- PTAB · Jun 23, 2025 · PGR2025-00016 · APJ Eric C Jeschke · PGR · Institution
The Board instituted PGR on claims 4–14 on all asserted grounds, finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 324 (2024); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute a post-grant review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner and “notes that it substantially tracks” Patent Owner’s definition. Prelim. Resp. 19–20; see also id. at 20 n.7 (defining one of ordinary skill in the art as having “at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of machines, or have had equivalent knowledge and experience”). Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Patent Owner’s proposal is the same, except for use of the term “machines” instead of “vehicles.” Furthermore, Patent Owner does not argue at this stage of the proceeding that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“In contrast, we view the record at this stage as supporting an understanding of the “frame” in “mainframe” as a supporting structure. Patent Owner provides a dictionary defining “frame” as a “rigid supporting structure” (Prelim. Resp. 22 (citing Ex. 2009 at 3)), and Petitioner proposes “a supporting structure” based on that definition (see Pet. Reply CC Br. 3 (mistakenly citing Ex. 2007 rather than Ex. 2009)). Further, this dictionary definition does not contradict the “mainframe” described in the Specification or any other intrinsic evidence. See, e.g., Ex. 1001, Fig. 4, 2:44–45 (“FIG. 4 is a perspective view of a mainframe of a compact tool carrier.”); see also Phillips, 415 F.3d at 1322–23 (stating that judges may “rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents”).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Patent Owner’s argument does not identify a deficiency in the Petition, however, because we did not adopt any part of Patent Owner’s proposed construction of “mainframe,” including the phrase “the body,” which serves as the starting point of Patent Owner’s argument here. See § II.C.3. Instead, we preliminarily construe “mainframe” under its plain and ordinary meaning as a primary supporting structure. Id. Limitation 4.2 makes clear that the “mainframe” supports the “loader.” The current record supports that at least the structures shaded in green and blue in the annotated version of Figure 1 of KR996 immediately above are the primary supporting structure for the loader (i.e., a “mainframe”)—i.e., when in operation, those structures provide the primary “weight-bearing frame supporting the loader unit 40” in KR996. Pet. 24 (“KR996’s mainframe includes the frame components of KR996 vehicle for supporting the attached loader unit 40 by providing structural or weight-bearing support when the vehicle is in operation.” (citing Velinsky Decl. ¶¶ 65–67)); Pet. 26–27 (stating that the “mainframe” are the “portions [that] are part of a frame or body making up the KR996 vehicle when in operation providing structural and weight-bearing support for the loader unit 40, in addition to support for other features such as the control station and drive mechanism” (citing Velinsky Decl. ¶ 67)); see, e.g., Ex. 1005, Figs. 7–9 (showing the vehicle of KR996 in operation). The testimony of Dr. Velinsky supports these positions, explaining that one of ordinary skill in the art would have understood the green and blue structures above as part of a “mainframe.” See Velinsky Decl. ¶¶ 66– 67, cited at Pet. 24–27. At this stage of the proceeding, Patent Owner has not presented declaration testimony—but rather only attorney argument— supporting that one of ordinary skill in the art would have identified fixture 41 in KR996 as something other than a “mainframe.” See Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (“‘[A]ttorney argument is not evidence’ and cannot rebut other admitted evidence.” (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017))). On the current record, we determine that Petitioner has made a sufficient showing that KR996 discloses or suggests the mainframe limitations.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 12,098,063 - PTAB · Jun 23, 2025 · IPR2025-00381 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–10 on all asserted grounds, finding a reasonable likelihood that Kubota would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner and “notes that it substantially tracks” Patent Owner’s definition. Prelim. Resp. 19–20; see also id. at 20 n.7 (defining one of ordinary skill in the art as having “at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of machines, or have had equivalent knowledge and experience”). Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Patent Owner’s proposal is the same, except for use of the term “machines” instead of “vehicles.” Furthermore, Patent Owner does not argue at this stage of the proceeding that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“But that the Specification may indicate that a “loader support” and a “mainframe” may have some similar functionality does not make the terms interchangeable from a claim construction perspective. See Bd. of Regents of the Univ. of Texas Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008) (“Different claim terms are presumed to have different meanings.”) (citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”)). For these reasons, we are not persuaded by Patent Owner’s view that intrinsic and extrinsic evidence regarding a different term—“mainframe”—supports a similar proposed construction for “loader support.” See, e.g., Prelim. Resp. 22–27 (discussing intrinsic and extrinsic evidence relating to “mainframe” and then proposing a definition of “loader support”). Instead, we apply the plain and ordinary meaning of “loader support,” which aligns with the view of the Iowa District Court. See Ex. 1020 at 5 (the Iowa District Court stating that “loader support” “will be given [its] plain and ordinary meaning”); 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.”). We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We have reviewed Petitioner’s contentions with respect to the claim, and for the reasons below, we determine that the Petition shows a reasonable likelihood that Petitioner would prevail in demonstrating that claim 1 is both anticipated and would have been obvious based on KR996.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,465,891 - PTAB · Jun 11, 2025 · IPR2025-00139 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“d. Overlap of Issues “[I]f the petition includes the same or substantially the same claims, grounds, arguments, and evidence as presented in the parallel proceeding, this fact has favored denial.” Fintiv, Paper 11 at 12. “Conversely, if the petition includes materially different grounds, arguments, and/or evidence than those presented in the district court, this fact has tended to weigh against exercising discretion to deny institution under NHK.” Id. at 12–13. Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel district court litigation the grounds advanced in the petition. Sand Revolution II, LLC v. Cont’l Intermodal Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB June 16, 2020) (informative). The Board suggested that a broader stipulation such as one stipulating that the petitioner “would not pursue any ground raised or that could have been reasonably raised in an IPR, i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patents or printed publications” would better address concerns relating to overlapping issues. Id. at 12 n.5. Here, Petitioner’s stipulation is broader—Petitioner stipulates that, if the Board institutes IPR in this proceeding on the grounds presented in the Petition, Petitioners will not pursue an invalidity defense in the [Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the grounds that were raised or any grounds Petitioner[] reasonably could have raised in the IPR. Prelim. Reply 3. Petitioner’s stipulation is similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part), which was found to obviate much, if not all, of any potential overlap between the issues in the proceeding and the district court proceeding. See Prelim. Sur-reply 3 (acknowledging that “Petitioner[] offered a Sotera stipulation.”) Accordingly, the facts underlying this factor weigh strongly against exercising our discretion to deny institution.” slip op. at 13
- Other 314aDenied
“Patent Owner argues that the Petition improperly presents voluminous and excessive grounds challenging the claims of the ’878 patent. Prelim. Resp. 10–14. Patent Owner argues that the twenty distinct grounds set forth in the Petition alone is reason to deny institution. Id. at 11. Patent Owner argues that Petitioner’s showing regarding the VFD, switchgear, and enclosure recitations of claim 1 require us to “pick-and-choose” which “prior art evidence” is being applied. Id. at 14. We are not persuaded that the Petition sets forth such voluminous or excessive grounds asserting unpatentability that we should deny institution. Although Petitioner does set forth twenty grounds, sixteen of the grounds are directed to a single dependent claim. See Pet. 16–17. And of the four grounds challenging independent claim 1, Petitioner relies primarily on the combined teachings of Morris and Oehring IV to disclose or teach most of the claim recitations, relying on Premset Catalog and Premset Brochure to teach front-aligned, shielded cable connections and on Payne to provide an alternate teaching of using a common support structure. See Pet. 48–51, 70–74. The instant Petition is quite unlike those in the decisions cited by Patent Owner, which dealt with petitions asserting challenges containing multiple instances of “and/or” that resulted in hundreds of challenges or asserting multiple challenges grouped together in an indiscernible claim chart. See Prelim. Resp. 10 (citing Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 (PTAB Mar. 6, 2019) (informative); Uber Techs., Inc. v. Surgetech LLC, IPR2023-00738, Paper 8 (PTAB Oct. 23, 2023); EnergySouce Mins., LLC v. TerraLithium LLC, IPR2019-01607, Paper 10 (PTAB May 4, 2020)). And although we agree that the Petition is not the epitome of clarity, we are able to interpret Petitioner’s arguments as set forth below. Accordingly, we determine that the circumstances presented weigh against exercising discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the number of challenges presented in the Petition.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds. slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the effective filing date would have had either “a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field, as well as at least 2 years academic or industry 2 At this stage of the proceeding, the parties have not directed us to any such objective evidence. experience in the oil and gas industry, including well drilling, completion, or production” or “at least four years industry experience in the oil and gas industry including well drilling, completion, or production.” Pet. 17 (citing Ex. 1003 §§ V.A, VII). “Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 9. We find Petitioner’s uncontested definition to be consistent with the problems and solutions disclosed in the ’878 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,208,878 - PTAB · Jun 10, 2025 · IPR2025-00170 · APJ Eric C Jeschke · IPR · Institution
Instituted IPR on claims 1–36 on all asserted grounds; the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner and “notes that it substantially tracks” Patent Owner’s definition. Prelim. Resp. 20; see also id. at 20–21 n.7 (defining one of ordinary skill in the art as having “at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of machines, or have had equivalent knowledge and experience”). Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Patent Owner’s proposal is the same, except for use of the term “machines” instead of “vehicles.” Furthermore, Patent Owner does not argue at this stage of the proceeding that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the Texas District Court stayed the Texas Litigation pending the resolution of this inter partes review and the related inter partes reviews. See Ex. 1037 at 6; Prelim. Reply 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Specification. We first address the sentence highlighted in the Board’s request for additional briefing on claim construction: “As used herein, the term ‘mainframe’ generally refers to a single weldment to which the loader 8 is attached, optionally through one or more pivotal linkages.” Ex. 1001, 4:5–8, quoted at Paper 6 at 3. In the request, the Board sought briefing on whether this sentence is (1) a lexicographical definition of “mainframe” or, in the alternative, (2) merely a description of an embodiment. Paper 6 at 3. The parties both responded that this sentence is not lexicographical, but rather, merely describes an embodiment. See PO Init. CC Br. 1–5; Pet. Init. CC Br. 1–4; PO Reply CC Br. 1 (noting agreement); Pet. Reply CC Br. 1 (same). For the reasons below, we agree with the parties. “To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). As argued by both parties, the presence of “generally” in the sentence at issue shows a lack of clear intent to redefine “mainframe.” PO Init. CC. Br. 3; Pet. Init. CC Br. 2; cf. ParkerVision, Inc. v. Vidal, 88 F.4th 969, 976–77 (Fed. Cir. 2023) (finding definitional the sentence “[s]torage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal” (emphasis added)); Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (finding definitional the sentence “[a] ‘controlled amount’ of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when aniline is utilized as the solvent” (emphasis added)). Because the sentence at issue is not lexicographical, we also agree with the parties that “mainframe” is not limited to a single weldment. Pet. Init. CC Br. 1; PO Init. CC Br. 1–2. Instead, a single-weldment “mainframe” is merely one disclosed embodiment. See Pet. Init. CC Br. 3 (stating that “by including the term ‘generally’ in a statement, the feature (i.e., single weldment) is expressly identified as merely included in some, but not all embodiments”); PO Init. CC Br. 3 (“This language is merely exemplary, using reference numerals to refer to the embodiment’s features and qualifying ‘single weldment’ as referring ‘generally’ to specific embodiments.”). The Iowa District Court reached the same conclusion. See Ex. 1020 at 4 (holding that “‘mainframe’ will be given its plain and ordinary meaning and does not require a single weldment” (emphasis added)), cited” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,975,750 - PTAB · Jun 10, 2025 · IPR2025-00171 · APJ Eric C Jeschke · IPR · Institution
Instituted IPR on claims 1–16 and 19–28 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“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 prior art. 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 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.” Id. (internal quotation marks and citation omitted).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the Texas District Court stayed the Texas Litigation pending the resolution of this inter partes review and the related inter partes reviews. See Ex. 1037 at 6; Prelim. Reply 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,202,266 - PTAB · Jun 10, 2025 · IPR2025-00169 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 50–63, 68, 69, and 80–85 under all asserted grounds after finding a reasonable likelihood of unpatentability for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the additional briefing, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 50–63, 68, 69, and 80–85 of the ’386 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the District Court stayed the Parallel Litigation pending the resolution of this inter partes review and the related inter partes review. Ex. 1037, 6; Pet. DD Br. 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (“POSITA”) at the time of invention. Graham, 383 U.S. at 17. Petitioner proposes the following definition for a POSITA: [A] POSITA in February 2015 (the earliest effective filing date claimed) would have had at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of vehicles, or have had equivalent knowledge and experience. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 16–17 (citing Ex. 1003 ¶¶ 17–20). Patent Owner does dispute this definition in its Preliminary Response. Prelim. Resp. 21–22. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it is consistent with the ’386 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - PTAB · Jun 10, 2025 · IPR2025-00168 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 31–49, 70–79, 86, and 87 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the petition’s obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the District Court stayed the Parallel Litigation pending the resolution of this inter partes review and the related inter partes review. Ex. 1037, 6; Pet. DD Br. 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id. For part one of the Advanced Bionics framework, we evaluate the following factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination;” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the additional briefing, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 31–49, 70–79, 86, and 87 of the ’386 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A] POSITA in February 2015 (the earliest effective filing date claimed) would have had at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of vehicles, or have had equivalent knowledge and experience. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 18 (citing Ex. 1003 ¶¶ 17–20). Patent Owner does dispute this definition in its Preliminary Response. Prelim. Resp. 33. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it is consistent with the ’386 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - PTAB · Jun 10, 2025 · IPR2025-00167 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–13, 15, 17, 19–30, and 64–67 on all asserted grounds, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the Petition, the Preliminary Response, the additional briefing, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1–13, 15, 17, 19–30, and 64–67 of the ’386 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“On March 19, 2025, however, the District Court stayed the Parallel Litigation pending the resolution of this inter partes review and the related inter partes review. Ex. 1037, 6; Pet. DD Br. 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (“POSITA”) at the time of invention. Graham, 383 U.S. at 17. Petitioner proposes the following definition for a POSITA: [A] POSITA in February 2015 (the earliest effective filing date claimed) would have had at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of vehicles, or have had equivalent knowledge and experience. Lack of professional experience can be remedied by additional education, and vice versa. definition in its Preliminary Response. Prelim. Resp. 21. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it is consistent with the ’386 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - Sram, LLC v. Fox Factory, Inc.All claims unpatentablePTAB · Jun 6, 2025 · IPR2024-00216 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–9, 11–15, and 19 are unpatentable, including by anticipation over Gartner and Nakaya and obviousness over Gartner and Kodama and Nakaya and Kodama.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’223 patent “would have a degree in Mechanical Engineering and at least three years’ experience in vehicle suspension technology, or a Master’s degree in Mechanical Engineering with a concentration in design of vehicle suspension technology and/or shock absorbers.” Pet. 5–6, n.1. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. Based on the complete record, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As Petitioner discerns, claim 1 does not recite “dampening only at the end portion of a compression stroke.” Rather, claim 1 expressly requires “a fluid flow path formed in the bottom out cup for providing fluid communication from the cup to the compression portion of the chamber during a compression stroke of the damper[.]” Ex. 1001, 7:44–47 (emphasis added). In this way, claim 1 contemplates that the bottom out cup operates “during a compression stroke of the damper,” rather than only at the end portion of a compression stroke or only near an end of a compression stroke. Similarly, independent claims 11 and 19 do not require that the bottom out cup provide damping only at the end or near the end of a compression stroke. See Ex. 1001, 8:8–23, 8:61–9:5. Claim 11 recites “a bottom out cup in fluid communication with the damper chamber” and “an adjustable fluid flow path formed in the cup, the flow path providing fluid communication between the cup and the primary compression chamber in a compression stroke of the damper.” Id. (emphasis added). Claim 19 also recites “in a compression stroke of the damper” and does not limit damping to the end, or near the end of a compression stroke. See id. at 8:61–9:5 (“in to the compression chamber at a first rate with the valve in a first position and at a second rate with the valve in a second position where the first rate is greater than the second rate and the valve includes an adjuster accessible from an exterior of the shock absorber.”) (emphasis added). The ’223 patent as a whole also does not describe the bottom out cup as damping or providing dampening only at the end or near the end of the compression stroke, but more broadly as during the compression stroke. With reference to Figure 3A, the ’223 patent discloses that bottom out piston 250 enters “the bottom out cup 275 during a compression stroke of the shock absorber.” Ex. 1001, 3:38–50 (emphasis added). Additionally, we observe that the ’223 patent discloses “[a]s the piston completely engages the cup 275, dampening is increased.” Id. at 3:64–65 (emphasis added). We understand this to mean that bottom out dampening occurs at the end of the compression stroke, but may also occur “during” the compression stroke and “increase” as the piston completely engages the bottom out cup.” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. code (57) (emphases added). Though Gartner does not explicitly employ the term “bottom out cup,” it is not lost upon us that the internal shock absorber, e.g., shock absorber 400, functions during/in a compression stroke (e.g., after the initial portion of the compression stroke), to provide dampening while protecting from bottoming out. Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
Patent outcomesUS 8,550,223 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 8,550,223 - Lifecore Fitness, LLC D/B/A Assault Fitness v. Woodway USA, Inc.Some claims unpatentablePTAB · May 6, 2025 · IPR2024-00083 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–4, 6, 7, 9–13, 15, and 16 are unpatentable as obvious over Socwell, Magid, and Sclater; claim 8 was not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Prior to institution, Patent Owner argued that we should dismiss the Petition because it identifies the Petitioner as the California Corporation and not the Delaware Corporation. Paper 6, 23–24 (Preliminary Response); Paper 9, 1 (Preliminary Sur-Reply); Paper 12 (Conference Call Transcript); Paper 18 (Request for Director Review). In our Decision on Institution, we found Patent Owner’s argument, as applied to the facts of this proceeding, to be unpersuasive and corrected the caption to correctly reference Petitioner as the California Corporation, essentially replacing the “Inc.” with “LLC” in Petitioner’s name. Paper 13, 14–17; see also Paper 21 (Decision Denying Director Review).” slip op. at 3
- BurdenOther
“We find Dr. Giachetti’s testimony, alone, insufficient to establish by a preponderance of the evidence that a POSA, given Tollkien and Sclater, would have been motivated to look to one-way sprag-type clutches to solve the problem of unexpected forward motion of the running belt of a treadmill. Without a reference, like Magid, teaching that it was known to use a one-way clutch mechanism on a treadmill to prevent unexpected forward motion, we are persuaded by Patent Owner that Petitioner’s combination is impermissibly based in hindsight. See PO Resp. 42–47. After considering Petitioner’s evidence and analysis, and taking into account Patent Owner’s arguments and evidence, we determine that Petitioner has failed to show by a preponderance of the evidence that claim 1 is unpatentable over Tollkien and Sclater.” slip op. at 42
- ExcludeMotion to exclude, deniedGranted in part
“Declaration of Robert Giachetti, Ph.D. P.E) under FRE 401–402. Mot. 4 (citing FRE 401–402 in the heading). Patent Owner’s Motion, however, includes no substantive arguments directed to whether Giachetti Declaration is relevant admissible evidence or irrelevant inadmissible evidence. Mot. 4– 7. In its Reply, Patent Owner states: “While the Motion to Exclude does not expressly detail Exhibit 1036’s lack of relevance under FRE 401–402, the irrelevance is plain. Petitioner’s provision of new arguments in Reply, which is not allowed, renders such arguments irrelevant.” PO Reply to Mot., 1, n.1. Patent Owners argument is unpersuasive because it is a mere assertion without adequate explanation. The party moving to exclude evidence bears the burden of proving that it is entitled to the relief requested—namely, that the material sought to be excluded is inadmissible under the Federal Rules of Evidence. See 37 C.F.R. §§ 42.20(c), 42.62(a). Patent Owner’s mere assertion does not meet Patent Owner’s burden to show that Exhibit 1036 is irrelevant inadmissible evidence.” slip op. at 52
- Strike new argumentNew argument consideredDecided for petitioner
“8 Patent Owner argues that we should not consider Petitioner’s Reply and Exhibits 1036 and 1051 because the Reply and Exhibits relate to new arguments which should have been made in the Petition. PO Sur-Reply 4–5. We do not agree. Petitioner may rely upon Exhibits 1036 and 1051 to response to arguments raised in the Patent Owner’s Response. See PO Resp. (a ); Axonics, Inc. v. Medtronics, Inc., 75 F.4th 1374, 1380–1382 (Fed. Cir. 2023) (“we have continued to recognize that a petitioner is entitled under the APA to respond to new claim construction arguments made by a patent owner.”)” slip op. at 16
Patent outcomesUS 11,465,005 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,465,005
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.