• Phison Electronics Corporation v. Vervain, LLCInstitution denied
  PTAB · Apr 28, 2025 · PGR2024-00048 · APJ Stacey G White · PGR · Institution

  The Board denied institution because Petitioner did not show it was more likely than not that claims 1–6 were unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). We may not institute a post-grant review 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(a) (2024). Upon considering the evidence and arguments presented, we determine, as discussed below, that Petitioner has not demonstrated that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Therefore, we deny1 Petitioner’s request to institute post-grant review of claims 1–6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s declarant, Dr. Khatri, proposes a definition of the person of ordinary skill in the art. Ex. 2001 ¶ 24. Dr. Khatri, however, notes that his opinions would be the same under either his proposal or Petitioner’s proposal. Id. ¶¶ 25–26. Patent Owner states that, for purposes of the Preliminary Response, it “adopts Petitioner’s definition of a person of ordinary skill in the art.” Prelim. Resp. 13 (citing Pet. 22–23; Ex. 2001 ¶¶ 22–26). We determine that the current record supports Petitioner’s description of an ordinarily skilled artisan. For purposes of this Decision, therefore, we adopt Petitioner’s description of an ordinarily skilled artisan. We also note that the applied prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima, 261 F.3d at 1355.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes constructions for the claim terms “MLC memory modules” and “SLC memory module.” Pet. 23–28. Patent Owner disagrees with Petitioner’s constructions, but does not contest them because it argues that construction of these terms is not necessary to resolve the parties’ disputes. Prelim. Resp. 14. Based on the record presented, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “more likely than not” standard for instituting a post- grant review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” The Federal Circuit has held that “[t]he written description requirement is met when the disclosure relied on for support ‘reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’” RAI Strategic Holdings, Inc. v. Philip Morris Prods. S.A., 92 F.4th 1085, 1088 (Fed. Cir. 2024) (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted)). The written description inquiry is a question of fact, is context specific, and must be determined on a case-by-case basis. Ariad, 598 F.3d at 1351 (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985); Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “[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.” Id. (citing Capon, 418 F.3d at 1357–58). Factors used to evaluate the sufficiency of a disclosure include: 1) “the existing knowledge in the particular field”; 2) “the extent and content of the prior art”; 3) “the maturity of the science or technology”; and 4) “the predictability of the aspect at issue.” Id. (citing Capon, 418 F.3d at 1359). As support for the term “memory space,” the ’612 patent explains that because “the SLC NAND flash is used to boost the lifetime (endurance) of the storage system, it can be considerably lesser in amount than the MLC NAND flash.” Ex. 1001, 5:20–23; see Ex. 2001 ¶ 51. As an example, the ’612 specification states that “a system may set SLC NAND flash equal to 12.5% or 25% of MLC NAND flash (total non-volatile memory storage space=MLC+SLC).” Ex. 1001, 5:23–25; see Ex. 2001 ¶¶ 51, 62. In addition, we find persuasive Dr. Khatri’s testimony that one of ordinary skill in the art would have understood that “there are two spaces—MLC and SLC—where data is stored, and the total memory space is the combination of the two.” Ex. 2001 ¶ 51. Further, the ’612 patent’s Figure 1 depicts “memory space,” e.g., dynamic random-access memory (DRAM) 20, one or more disks 24, MLC NAND flash memory module 26, and SLC NAND flash memory module 28. Ex. 1001, 5:37–45, Fig. 1; see Ex. 2001 ¶ 64. The ’612 patent’s Figure 4 also depicts “memory space,” e.g., NAND flash memory bank 56 comprising “a plurality of MLC NAND flash memory modules 60a and a plurality of SLC NAND flash memory modules 62a” and NAND flash memory bank 58 comprising “a plurality of MLC NAND flash memory modules 60b and a plurality of SLC NAND flash memory modules 62b.” Ex. 1001, 7:8–14, Fig. 4; see Ex. 2001 ¶ 64. On the record before us, we find the above noted disclosures to be sufficient to support the disputed claim language. For these reasons, the ’612 patent’s disclosure “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” See Ariad, 598 F.3d at 1351.” slip op. at 15

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,854,612
• Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentable
  PTAB · Mar 17, 2025 · IPR2023-01456 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1–3, 5–8, and 10–17 are unpatentable as obvious over Imai and Higashi, with Grzesik or Pacala for dependent claims; remaining grounds were not reached.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Petitioner asserts that a person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering or physics, plus 2–3 years of experience in LiDAR design. Pet. 3 (citing Ex. 1003 ¶¶ 72–77). Patent Owner argues that a POSITA would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, with, at a minimum, at least one year of work experience was with LIDAR designs, where less work experience may be compensated by a higher level of education or vice versa. PO Resp. 4 (citing Ex. 2009 ¶ 60). We agree with and will apply Patent Owner’s statement of the level of ordinary skill in the art. This level of ordinary skill is reflective of the education and experience that would have been required to understand the problems and solutions identified in the ’381 patent and the prior art. Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001).” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The term “coincident with” as used in the ’381 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’381 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:61–4:5. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “We begin with the language of the claims. The claims merely require that the “plurality of pixels are arranged in a second arrangement, proportional to the first arrangement.” Ex. 1001, 17:30–31. There are no other specific requirements about “first arrangement” or the “second arrangement” and no specific requirement about what kind of “proportional[ity]” is required. Thus, the language of the claims does not provide a basis for Patent Owner’s narrow reading, nor does it necessarily preclude it.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner identifies multiple reasons to make this combination. First, with respect to Higashi’s bandpass filter, Petitioner argues that “a POSITA would have been prompted to implement Imai’s system to include a bandpass filter for the received light (as suggested by Higashi) so as to advantageously pass through only light of the operational wavelength of the corresponding laser emitter and ‘eliminate the effect of background light.’” Id. at 60 (citing Ex. 1011 ¶ 86; Ex. 1003 ¶ 256). Petitioner contends that “the resulting combination would advantageously filter out interfering light sources along the optical path of each of the detector pixels, thereby improving accuracy, improving the signal-to-noise ratio, and reducing the likelihood of false detections at the detector pixel.” Id. at 61. Second, Petitioner argues that “a POSITA would have been motivated to arrange multiple SPADs in each of Imai’s detector pixels (e.g., pixels 1- 16 in Imai’s FIG. 11) so that “erroneous detection of pixels[] can be reduced” and improved accuracy is achieved.” Id. (citing Ex. 1011 ¶ 71–72; Ex. 1003 ¶ 257; Ex. 1009 ¶ 48). Third, Petitioner contends that using Higashi’s multi-SPADs in Imai’s detector pixels would have led to uninterrupted performance when an individual diode is quenched, and would have furthered Imai’s objective of “inhibiting the increase of detection obtaining time” because multi-SPADs facilitate high speed data processing as they can take turns to receive the incoming photons. Id. (Ex. 1009 ¶¶ 6–7; Ex. 1011 ¶¶ 71, 72; Ex. 1027 ¶¶ 3– 4; Ex. 1003 ¶ 258). Fourth, Petitioner asserts that the combination “was simply the” slip op. at 45

  Patent outcomesUS 11,178,381 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,178,381
• Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01421 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 21 and 23–34 are unpatentable as obvious over Pacala and Droz, or Pacala, Droz, and Villenueve; the Board did not reach the Hall-based grounds.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
  • Skill levelSkill level patent owner adoptedDecided for patent owner
  • Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for patent owner
  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

  Patent outcomesUS 11,175,405 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,175,405
• Hesai Technology Co., Ltd. v. Ouster, Inc.All claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01457 · APJ Jon M Jurgovan · IPR · Final written decision

  Claims 44–48 and 50 are unpatentable as obvious over Imai, Higashi, and Grzesik; the Board did not reach the other grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). In determining the skill level, the Board may consider various factors including the “type of problems encountered in the prior 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. “In a given case, every factor may not be present, and one or more factors may predominate.” Id.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “In relation to Grounds 1A to 1D, Petitioner and Patent Owner dispute whether the claimed “stop region” can encompass a partially transparent material as disclosed by Retterath. PO Resp. 21; Pet. Reply 7–8; PO Sur-Reply 10. Because we do not reach Grounds 1A to 1D in this decision (see § III.D, infra), we need not and do not decide whether a “stop region” may include a partially transparent material. See Realtime, 912 F.3d at 1375, supra.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The term “coincident with” as used in the ’750 patent does not require perfect coincidence. To explain why, we provide an annotated version of Figure 2 of the ’750 patent below. In Figure 2 above, the rays of electromagnetic radiation indicated in red originate from illumination source 111, but they are not coincident with the corresponding aperture’s field of view, and instead they are absorbed or blocked by the aperture layer’s stop region. Ex. 1001, 3:51–63. As Figure 2 shows, out of five ray lines emitted by illumination source 111, only three are within its corresponding aperture’s field of view. This conveys an understanding that “coincident with” does not require perfect matching of the discrete spot of radiation from the illumination source and the aperture’s field of view.” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner contends that multiple reasons would have prompted a POSITA to combine Grzesik’s cross talk absorption layer (corresponding to the claimed “aperture layer”) in the Imai-Higashi combination. Pet. 51–53. First, Petitioner contends that implementing Grzesik’s absorption layer in the Imai-Higashi combination would reduce cross talk consistent with Imai’s objective of improving resolution by allowing for more pixels to be used in a specified detection area. Id. at 51–52 (citing Ex. 1012, 4:65–5:6, 5:11–32; Ex. 1009 ¶¶ 6–7; Ex. 1003 ¶¶ 212–213). Second, Petitioner asserts that the combination would have been prompted as “the application of known techniques (Grzesik’s suggested improvement for a cross talk absorption layer to reduce secondary detection) to a known system (the primary Imai LiDAR system) ready for improvement to yield predictable results (benefits articulated above).” Id. at 52 (citing KSR, 550 U.S. at 417). Petitioner asserts that “a POSITA would have had a reasonable expectation of success at adapting Grzesik’s cross talk absorption layer to the scanning laser radar of the Imai-Higashi combination.” Pet. 52 (citing Ex. 1003 ¶ 214). Specifically, Petitioner contends that “Grzesik demonstrates the known benefits of implementing a cross talk absorption layer disposed on the detector array, with apertures of the cross talk absorption layer aligned with individual detectors, and describes using its cross talk absorption layer on Geiger-mode APDs (e.g., SPADs) as used by the Imai-Higashi combination.” Id. at 52–53 (citing Ex. 1003 ¶ 214). Patent Owner does not dispute Petitioner’s contentions concerning the motivation to combine Imai, Higashi, and Grzesik, or the reasonable expectation of success a POSITA would have had in making the combination. Petitioner shows by a preponderance of the evidence that a POSITA would have been motivated to combine Imai, Higashi, and Grzesik with a reasonable expectation of success.” slip op. at 39

  Patent outcomesUS 11,190,750 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,190,750
• Hesai Technology Co., Ltd. v. Ouster, Inc.No claims unpatentable
  PTAB · Mar 13, 2025 · IPR2023-01422 · APJ Jon M Jurgovan · IPR · Final written decision

  The Board held claims 1–2, 4–9, 11–14, 16–17, and 19–25 not shown unpatentable over the asserted obviousness grounds, principally because the combinations lacked claimed limitations.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “Considering the applicable factors in light of the parties’ contentions, we adopt the following level of ordinary skill in the art, which we apply in this Decision: A person of ordinary skill in the art would have had an undergraduate degree in mechanical or electrical engineering and two to three years of work experience with electro-optical and electro-mechanical devices or systems, relevant to light ranging systems. Less work experience would have been compensated by a higher level of education or vice versa. The work experience would have included at least one year relevant to light ranging systems including LIDAR with a rotor-stator structure. We determine that this level of skill is consistent with the problems and solutions identified in the ’515 patent and the prior art. See, e.g., Okajima v. Bourdeau, 261 F.3d 1350 (Fed. Cir. 2001); Ex. 1001, 1:30–3:48; Ex. 1004 ¶¶ 3–10; Ex. 1005, 1:1–2:31; Ex. 1006, 1:1–2:60; Ex. 1007, 1. We also determine that the proposed level of skill is reflective of the education and experience a person of ordinary skill would have had. Ex. 1003 ¶¶ 39–41; Ex. 2004 ¶¶ 67–68.” slip op. at 19

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “We determine that the claimed “stator circuit board” and “stator assembly” are separate and distinct elements in claims 1 and 14 because they are set forth as separate elements in these claims. See Ex. 1001, 48:27–29, 48:37–42, 50:8–10. Similarly, claim 22 recites “a stator circuit board assembly” that includes as subcomponents “a first circuit board,” “a second circuit board,” and a “stator assembly” which are separate and distinct subelements. Id. at 51:49–59. “Where a claim lists elements separately, ‘the clear implication of the claim language is that those elements are ‘distinct component[s]’ of the invention.” Becton, Dickinson and Co. v. Tyco Healthcare Gr., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010) (citing Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir. 2004); Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404–05 (Fed. Cir. 1996)). This construction is confirmed by the ’515 patent’s specification. For example, the specification states that stator assembly 644 is affixed to circuit board 622, and, consistent with this statement, Figures 6A and 6D show them as separate elements joined together. Ex. 1001, 28:28–31, 30:16–24. Contrary to Petitioner’s contention, the specification’s stating that the stator elements are “built onto” or “integrated on” circuit boards (or assemblies containing them) does not mean that the stator assembly and circuit board are the same thing. Pet. Reply 1 (citing Ex. 1001, 4:19–22, 4:28–31). Rather, the specification describes the stator elements as part of the stator assembly which is coupled to a circuit board, as follows: VII. Integrated Electric Motor According to certain embodiments, an electric rotary motor can be integrated directly onto the circuit boards. The motor can have a "pancake" or "axial" design having a planar rotor assembly on a rotor board that opposes a planar stator assembly on an opposing stator board. The stator and rotor assemblies of the electric motor can be integrated onto the boards of the rotary actuator 608, i.e., the elements of the electric motor are one of many components on the surface of the printed circuit boards and thus a separate motor module is not required for LIDAR system 600. For example, referring back to FIG. 6D, stator assembly 644 can include an annular arrangement of multiple stator elements 644(i), e.g., vertically oriented solenoids (having their longitudinal axes perpendicular to the surface of the board) that are affixed (e.g., using an adhesive) to a board of the lower circuit board assembly 620 (e.g., board 622) or to a soft magnetic core that is then affixed to the lower circuit board assembly 620. Ex. 1001, 30:16–22. Thus, the ’515 patent’s specification expressly states that the stator elements of the stator assembly can be affixed to a printed circuit board, and thus the stator assembly is not the same thing as the board. Other parts of the specification are consistent with this view. See, e.g., id. at 4:54–57, 5:14–18, 6:50–53, 16:22–25.” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “We have construed claim 1’s limitation 1(g) to require “stator circuit board” and “stator assembly” that are separate and distinct elements. See § III.C.1, supra. Johnson discloses coil windings that are formed by patterning interleaved structures in a multi-layered printed circuit board (PCB) forming the stator platform 330, and interconnecting them in groups with vias filled with conductive material. Ex. 1005, 11:66–13:57. Figs. 3C–3D; Ex. 2004 ¶¶ 138–139. We agree with Patent Owner that a POSITA would have considered the coil windings to be subcomponents of Johnson’s stator platform 330, which do not define a separate and distinct “stator assembly . . . coupled to a stator circuit board.” Ex. 2004 ¶ 139. In other words, the “printed” conductive tracks and traces would have been considered part of the PCB, not something separate. Id. Although Petitioner contends that Johnson discloses other embodiments in which a stator assembly is comprised of wires wound around a magnetic core (Pet. Reply 14–15 (citing Ex. 1005, 3:30–39, 4:56– 5:7; Ex. 1050 ¶ 30)), Petitioner does not show that Johnson discloses that those embodiments are coupled to a stator circuit board as recited in claim 1’s limitation 1(g). Petitioner did not rely on Pacala, Pardhan, nor Zhang to cover the deficiencies of Johnson. Accordingly, for the above reasons, we determine that Petitioner has” slip op. at 41

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Patent Owner’s arguments are persuasive. Johnson, Pardhan, and Zhang all disclose transformer coils positioned inside of the rotor/stator elements of the motor. Specifically, Johnson’s Figure 3B shows a transformer coil 310b positioned inside rotor elements (magnets 320, 322, 324, 326), and Figure 3C shows the corresponding transformer coil (unnumbered) inside of the stator coils defined by conductive structures. Ex. 1005, 11:51–60, 13:26–40. Similarly, Pardhan shows in Figure 7B a transformer 740a, 740b positioned inside of rotor/stator elements 738a, 738b, and suggests that a smaller rotary transformer is desirable. Ex. 1006, 20:64–21:13. Likewise, Zhang’s Figures 2 and 3 show an electrical power transmission unit including first coupling coil (5) and second coupling coil (unnumbered) positioned inside of motor coil (2). Ex. 1007, 4–5. Against the teachings of Johnson, Pardhan, and Zhang, Petitioner argues that putting the transformer coils outside of the stator coils would have been an obvious design choice. Pet. 50–51, 54–55. However, as Patent Owner noted, “merely stating that a particular placement of an element is a design choice does not make it obvious.” PO Resp. 50 (citing Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1067–70, 1069 n.4 (Fed. Cir. 2018); Ex. 2004 ¶ 186). That Johnson, Pardhan, and Zhang all disclose the transformer coils inside of the rotor/stator elements of the motor suggests that there were good reasons for doing this in their configurations. Zhang expressly teaches that one such reason is to avoid interference with power transmission.15 Ex. 1007, 3. Thus, according to Zhang, moving transformer coils outside of the rotor/stator elements in Petitioner’s combination would undesirably interfere with power transmission such that a POSITA would not have pursued the combination. Accordingly, we find that claim 22’s limitation 22(h) is missing from the combination of Pacala, Johnson, Pardhan, and Zhang.” slip op. at 53

  Patent outcomesUS 11,287,515 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,287,515
• Nike, Inc. v. Sherrywear LLCInstituted
  PTAB · Feb 12, 2025 · IPR2024-01129 · APJ Jon M Jurgovan · IPR · Institution

  The Board instituted IPR on claims 1, 2, 4, 5, 7, 9, and 11 because Nike showed a reasonable likelihood that claim 1 would have been obvious over Spagna.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “1. Petitioner’s Burden “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 7

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). The applied prior art may reflect an appropriate level of skill. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001). Petitioner asserts the following: A POSA4 at the relevant time would have had at least two years of experience working in the design and or/construction of women’s exercise apparel, intimate apparel, and/or sports bras and bras, specifically. . . . Formal education in a relevant field, such as fashion and textile design, may compensate for less experience. Id. Pet. 15 (citing Ex. 1001 ¶ 155). Patent Owner does not address Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction We interpret the ’510 patent claims “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This “includ[es] construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Neither Petitioner nor Patent Owner propose any construction for any claim term in this proceeding. Accordingly, we apply the ordinary and customary meaning to the claim terms without special construction.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “On the present record, Petitioner presents evidence (1) that Spagna discloses bra materials that a POSA would have understood to be stretchable; (2) that stretchable materials for bras were general knowledge and well known to the POSA; and (3) that a POSA would have been motivated to use stretchable materials to allow the bra pocket to conform to the object’s shape. Ex. 1001 ¶ 1138. In response to Petitioner’s evidence, Patent Owner relies on attorney arguments, which are not evidence. Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017). Patent Owner’s attorney arguments do not undermine Petitioner’s evidence. Petitioner shows sufficiently for institution that Spagna suggests claim 1’s limitation 1E.” slip op. at 16

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,869,510
• Nike, Inc. v. Sherrywear LLCInstituted
  PTAB · Feb 12, 2025 · IPR2024-01126 · APJ Jon M Jurgovan · IPR · Institution

  The Board instituted review of claims 1–14 on all three obviousness grounds, finding a reasonable likelihood that claim 1 would have been obvious over Barg and Pintor.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “In evaluating arguments under § 325(d), we use a two-part framework to assess: (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 first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. In applying the two-part framework, we consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part) (“Becton, Dickinson”), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, IPR2019-01469, Paper 6 at 10.4” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “(xiii) Conclusion for Claim 1 Based on the evidence and arguments of record at this stage of the proceeding, we determine that Petitioner has shown that each element of claim 1 of the ’550 patent is disclosed by the combination of Barg and Pintor. Since Petitioner did not assert that Pintor discloses any limitation of claim 1, we determined that Petitioner did not need to establish a motivation to combine Pintor or reasonable expectation of success in doing so for claim 1. Lastly, Patent Owner’s objective indicia did not relate to claim 1. Accordingly, Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over the combination of Barg and Pintor.” slip op. at 41

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner asserts the following: A POSA9 at the relevant time would have had at least two years of experience working in the design and or/construction of women’s exercise apparel, intimate apparel, and/or sports bras and bras, specifically. . . . Formal education in a relevant field, such as fashion and textile design, may compensate for less experience. Id. Pet. 24 (citing Ex. 1001 ¶ 155). Patent Owner does not address Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s proposed level of skill in the art is consistent with the ’550 patent and the asserted prior art except that we set the level to “two . . . years of experience” because the qualifier “at least two” may render the level ambiguous. Otherwise, we agree with and will use Petitioner’s proposed level for this Institution Decision.” slip op. at 20

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither Petitioner nor Patent Owner propose any construction for any claim term in this proceeding. Accordingly, we apply the ordinary and customary meaning to the claim terms without special construction.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,219,550
• Nike, Inc. v. Sherrywear LLCInstituted
  PTAB · Feb 11, 2025 · IPR2024-01127 · APJ Lynne H Browne · IPR · Institution

  The Board instituted IPR on claims 1–8, 12, 13, and 15–18 based on the asserted §103 grounds, finding a reasonable likelihood of prevailing.

  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 Preliminary Reply, the Preliminary Sur-reply, 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 the challenged claims of the ’551 patent. Accordingly, we institute an inter partes review of claims 1–8, 12, 13, and 15–18 of the ’551 patent on the grounds asserted in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “cumulative of Boatright. During prosecution of the ’878 patent (which is a parent of the ’551 patent at issue in this proceeding), Boatright was distinguished because it did not have an upper edge of the cup that lies “along a same edge line as at least a portion of a top edge of the chest strap,” as required by claim 1. Prelim. Resp. 15 (citing Ex. 2066, 105). Vidal shows “an upper edge of the side patch lying along a same edge line as at least portion of the top edge of the chest strap” (as required by claim 1) in that Vidal’s Figure shows such alignment. Moreover, Vidal states that the shape of its pocket (i.e. side patch) “can be adapted to the shape of the side strap.” Ex. 1027, 3:19–20. Given these disclosures, Vidal is not cumulative of Boatright. As to Sherwood and Gentry, Patent Owner’s arguments that these references relate to bras with pockets such that Vidal is cumulative to them are unconvincing as Vidal is relied upon to teach more than a bra with pockets. For these reasons, part one of the Advance Bionics framework is not satisfied for Vidal. Both parties agree that Handras was presented to the Office in an Information Disclosure Statement. Pet. Reply 1; Prelim. Resp. 15. Accordingly, the first part of the framework is satisfied for Handras.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of skill in the art “would have had at least two years of experience working in the design and or/construction of women’s exercise apparel, intimate apparel, and/or sports bras and bras, specifically.” Pet. 17–18 (citing Ex. 1001 ¶ 155). Petitioner asserts further that “[f]ormal education in a relevant field, such as fashion and textile design, may compensate for less experience.” Id. Patent Owner does not address 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 person of ordinary skill in the pertinent art, as it is consistent with the ’551 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). Our rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention. See Phillips, 415 F.3d at 1312–13. In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Id. at 1315–17. The parties do not present any claim constructions, and we determine that no formal claim construction is necessary for this decision. 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.’”)” slip op. at 8

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,219,551
• Nike, Inc. v. Sherrywear LLCInstituted
  PTAB · Feb 11, 2025 · IPR2024-01125 · APJ Zhenyu Yang · IPR · Institution

  The Board instituted IPR on claims 1–10 and 18 on all asserted grounds, finding a reasonable likelihood of success on the York–Pintor and Handras–Pintor obviousness grounds.

  RulingsInstitution decision

  • 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). Accordingly, we institute inter partes review of all challenged claims based on all the grounds raised in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “substantially the same as Pintor, for purposes of this Decision, we need not address this issue.10 As discussed below, even if the asserted references are substantially the same, we are persuaded that Petitioner has demonstrated, under the second prong of the Advanced Bionics framework, that the Office erred in a manner material to the patentability. To determine whether Petitioner has sufficiently shown material error, we look at, for example, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Advanced Bionics, 9. As explained above, during prosecution of the ’288 patent, the examiner rejected the then-pending claims over Newman in view of Pintor. Ex. 1004, 151–52. Petitioner argues, however, that the examiner considered Pintor “only as a secondary reference to Newman.” Pet. 96. According to Petitioner, the examiner “overlooked how a POSA would have understood Pintor’s disclosures and what a POSA would have been motivated to do with them, especially in light of references like Barg, York, and Handras.” Id. at 10. On this record, we find Petitioner’s argument persuasive. Patent Owner does not dispute that Pintor discloses “a bra with left and right cups, shoulder straps, and a chest strap,” and “additionally discloses the bra cups 10 Patent Owner further asserts that the examiner “considered several other patents and patent applications relating generally to bras with pockets, both as provided in an IDS and as a result of the Examiner’s own searching, including U.S. 7,585,200 to McLaren, and U.S. 5,496,205 to Lee.” Prelim. Resp. 17. Patent Owner does not explain the relevance of McLaren and Lee. See generally Prelim. Resp. Such a bare bone assertion is insufficient to show those other patents and patent applications are cumulative to the prior art asserted in the Petition. comprised of polyurethane and the pockets made of elastic material.” Prelim. Resp. 18. The examiner, however, relied on Pintor for teaching a single limitation, that is, Pintor’s pocket “holds the claimed items therein.” Ex. 1004, 152. Patent Owner is correct that, when rejecting the pending claims over Sherwood, the examiner did not have to repeat Pintor’s teachings of the limitations taught in Sherwood. The examiner, however, failed to consider Pintor’s teaching in its entirety after the applicant distinguished the pending claim over Sherwood. Ex. 1006, 92 (the applicant arguing “Sherwood teaches a front padding that is stitched in place” in contrast to the pending claims’ requirement that “the opening is capable of repeated receiving and removal of items when the bra is being worn by the user”). That, in our opinion, is material error.” slip op. at 14

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “b. Evidence Related to Nike Products Patent Owner argues that there is “a high degree of correspondence between features of [Nike’s] Swoosh on the Run and the claims of the ‘036 patent.” Prelim. Resp. 29 (citing Ex. 2053). The evidence, however, do not support a conclusion that Nike’s Swoosh on the Run is coextensive with the ’036 patent’s claimed invention. Indeed, Patent Owner submits claim charts allegedly showing that Nike’s Swoosh on the Run infringes not only the ’036 patent (Ex. 2053), but also four other patents in the family (Exs. 2054–2057). Those other claim charts demonstrate that Swoosh on the Run includes many features not claimed in the ’036 patent. See e.g., Ex. 2055 (showing Swoosh on the Run has a back pocket). Thus, on this record, Patent Owner has not persuasively shown a rebuttable presumption of nexus between Nike’s Swoosh on the Run and the challenged claims. Patent Owner asserts that “there is significant evidence that NIKE copied the patented application in the ‘036 patent.” Prelim. Resp. 28–29. According to Patent Owner, “NIKE received copies of patents and sample products from [the named inventor of the ’036 patent] Ms. Goff prior to filing its patents or marketing any of the allegedly infringing products.” Id. at 29. Patent Owner alleges that “each of the Swoosh Pocket Bra, the Swoosh Bra, and the Swoosh on the Run has several points of similarity both to the product depicted and described in Ms. Goff’s patents as supplied to NIKE and to the product samples Ms. Goff sent to NIKE.” Id. Ms. Goff testifies that she corresponded with Nike about her Pocket Bar and submitted examples of her products. See Exs. 2001, 2035. Patent Owner’s evidence, however, does not sufficiently demonstrate that a specific product was replicated. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (“[C]opying requires the replication of a specific product.”). In addition, neither Ms. Goff’s testimony nor the Nike Idea Submission is specific to the ’036 patent’s claimed invention. See generally Exs. 2001, 2035. For example, none of the pictures in the Nike Idea Submission sufficiently shows certain feature of the ’036 patent’s claimed invention, which includes “the upper edge of the patch being offset from an upper edge of the cup.” See, e.g., Ex. 2035, 2–4. On this record, Patent Owner has not presented sufficient evidence of copying.” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for petitioner

    “Patent Owner asserts that “there is significant evidence that NIKE copied the patented application in the ‘036 patent.” Prelim. Resp. 28–29. According to Patent Owner, “NIKE received copies of patents and sample products from [the named inventor of the ’036 patent] Ms. Goff prior to filing its patents or marketing any of the allegedly infringing products.” Id. at 29. Patent Owner alleges that “each of the Swoosh Pocket Bra, the Swoosh Bra, and the Swoosh on the Run has several points of similarity both to the product depicted and described in Ms. Goff’s patents as supplied to NIKE and to the product samples Ms. Goff sent to NIKE.” Id. Ms. Goff testifies that she corresponded with Nike about her Pocket Bar and submitted examples of her products. See Exs. 2001, 2035. Patent Owner’s evidence, however, does not sufficiently demonstrate that a specific product was replicated. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (“[C]opying requires the replication of a specific product.”). In addition, neither Ms. Goff’s testimony nor the Nike Idea Submission is specific to the ’036 patent’s claimed invention. See generally Exs. 2001, 2035. For example, none of the pictures in the Nike Idea Submission sufficiently shows certain feature of the ’036 patent’s claimed invention, which includes “the upper edge of the patch being offset from an upper edge of the cup.” See, e.g., Ex. 2035, 2–4. On this record, Patent Owner has not presented sufficient evidence of copying.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 9,808,036
• Hesai Technology Co. Ltd. / Hesai Group et al. v. Ouster, Inc.Other
  PTAB · Jan 21, 2025 · IPR2023-01458 · APJ Meredith C Petravick · IPR · Remand

  On remand, the Board denied institution because the petition failed to show a reasonable likelihood that any challenged claim was unpatentable, including over Hall and Borowski.

  RulingsRemand decision

  • RemandOther

    “We entered a first Decision Denying Institution of Inter Partes Review (Paper 8), and Petitioner filed a Request for Director Review (Paper 13). The former Director of the United States Patent and Trademark Office vacated our denial of institution and remanded for further proceedings consistent with the former Director’s decision. Paper 14. After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “After considering the Petition, the Preliminary Response, the Director’s Review Decision, and the post Director’s Review Supplemental Briefing (Papers 16 and 17), and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’236 patent. 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.” Accordingly, we do not institute an inter partes review of the ’236 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts: “A [person of ordinary skill in the art (‘POSITA’)] as of August 24, 2016 would have had an undergraduate degree in mechanical engineering, electrical engineering, or physics, and two to three years of experience in LiDAR design.” Pet. 9 (citing Ex. 1003 ¶¶ 59–64). Patent Owner does not dispute Petitioner’s definition of a POSITA. Prelim. Resp. 9. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it is consistent with the ’236 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “37 C.F.R. § 42.100(b). In applying this standard, we generally give claim terms their ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). We do not need to construe any terms explicitly to reach our decision. 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))); see also Pet. 10 (“[N]o formal constructions are necessary.”); Prelim. Resp. 10 (“[N]o formal constructions are necessary.”).” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,422,236

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.