• Therabody, Inc. v. Datafeel Inc.Institution denied
  PTAB · Aug 21, 2025 · PGR2025-00026 · APJ Lisa L Tsang · PGR · Institution

  The Board denied institution because Petitioner did not show claim 4 more likely than not unpatentable on either obviousness or § 112 ground.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). Upon considering the arguments and evidence, we conclude that the information presented shows it is not more likely than not that at least one challenged claim of the ’174 patent is unpatentable.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner because, based on the current record, it is consistent with our review and understanding of the technology and descriptions in the ’174 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our analysis below would be the same regardless of whether we adopt Petitioner’s or Patent Owner’s proffered level of skill in the art.” slip op. at 11

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

    “Petitioner and Patent Owner agree that no claim terms need construction. Pet. 14; Prelim. Resp. 6. After reviewing the evidence and arguments presented by the parties, we determine that it is not necessary to expressly construe any claim terms because doing so would not change the outcome of our analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12

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

    “of Choi to support its argument that an ordinarily skilled artisan would have understood Choi’s infrared lamp housing to define a concave shape as claimed. See Pet. 61–62. With only this explanation and evidence from Petitioner and Dr. Jenson, however, we cannot not discern how these portions of Choi would have so apprised an ordinarily skilled artisan. For example, the side view of the infrared lamp housing, illustrated in Figure 5 reproduced below, shows the housing having a convex, rather than concave, shape. See Ex. 1008, Fig. 5. Furthermore, paragraphs 20 and 48 refer to the housing’s “circular” shape and outer periphery and also “tubular” shape. See id. ¶¶ 20, 48. But these descriptions, either alone or together with Figure 5, also do not support adequately a finding that Choi’s housing is concave. Choi’s teachings in paragraphs 20 and 46 regarding the lamp housing guiding or directing infrared light from the lamp to irradiate the skin of a user, without more, are similarly deficient. See id. ¶¶ 20, 46. And although Dr. Jensen appears to equate “concave” with “inner circular,” he does not provide the basis for his testimony or explain what “inner circular” means, particularly in the context of distinguishing a convex shape from a concave shape. See Ex. 1002 ¶ 197. Accordingly, we determine there is insufficient evidence to support Petitioner’s conclusory statements that an ordinarily skilled artisan would have understood Choi’s infrared lamp housing to define a concave shape as claimed.” slip op. at 23

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 12,036,174
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. B.S.D. Crown, Ltd.Institution denied
  PTAB · May 29, 2025 · IPR2025-00057 · APJ Hung H Bui · IPR · Institution

  The Board denied institution on all asserted grounds because the petition did not show a reasonable likelihood that any challenged claim was unpatentable, principally failing to address the required hardware action.

  RulingsInstitution decision

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

    “Turning now to our application of SuperGuide, we note the language of the claims and the specification, as correctly recognized by the Patent Owner, confirm that the conjunctive construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is correct. Prelim. Resp. 9–10.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree with Patent Owner. First, the construction of the phrase “at least one of [A] the display, [B] the audio and [C] the hardware (HW) action” is conjunctive in light of the language of the claims and the specification of the ’887 patent. As such, Petitioner has the burden, but fails to show all three (3) components to be reproduced at Yun’s mobile device, including: [A] the display, [B] the audio and [C] the hardware (HW) action by the HW component of the mobile device. Second, as Patent Owner observes, and we agree, “Petitioner ignores the requirement for ‘the hardware (HW) action’ entirely” and does not even mention any “hardware (HW) action.” Prelim. Resp. 14.” slip op. at 22

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

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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. Upon consideration of the contentions and the evidence of record at this preliminary stage, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’887 patent. For the reasons discussed below, we deny the Petition and do not institute an inter partes review of all challenged claims of the ’887 patent.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “K. Discretion to Denial Under § 314(a) Patent Owner argues that we should exercise discretion under 35 U.S.C. § 314(a) and not institute trial, given the state of the parallel district court litigation. Prelim. Resp. 26–38. Because we determine that Petitioner does not establish a reasonable likelihood of prevailing based on the merits of its challenges, we need not consider Patent Owner’s arguments regarding discretionary denial.” slip op. at 34

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,934,887
• Catalyst Orthoscience Inc. v. Shoulder Innovations, Inc.Institution denied
  PTAB · Dec 19, 2024 · PGR2024-00042 · APJ Lisa L Tsang · PGR · Institution

  The Board denied institution of PGR challenging claims 1–16, finding the first five Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “during the conference and in the Minute Entry, and in the court’s subsequent Order Regarding Schedule. We also note that the evidence shows the district court may intend to reschedule the trial to a date substantially earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1029, 10−11. However, given that the Order does not unambiguously set a trial date for December 1, 2025, or even sometime in December 2025 or January 2026 (see Ex. 1028), we decline to speculate as to what date the court may ultimately select for trial. Moreover, the record shows that Petitioner has consistently opposed moving the trial to a date earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1026, 2−4; Ex. 1029, 11. We view Petitioner’s opposition as creating yet more ambiguity as to the trial date in the co-pending litigation. Therefore, we find that factor 2 is neutral because the exact trial date in district court is uncertain.” slip op. at 14

  • BurdenNot reached

    “if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. This standard is only met “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (Vidal Oct. 4, 2022) (precedential) (citing Guidance Memo 4). We have reviewed Petitioner’s challenges and Patent Owner’s arguments. For the reasons explained below, we determine that Petitioner’s challenges have not risen to the threshold of compelling merits. Before addressing the parties’ arguments regarding the asserted grounds, we address: (a) the level of ordinary skill in the art, (b) claim construction, and (c) relevant principles of law; and we provide (d) overviews of the asserted art.” slip op. at 18

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with Patent Owner that its proffered additional level of ordinary skill in the art appears consistent with the experience Petitioner describes. See Pet. 16. For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner and supplemented by Patent Owner, because, based on the current record, it is consistent with our review and understanding of the technology and descriptions in the ’561 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 19

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “In this regard, Mr. Fallin testifies that I have decades of experience working directly with joint replacement systems, including hip joint replacement systems, knee replacement systems, and facet joint replacement systems. My work on these joint replacement systems included my direct engagement or supervision of and professionals in the inventing, designing, fabricating, testing, obtaining regulatory approvals, ensuring regulatory compliance, commercializing, and patenting of these systems. Ex. 1002 ¶ 10. Mr. Fallin also testifies that his experience “includes working directly with supervising professionals whose responsibilities included designing, developing, and commercializing joint replacement systems and similar device[s].” Id. ¶ 67 As such, Mr. Fallin identifies “decades” of experience with joint replacement systems. Ex. 1002 ¶ 10. Moreover, Patent Owner does not persuasively explain why Mr. Fallin’s “direct engagement” and “working directly with,” as well as “supervision” of, other individuals designing joint replacement systems, does not at least imply personal design experience. See Prelim. Resp. 10–11. Therefore, we determine that the current record reflects that Mr. Fallin is qualified to testify as to the knowledge of a person of ordinary skill in the art.” slip op. at 20

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 11,771,561
• Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution denied
  PTAB · May 8, 2024 · IPR2024-00129 · APJ Lynne H Browne · IPR · Institution

  Institution was denied for claims 1–30 because the petition did not show a reasonable likelihood of prevailing on either obviousness ground.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties propose similar definitions of a person of ordinary skill in the art. Petitioner’s definition appears reasonable, and we determine that the level reflected in the prior art is consistent with Petitioner’s definition. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 8

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

    “v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundInstitution denied

    “Petitioner, however, does not explain how Agrawal’s web advertising system for identifying illegitimate advertising link request activity would have enhanced the reach of Oliver’s promotions. Oliver’s lead generation tool presents promotions to users via passive entities such as QR codes and enables users to respond to these promotions via text message. As Petitioner notes, Oliver discloses that its “passive entities can be incorporated into advertising” and “can be incorporated into ‘electronic visual media’ on the Internet.” Pet. 29 (citing Ex. 1011 ¶ 34). Petitioner does not adequately explain why Agrawal’s web advertising system is better that Oliver’s use of passive entities. Pet 28 (citing Ex. 1005, 5:45–63; Ex. 1002 ¶ 92). Petitioner argues that Agrawal “allows ads to be targeted at users likely to find the subject matter appealing.” Id. at 28–29. Yet the fact that Agrawal discloses retrieving advertising links relevant to a user’s search query, does not explain how or why that user is more “targeted” than another user who scans a passive entity such as a QR code as in Oliver. See Ex. 1005, 5:57– 58 (Agrawal discloses “using the keyword to select the appropriate advertising links.”), see also Ex. 1011 (Oliver teaching to “create a passive entity, such as a QR code or NFC tag associated with a promotion.”). In addition, Petitioner does not adequately explain how Agrawal’s method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are responding to passive entities in advertisements for those products by opting in.” slip op. at 21

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundInstitution denied

    “d) Conclusion Re Petitioner’s Reasoning in Support of the Proposed Combination For the reasons discussed above, we determine that Petitioner’s reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Khanna as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 23

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,553,074
• Stodge, Inc. D/B/A Postscript v. Attentive Mobile Inc.Institution denied
  PTAB · May 8, 2024 · IPR2024-00069 · APJ Lynne H Browne · IPR · Institution

  Institution was denied for claims 15–30 because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.

  RulingsInstitution decision

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

    “reasoning in support of the proposed combination lacks rational underpinning. Specifically, we find that Petitioner has not adequately explained why one skill in the art would be motivated to combine Oliver, Agrawal, and Molinet as proposed. We further find that Petitioner’s reasoning is based on improper hindsight reasoning and that Petitioner’s reasoning is not supported by the concept that applying known techniques for their known functions —per KSR— provides sufficient rationale for the proposed combination.” slip op. at 25

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

    “method of determining if advertising activity is legitimate, i.e., only an interested or “real” user as compared to a “click” bot, could be used with Oliver’s method, let alone how extrapolating site data that results in more accurate advertising fees would enhance the reach of Oliver’s promotions to more users. See id. at 1:47–54 (Agrawal explaining that “click-bots can be configured to mimic real network traffic by specifying parameters . . . result[ing] in inaccurate fees being charged for advertising services.”). Petitioner’s reliance on Dr. Houh’s testimony doesn’t cure these deficiencies in Petitioner’s reasoning as that testimony simply repeats the assertions in the Petition without further elaboration. Cf. Pet. 28–29, with Ex. 1002 ¶ 92). Moreover, Oliver’s promotions are already targeted to users who are interested in Oliver’s products be virtue of the fact that the users are” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner

    “the server-based software techniques of Oliver and Molinet at Agrawal’s Advertising System 120” “to obtain the benefits of each system.” Pet. 31 (citing Ex. 1002 ¶ 95). Petitioner’s reasoning does not adequately explain why a person of ordinary skill in the art would make the proposed modifications and instead appears to be based on improper hindsight reasoning. Specifically, Petitioner does not adequately address which benefits of each system a person of skill in the art would be motivated to combine and what the advantages of combining functionalities of the references into a single server would be.” slip op. at 24

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

    “v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (in the context of an inter partes review, applying Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,416,897
• Alivecor, Inc. v. Apple Inc.Institution denied
  PTAB · Apr 3, 2024 · IPR2023-01434 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “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.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’898 patent. Accordingly, we do not institute an inter partes review of the challenged claims.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that: A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention would have been a person with a working knowledge of physiological monitoring technologies and human interface design. That person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with training or at least one to two years of related work experience with capture and processing of data or information, including but not limited to physiological monitoring technologies and human interface design (Ex. 1003, ¶45). Alternatively, that person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline (Ex. 1003, ¶45). More education can supplement practical experience and vice versa (Ex. 1003, ¶45). Pet. 5–6. Patent Owner does not address the level of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11

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

    “The general rule is that “the indefinite article ‘a’ means ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Salazar v. AT&T Mobility LLC, 64 F.4th 1311 (2023); see also Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008) (“An exception to the general rule that ‘a’ . . . means more than one only arises where the language of the claims themselves, the specification, or the prosecution history necessitate a departure from the rule.”). And, the use of “the” (as in “the detailed view”) indicates that the recited part of the claim is a reference back to the corresponding part of a previous recitation (i.e., “a detailed view”). Finjan LLC v. SonicWall, Inc., 84 F.4th 963, 974 (Fed. Cir. 2023) (“Similar to this court’s holding that ‘said’ indicates part of a claim limitation refers to the corresponding part of a previously claimed limitation, . . . , the use of ‘the’ also indicates the claimed term refers to an antecedent term.”). However, whether “a detailed view” means “one or more detailed views” is a separate issue from whether the claims require the same detailed view to have both of the recited components. See Finjan, 84 F.4th at 974 (“[T]hat is a separate issue from whether the claims require the same component to perform multiple functions or satisfy multiple limitations of a claim.”). The plain language of “a detailed view” followed by the recitation of “the detailed view” comprising two components suggests that the “detailed view” must be tied to both of those components. See id. (“In [Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, 15 F.4th 1136, 1143–44 (Fed. Cir. 2021)], we explained that ‘[a]s a matter of plain language, reciting ‘a computer’ (or a ‘first computer’) that performs a function, and then further reciting that ‘the computer’ (or ‘said first computer’) performs multiple additional functions, suggests that such ‘computer’ must be tied to all those functions.’ . . . This same rationale is relevant in analyzing the claims here.”); see also id. (The court agreeing with SonicWall’s argument “that even if the reference to ‘a computer’ may mean ‘one or more computers,’ the subsequent references to ‘the computer’ can only be satisfied by the same ‘one or more computers’ that satisfied the first limitation.”); Salazar, 64 F.4th at 1317 (“We agree with the district court that while the claim term ‘a microprocessor’ does not require there be only one microprocessor, the subsequent limitations referring back to ‘said microprocessor’ require that at least one microprocessor be capable of performing each of the claimed functions.”). We determine that, even if plural detailed views are allowed, the claim requires a single one of those views to have both a graph representation and a selectable data sharing option.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner. For the reasons discussed above, we construe independent claims 1 and 23 as requiring the “detailed view” to have both a graph representation and a selectable data sharing option. See supra Section II.C. Petitioner does not identify adequately any disclosure in Molettiere of displaying a single view having both components. Thus, Petitioner has not shown adequately that Molettiere is anticipatory. Additionally, we agree with Patent Owner’s argument that Petitioner does not articulate adequately any obviousness contentions regarding how or why a person of ordinary skill in the art would have combined the relied-on figures of Molettiere to arrive at the recited detailed view having both components. See Prelim. Resp. 9–10; Pet. 10–14. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge to independent claim 1 and independent claim 23 as anticipated by or obvious over Molettiere. For the same reasons, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing in its challenge to dependent claims 2– 11, 18, 20–22, 25–34, 41, and 43–45 as anticipated by or obvious over Molettiere. E. The Alleged Unpatentability of Claims 1, 3, 9, 10, 16, 18, 23, 26, 32, 33,” slip op. at 24

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,270,898
• Wellmatics, LLC / GR Energy Services Management, LP et al. v. Canatex Completions Solutions, Inc.Institution denied
  PTAB · Jan 8, 2024 · IPR2023-01149 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 4

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “does not dispute” these qualifications. Prelim. Resp. 10. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’122 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 6

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

    “We agree with Patent Owner that the example of “a fluid line that provides gas or liquid to expansion chamber 38 from [the] surface” in the specification, does not require that a fluid line be a source of fluid pressure. We further agree that Petitioner’s analysis ignores the fact that this example makes clear that the source of fluid pressure is at the surface. Prelim. Resp. 20 (citing Ex. 2001 ¶¶ 66–67). Both Patent Owner and Petitioner agree that “source” should be construed in accordance with its ordinary meaning. Prelim. Resp. 13, 18; Pet. 18–19 (Patent Owner has not “identified any clear definition or clear and unambiguous disclaimer that would justify departing from the ordinary meaning of the claim language.”). ordinary meaning of “source.”2 See Prelim. Resp. 13–18 (citing Ex. 1001, 3:55–65, 4:5–12, Ex. 2001 ¶¶ 52–63, Ex. 2003, 7, 8, Ex. 2004, 5, Ex. 2005 ¶¶ 29–30, Fig. 1, Ex. 2006, 4:64–5:9, Fig. 1, Ex. 2007, 13:23–35, Ex. 2009, Abstr., 3:54–60, Ex. 2010. Patent Owner provides dictionary and declaratory evidence that the ordinary meaning of “source” is ‘“origin’— i.e., the place from which something originates.” Id. at 13 (citing Ex. 2001 ¶ 52, Ex. 2003, 7, 8, Ex. 2004, 5). Patent Owner provides further evidence and explanation as to why that definition is consistent with the usage of “source of fluid pressure” in the ’122 patent. Id. at 13–15 (citing e.g., Ex. 1001, 3:55–65, 4:5–12). Patent Owner provides further evidence of how the term “source” is used in other patents and documents “in the oil and gas industry” that is consistent with its definition. Id. at 15–18 (citing Ex. 2001 ¶¶ 57–63, Ex. 2005 ¶¶ 29–30, Fig. 1, Ex. 2006, 4:64–5:9, Fig. 1, Ex. 2007, 13:23–35, Ex. 2009, Abstr., 3:54–60, Ex. 2010). Thus, based on the current record, we construe “source of fluid pressure” to mean the place from which the fluid pressure originates.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “As noted by Patent Owner, Petitioner’s declarant merely asserts that Bebak’s hydraulic pump would have been considered part of the second part of a releasable connection, and thus it is entitled to little weight. Prelim. Resp. 28; see also Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper No. 9 at 15 (Aug 24, 2022) (precedential) (“Dr. Jones does not cite to any additional supporting evidence or provide any technical reasoning to support his statement. Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.”) (citing 37 C.F.R. § 42.65(a)). For all of the above reasons, we determine that the Petition does not provide a reasonable basis to determine that Bebak teaches “a second part [of the releasable connection] comprising: . . . a source of fluid pressure,” as required by independent claims 1 and 13.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,794,122
• Masimo Corporation v. Apple Inc.Institution denied
  PTAB · Nov 21, 2023 · IPR2023-00831 · APJ Scott A Daniels · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that the sole design claim would have been obvious over any asserted primary reference.

  RulingsInstitution decision

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

    “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are not persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we do not institute an inter partes review of the challenged claim. slip op. at 2

  • Skill levelSkill level board ownOther

    “different, but not incompatible. On one hand, Petitioner proffers a person with a degree in industrial/product design who consults with a person of ordinary skill in the art having an electrical engineering, or similar degree. On the other hand, Patent Owner proffers a person having “a degree in Industrial Design or Mechanical Engineering, and at least two years of professional experience creating Industrial Designs of consumer products.” Prelim. Resp. 3. Considering that this is a design for an electronic “charger,” we find that both parties’ assertions as to the designer of ordinary skill appropriately include engineering and industrial design experience well-suited to a robust understanding of the function and aesthetics of charger devices. And, we do not find it out of the ordinary, as Petitioner contends, that a designer of ordinary skill would have collaborated with other technical professionals in designing such products. We also note that, under the present record, our analysis of this case would be the same under either party’s definition of the designer of ordinary skill in the art.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “In this case, a verbal description of the claimed design is helpful to our analysis. Petitioner’s claim construction, particularly as it erroneously calls for certain elements to be “factored out,” is too general, and does not adequately address the overall ornamental visual impression of the claimed charger. See Pet. 14–30. With some exceptions, we find Patent Owner’s claim construction the more persuasive and consistent with the appropriate scope and overall ornamentality of the claimed charger. Prelim. Resp. 3–10. Our claim construction, below, is based on, and paraphrased to some extent, from Patent Owner’s proposed construction: Considering the overall visual impression of the claimed charger as shown in Figures 1–11 of the ’131 patent, the charger has an overall appearance of a compact ice hockey puck shape having a top face with a circular recess that evokes a contemporary appearance. The claimed design includes an overall cylindrical shape, with a circular shape that is visible in plan and bottom views. The top face is dominated by a prominent circular recess that is inset relative to a flat ring having a distinct proportional width relative to the circular recess. The overall cylindrical shape has a distinctive ratio of width (e.g., diameter) to height that, as shown in the figures of the claimed design, evoking the overall appearance of a compact ice hockey puck shape. The overall cylindrical shape includes non-orthogonal transitional edges (e.g., beveled or curved edges) between the sidewall and the top and bottom faces which contributes to the charger’s overall compact ice hockey puck appearance. The featureless flat bottom surface and sidewall are shown as continuous, unbroken, and uninterrupted by features that distract from the continuity of the design, and also contribute to the charger’s overall compact ice hockey puck appearance.” slip op. at 18

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

    “’131 patent compared with Lee, we are persuaded that Lee is not an appropriate primary reference. While we agree that a designer of ordinary skill in the art would have considered the front face of the claimed charger and Lee as similar in appearance, a designer of ordinary skill in the art would consider not just the front face of the designs, but the overall appearance of the designs as a whole. See Borden, 90 F.3d at 1574 (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). the front face of the claimed design, but the smooth uninterrupted cylinder walls that seamlessly transition to a flat, planer, bottom surface that is a cleaner and more contemporary appearance from Lee’s stepped sidewall and raised yellow ring on the bottom face of Lee’s charger. The cylindrical characteristics of the claimed design evoke a stocky ice hockey puck shaped appearance different from the Lee’s narrower stacked disc shaped design. We find that the cumulative visually apparent differences of the sidewall, bottom face and overall cylindrical ice hockey puck shaped appearance and proportions of the claimed charger outweigh any similarity of the front faces, and thus we are not persuaded that Lee’s charger is a primary reference “the design characteristics of which are basically the same as the claimed design.” Rosen, 673 F.2d at 391.” slip op. at 37

  Claim construction§ 103 obviousness
• Masimo Corporation v. Apple Inc.Institution denied
  PTAB · Nov 21, 2023 · IPR2023-00807 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 9

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

    “Petitioner proposes construing “defining an optically transparent window.” Pet. 8–10. Petitioner proposes that “for a cover to ‘define’ an optically transparent window simply means to allow passage of light to a relevant component through the cover.” Id. at 10. Patent Owner “does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 18. For purposes of this Decision, and based on the record before us, we determine that no express construction of any term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). D. The Alleged Obviousness of Claims 1–3, 5, 6, 8, 10–14, and 16–20 Over” slip op. at 10

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

    “Petitioner does not explain persuasively why a person of ordinary skill in the art would have reconfigured Kotanagi’s two rear electrodes meant for determining whether a potential between the electrodes decreases (to indicate lack of skin contact) to enable ECG measurements using the particular configuration recited in the claims. We have considered Petitioner’s contentions in light of both Kotanagi and Coppola and Petitioner’s proposed combination appears hindsight driven. The combination requires that a person of ordinary skill in the art selectively pick portions of each reference while also frustrating the purpose of Kotanagi’s electrodes of ensuring skin contact by determining a potential difference.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,474,483
• Guangdong Laitu Imaging Technology Co., Ltd. v. Really Right Stuff, LLCInstitution denied
  PTAB · Oct 25, 2023 · IPR2023-00853 · APJ Sean P O’Hanlon · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim, including due to failures to establish prior art status and claim limitations.

  RulingsInstitution decision

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

    “III. CONCLUSION For the foregoing reasons, we are not persuaded that the Petition establishes a reasonable likelihood that Petitioner would prevail in any of its challenges to claims 6–8, 15–17, and 25–28 of the ’037 patent. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted; and FURTHER ORDERED that Petitioner’s Pro Hac Vice Motion to” slip op. at 34

  • Adverse judgmentAdverse judgmentOther

    “Here, Patent Owner filed a statutory disclaimer of claims 1–5 and 18–24 of the ’037 patent. Prelim. Resp. 7; Ex. 2004. Based on our review of Exhibit 2004 and Office assignment records, we determine that a disclaimer of claims 1–5 and 18–24 of the ’037 patent under 35 U.S.C. § 253(a) has been filed with the Office as of July 27, 2023. Although the disclaimer does not, on its face, indicate the extent of Patent Owner’s interest in the ’037 patent (see Ex. 2004, 2), Office assignment records indicate that Patent Owner owns the entire interest in the ’037 patent. See Ex. 3001, 2. We also note that notice of the disclaimer was included in the September 12, 2023, Official Gazette, Volume 1514, No. 2 at 228. See Ex. 3002, 1. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 1–5 and 18–24 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to those claims. As a result, the remaining challenged claims are claims 6–8, 15–17, and 25–28 (“the challenged claims”).” slip op. at 6

  • Skill levelSkill level board ownDecided for patent owner

    “Patent Owner disagrees with Petitioner’s definition, arguing that “a lower level of skill is necessary to understand the mechanical functions of a tripod.” Prelim. Resp. 11. According to Patent Owner, “a hobbyist user of a tripod, such as a hunter or landscape photographer, would have the understanding of a person of ordinary skill in the art. Formal education or years of practical experience building equipment supports are unnecessary to understand the function of a tripod.” Id. Neither of the parties provides the testimony of an expert witness or addresses the factors identified above. The challenged claims are directed to a support, such as a tripod, having an apex that is mountable to a platform and to which equipment to be supported by the tripod may be attached. Based on the teachings of the ’037 patent and the disclosure of the asserted references, we find that the lower level of skill proposed by Patent Owner to be more reasonable and for purposes of this Decision adopt it as our own. We note that we would reach the same conclusion to deny institution under either proposed standard.” slip op. at 12

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

    “Patent Owner proffers definitions for two terms. Patent Owner argues that “[a]pex should be construed as ‘the structure of the tripod that joins the legs to each other and the rest of the tripod at the legs’ pivot points’” (Prelim. Resp. 11) and “[e]quipment should be limited to devices that may be used either in conjunction with or independent of a support” (id. at 12). For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,398,037

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.