IV. ORDER It is: ORDERED that inter partes review of claims 1–21 of the ’872 patent is instituted on all grounds presented in the Petition; and” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“institution under § 325(d). Prior to our Institution Decision, Patent Owner did not argue we should deny under § 325(d). See generally Prelim. Resp.; Pet. Resp. Br. 4. Patent Owner first raised § 325(d) while its Request for Director Review was pending, emailing the Office with a request to brief § 325(d) in view of Ecto World. Ex. 3101, 4–5. The Office did not grant that request. Id. at 1. Nor did the Director Review Decision authorize Patent Owner to brief § 325(d). It only authorized Patent Owner “to file a ten-page brief explaining how the Board should construe the term ‘association.’” DR Dec. 4. In sum, Patent Owner’s unauthorized § 325(d) arguments are waived. Moreover, even if Patent Owner had not waived its § 325(d) arguments, we find Petitioner’s § 325(d) arguments more persuasive.” slip op. at 16
Claim constructionDiscretionary denialPatents in suitUS 9,954,872 - PTAB · Nov 29, 2024 · IPR2024-00133 · APJ Scott B Howard · IPR · Remand
On remand, the Board instituted IPR on claims 1–10 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Sturman and Ho.
RulingsRemand decision- RemandOther
“(“Decision Denying Institution” or “DDI”). Petitioner filed a request for Director Review and the Director vacated and remanded our Decision Denying Institution. Paper 11 (Petitioner’s Request for Director Review); Paper 12 (“Remand Dec.” or “Remand Decision”). Specifically, the Director directed that we: shall issue a new decision on institution resolving the claim construction of “a non-promotional background object.” Consistent with Phillips v. AWH Corp., 415 F.3d 1303, 1313–14 (Fed. Cir. 2005), the Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary. See, e.g., Samsung Elecs. Co., Ltd. v. Slyde Analytics, LLC, IPR2024-00040, Paper 14 at 7–8 (Vidal Aug. 2, 2024) (discussing the Phillips framework). The Board shall consider all remaining necessary issues, and determine whether to institute trial consistent with this decision. Id. at 7–8 (footnote omitted).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Sturman and Ho. 4. Analysis of Claims 2–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’089 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. See Prelim. Resp. 26–36. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 42
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“draws a distinction between foreground and background objects. Specifically, the prosecution history makes it clear that foreground objects are “in the forefront of the game play as primary objects to be manipulated or used during game play” and that background objects are “outside the primary focus of game play and as unexpectedly interactive components.” Ex. 1002, 85. However, whether an object is “outside the primary focus of game play and as unexpectedly interactive components” is based solely on the subjective perspective of the user. That is, what one user may consider a primary focus or expected object, another might consider outside the primary focus and unexpected. As the Director made clear in the Remand Decision, it is “improper[]” to have a claim construction “based on the subjective perspective of a user.” Remand Dec. 7; see also Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1353 (Fed. Cir. 2001) (“We are not prepared to assign a meaning to a patent claim that depends on the state of mind of the accused infringer.”). Accordingly, we cannot and do not adopt that as our construction of the term background. Not finding a construction of “background” based on the intrinsic evidence, we turn to the extrinsic evidence. See Remand Dec. 7 (“[T]he Board should resolve the proper meaning of that term by first assessing the intrinsic evidence, and then consulting extrinsic evidence if necessary.” (emphasis added)). Specifically, as part of the Decision Denying Institution, we considered various dictionary definitions of the word “background.” According to those definitions, “background” refers to “[t]he part of a pictorial representation that appears to be in the distance and that provides relief for the principal objects in the foreground.” Ex. 3002 (AMERICAN HERITAGE DICTIONARY); see also Ex. 3003 (“the scenery or ground behind something,” “the part of a painting representing what lies behind objects in the foreground”) (MERRIAM-WEBSTER DICTIONARY). Consistent with those dictionary definitions, we construe the term “background” to mean the part of a pictorial representation that is not in the foreground. The prosecution history provides more useful guidance as to what a “non-promotional” object is. As the applicant argued in the Amendment discussed above, a non-promotional object is one “which does not have an ‘area’ in which advertisements directly appear, but instead represents a ‘hot spot’ that, upon activation, causes ‘hidden promotional content’ to then appear.” Ex. 1002, 85–86. In other words, a non-promotional object does not display a promotional message unless the hotspot is activated. This understanding of the meaning of non-promotional is consistent with an earlier argument (Ex. 1002, 113–25) the applicant made during the prosecution of the ’089 patent.12 At that time, the applicant argued: In an exemplary embodiment, the location in-game may be represented by a non-promotional object, such as a blank chalk board depicted in the background of the gaming environment. See Applicant’s Specification at ¶ [0045]. Upon activating the hot spot (e.g., by throwing a dart at the chalk board), a promotional message may be drawn on the chalk board and displayed to the user. See id. In other words, Applicant’s amended claims 15 and 22, inter alia, may present promotional content once the game user activates, unknowingly, a “hot spot” associated with a non-promotional object—the non-promotional object is not an ordinary or visible place for advertisement, the 12 This argument was made on December 2, 2011, which is prior to the amendment adding the term background on July 15, 2013. Compare Ex. 1002, 117 (then pending claim 15 without the word “background”) with id. at 80 (amendment adding “background” to claim 15). user does not know that the object has a hidden hot spot, and the user does not know that activating the hidden “hot spot” will display promotional content. Ex. 1002, 122 (emphasis added).” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Moreover, even if we did consider only the specific references addressed in the Preliminary Response, we would not reach a different outcome. Patent Owner focuses on a high-level comparison of the references. See Prelim. Resp. 13–19. Such high-levels of similarity are to be expected as all of the references involve advertising in computer game programs. But such high-level similarity is not sufficient. See Juniper Networks, Inc. v. Swarm Tech. LLC, IPR2021-01445, Paper 15 at 16 (PTAB March 2, 2022) (Institution Decision) (“The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. That is, even though Leong and Bates have the same elements, that does not mean that the elements interact with each other the same way or perform the same functions as recited in the claims.”); see also Advanced Bionics, IPR2019-01469, Paper 6 at 15 (holding that prior art is substantially the same if “Petitioner relies on [the new art] in substantially the same manner as the Examiner cited [the previous art] during prosecution such that [the new art] discloses substantially the same information as [the previous art] in relevant part.”); Nokia of Am. Corp. v. Alexander Soto, IPR2023-00680, Paper 18 at 7 (PTAB Mar. 28, 2024) (Vidal) (determining the Board erred when “rather than identify material, substantive overlap between the arguments presented in the Petitions and those previously presented to the Office, the Board’s analysis relied on its discussion of high-level similarities but lacked detailed reasoning”); Wolfspeed, Inc. v . The Trustees of Purdue University, IPR2022-00761, Paper 13 at 7 (PTAB Mar. 30, 2023) (Vidal) (vacating the Board’s decision when the “analysis of the first part of the Advanced Bionics framework did not consider sufficiently the material differences between” the art the Office previously considered and the art the Petition cited). Nor were any of Petitioner’s Reply arguments improper. We expressly authorized Petitioner to respond to Patent Owner’s arguments that the prior art relied on in the Petition was substantially the same as prior art that was considered. Ex. 3005 (Email from the Board to the parties) (“Petitioner is authorized to file a preliminary reply brief addressing 1) Patent Owner’s arguments under 35 U.S.C. 325(d). . . .”). Moreover, given the facts of this proceeding, it is not reasonable to require Petitioner to anticipate “substantially the same prior art” arguments and address them in the Petition. Accordingly, Petitioner’s argument is a proper reply argument. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,688,089 - PTAB · Sep 11, 2024 · IPR2023-00763 · APJ Kristen L Droesch · IPR · Remand
Instituted review of claims 7 and 11 on the § 103 ground over Park and IEEE 802.16-2004.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“considering the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential only as to Section II.B.4.i) (“General Plastic”), and expanded upon in Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve”). Paper 17 (“Decision”). Petitioner requested Director Review of the Decision, which was granted. Papers 18, 19. On March 22, 2024, the Director issued a Decision Vacating the Decision as an improper extension of the “significant relationship,” as set forth in General Plastic and Valve, and remanding to the Board to issue a decision on institution that addresses the merits of the Petition. Paper 28 (“Director’s Decision”).” slip op. at 2
- RemandOther
“considering the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential only as to Section II.B.4.i) (“General Plastic”), and expanded upon in Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve”). Paper 17 (“Decision”). Petitioner requested Director Review of the Decision, which was granted. Papers 18, 19. On March 22, 2024, the Director issued a Decision Vacating the Decision as an improper extension of the “significant relationship,” as set forth in General Plastic and Valve, and remanding to the Board to issue a decision on institution that addresses the merits of the Petition. Paper 28 (“Director’s Decision”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “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).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). Accordingly, for purposes of this decision, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - PTAB · Aug 30, 2024 · IPR2022-01531 · APJ Devon Zastrow Newman · IPR · Remand
On remand, the Board instituted inter partes review of claims 1–17, 20–21, 24–26, and 29–34 on all grounds stated in the Petition.
RulingsRemand decision- Director reviewOther
“Petition did not establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims, and did not institute inter partes review. Paper 17 (“Inst. Dec.”). Petitioner requested Director review of our decision denying institution (Paper 18 (“Request”)). The Director delegated review of the decision to a Delegated Rehearing Panel. Paper 19. Patent Owner was granted the option to file a response to Petitioner’s Request (Paper 22 (“Request Resp.”)). The Director Review Panel (“DRP”) vacated our decision and remanded the case to this panel with a revised construction for claim 1. Paper 23 (“DRP Dec.”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect (2018). Upon reconsideration of the briefing and the evidence of record in light of the DRP’s claim construction, we conclude that Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable. Accordingly, we grant institution of inter partes review of claims 1–17, 20–21, 24–26, and 29–34 of the ’682 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We find that Petitioner has demonstrated a material error by the Office in the prior consideration of Morales-Sanfrutos, Straus, Singh, and Lees. For instance, under the second prong of Advanced Bionics, we consider “(c) the extent to which the asserted art was evaluated during “(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art.” Becton, Dickinson, 17–18. We agree with Petitioner that the Office overlooked Morales- Sanfrutos’ and Singh’s teachings during examination and reexamination. Pet. 79. Although Morales-Sanfrutos, Straus, and Singh were listed on an IDS, they were not the subject of a rejection during examination or reexamination. Moreover, for the reasons discussed below at this stage with regard to Petitioner’s grounds over Morales-Sanfrutos, as evidenced by Straus, and over Singh, Petitioner sufficiently demonstrates that the Office materially erred in overlooking Morales-Sanfrutos’s and Singh’s teachings regarding their linker structures. Id. Further, to the extent the Lees’ teachings were considered during examination and reexamination, Lees’ disclosure of a homobifunctional sulfone linker was overlooked. Lees’ homobifunctional linker, which Patent Owner argues is substantially similar to Harris’ homobifunctional linker, which Petitioner chiefly relies upon in Grounds 2–5, was not the subject of a rejection during examination. Pet. Resp. Brief 1; Prelim. Resp. 25–26. We agree with Petitioner that only Lees’ heterobifunctional linker was applied in a rejection during examination. Pet. Resp. Brief 1; Ex. 1018, 42–43, 62. 4. Conclusion For the foregoing reasons, we decline to exercise discretion to deny institution under § 325(d).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the information presented, we find that the asserted prior art itself is sufficient to demonstrate the level of skill in the art at the time of the (prior art itself can reflect the appropriate level of ordinary skill in the art). To the extent a more precise definition is required, we apply Petitioner’s unopposed definition for purposes of determining whether to institute review because it is consistent with the disclosures of the asserted prior art references.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,131,682 - PTAB · May 15, 2024 · IPR2023-00268 · APJ Sean P O’Hanlon · IPR · Remand
The Board instituted IPR on claims 1–3, 5–10, 16–18, and 21–25 based on all asserted grounds, finding a reasonable likelihood of success on anticipation and obviousness.
RulingsRemand decision- RehearingOther
“On August 11, 2023, a majority of the panel entered a Decision denying institution of inter partes review. Paper 9 (“Board Decision”). On September 11, 2023, Petitioner timely filed a request for Director Review of the Board Decision. Paper 10. On November 7, 2023, the Director delegated Director Review of the Board Decision to a Delegated Review Panel (“DRP”). Paper 11. On February 21, 2024, the DRP issued a decision granting Petitioner’s request for Director Review rehearing, vacating the Board Decision, and remanding to the original panel to reconsider whether to institute review. Paper 14 (“DRP Dec.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“[T]he Board’s cases addressing earlier trial dates as a basis for denial under NHK have sought to balance considerations such as system efficiency, fairness, and patent quality.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5 (PTAB Mar. 20, 2020) (designated precedential). Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),1 which provides several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (designated precedential in relevant part). 1 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Petitioner stipulates “not to pursue, in the[Delaware litigation], any argument that the Challenged Claims are invalid on any ground that was raised or could have been reasonably raised in this [inter partes review], should th[e] petition be instituted.” Pet. 86; see also Ex. 1057, 1 (“If the Patent Trial and Appeal Board institutes a proceeding for [this inter partes review], [Petitioner] will not pursue in the [Delaware litigation], any argument that the challenged claims of the patent in [this inter partes review] are invalid on any ground that was raised or could have been reasonably raised in [this inter partes review] proceeding.”). Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims is unpatentable. At this preliminary stage, we have not made a final determination with respect to the patentability of the challenged claims or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Accordingly, inter partes review is instituted as to all challenged claims and all proposed grounds of unpatentability. See 37 C.F.R. § 42.108(a). V. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–3, 5–10, 16–18, and 21–25 of the ’779 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. We note that Patent Owner’s declarant, Dr. Vancura, uses essentially the same definition as Petitioner. See Ex. 2001 ¶ 33. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,200,779 - PTAB · Mar 14, 2024 · PGR2022-00061 · APJ Thomas L Giannetti · PGR · Final written decision
The Board granted Patent Owner’s non-contingent motion to amend, cancelling claims 1–34 and replacing them with substitute claims 35–66 supported by the written description.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“complies with the legal requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221. Lectrosonics, Paper 15 at 4, 7–8. Specifically, Patent Owner must show that the amendments do not enlarge the scope of the claims or introduce “new matter.” See 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii)). Lectrosonics describes “new matter” as follows:” slip op. at 4
- 112 supportGranted
“description support for the proposed substitute claims. See 35 U.S.C. § 326(a)(9); 37 C.F.R. § 42.221; Lectrosonics, Paper 15 at 7–8. The written description test is met when the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with this argument because it is not consistent with the ’953 patent specification or the plain meaning of “replace.” Neither party requested a special construction of the term “replace.” We see no merit in Petitioner’s contention that the plain meaning of “replace” in Figure 32 does not require removal of the device being replaced. The contention that the plain meaning of “replace” does not require “removing” was explored with Petitioner’s counsel at the oral argument: THE BOARD: If you replace a player in a football game or baseball game, a new player goes in and replaces that player. You don't add a 12th, a 12th player or a 10th player to a baseball team. You replace the player that’s there with a different player. Isn’t that what replacement is all about? COUNSEL FOR PETITIONER: Your Honor, in that context, it absolutely is. Because there’s no other way to understand that. You know, but we’re not talking about baseball or people here obviously. Hearing Tr. 18:23–19:3 (emphasis added).” slip op. at 15
Claim constructionPatents in suitUS 11,349,953
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.