- PTAB · Sep 19, 2025 · PGR2025-00025 · APJ Kimberly Mcgraw · PGR · Institution
The Board instituted PGR on claims 1–19 and all asserted grounds, finding it more likely than not that claim 1 is anticipated by the Gatorade Label.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). After considering the briefing and the evidence of record, for the reasons set forth below, we determine that Petitioner has shown that the ’422 Patent is eligible for post-grant review and has shown it is more likely than not that at least one challenged claim of the ’422 Patent is unpatentable under § 324(a). Accordingly, we institute a post-grant review of the challenged claims of the ’422 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art “would possess at least (1) a Bachelor’s degree in chemistry or a related field, with (2) five years of experience in material identification and characterization using multiple analytical methods and field sampling, or equivalent research or professional experience.” Pet. 12 (citing Ex. 1014 ¶ 24). Patent Owner does not dispute Petitioner’s definition for one of ordinary skill in the art nor provide a proposed definition of its own. See generally Prelim. Resp. For the purposes of this Decision, we adopt Petitioner’s undisputed proposal regarding the level of one of ordinary skill in the art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer foundDecided for patent owner
“336. The applicant explained that not all combinations of shrink films and light blocking materials are recyclable. Id. at 335. The applicant explained that films can be compatible with PET recycling in two ways, (1) the film can float in water and be separated from PET that sinks in water or (2) the PET films crystallize and “can be recovered with the PET stream.” Id. at 336 (citing “A Resource Document by the Association of Plastic Recyclers (APR)”) (found at Ex. 1002, 323–332) (emphasis omitted). The applicant explained that “removing the label before or during the recycling process is not evidence of the recyclability of the label” and that “[r]emoving the label during the recycling process is not equivalent to actually recycling the label.” Id. at 335. As such, a POSITA reading the prosecution history would understand that a label is not recyclable with a PET container, as recited by the independent claims, by removing the label from the PET recycle stream before or during the recycling process.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“To determine how a person skill in the art would determine if a shrink label is “recyclable” as recited in the independent claims, we look to how the Specification of the ’422 Patent describes or defines recyclable shrink labels. For example, the ’422 Patent states that PET shrink films are generally considered recyclable if no inks are retained on the film after a caustic wash cycle typically used in PET reclaiming processes. Ex. 1001, 6:61–65. The ’422 Patent further states that labels are fully recyclable if the polymers used are clear, preferably clear PET, and the labels include inks that can be washed off in a “typical PET recycling wash (caustic wash).” Id. at 11:44– 49; see also id. at 11:49–54 (describing embodiments in which the labels are free or substantially free of inks that cannot be washed off in a caustic wash or where the labels are free or substantially free of color plastics that cannot be recycled). The ’422 Patent further discusses “industry standards” for determining whether various embodiments of shrink labels are recyclable. See, e.g., id. at 11:29–53. For example, the Specification states that the “Association for Plastic Recyclers (APR) Critical Guidance Protocol for Clear PET Articles with Labels and Closures (PET-CG-02)” (Ex. 1005) can certify that a film is fully recyclable with a container or bottle. Id. at 11:34– 38. Additionally, the Specification states that labels “are recyclable according to the Evaluation of the Near Infrared (NIR) Sorting Potential of a Whole Plastic Article (SORT-B-01)” (Ex. 1010) and/or the “Evaluation of Sorting Potential for Plastic Articles Utilizing Metal, Metalized, or Metallic Printed Components (SORT-B-03)” (Ex. 1011). Ex. 1001, 11:39–44. The ’422 Patent further states that embodiments of the labels “are fully recyclable. For example, the labels may include inks that can be washed off in a typical PET recycling wash (caustic wash) and the polymers” are preferably clear PET. Id. at 11:44–48. The ’422 Patent thus provides various descriptions or standards to determine the recyclability of shrink labels. For the purposes of addressing the anticipation and obviousness grounds, we determine that any of these standards can be used to determine if a shrink label is “recyclable.” We note that our construction is preliminary and is based on the present record. We invite the parties to further the address the construction of “wherein the recyclable shrink label is recyclable with a PET container” during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 11,961,422 - Champion Laboratories, Inc. / First Brands Group, LLC v. Hengst SENo claims unpatentablePTAB · Sep 8, 2025 · IPR2024-00603 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1, 3, 5, 8–11, 15–17, 19, 23–25, and 28–30 were not shown unpatentable over Yokoyama, Yokoyama and Cline, or Honermann and Cline.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“On this record, we determine that the level of ordinary skill is reflected in the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (specific findings on the ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163–64 (Fed. Cir. 1985))). Because the level of ordinary skill in the art is not in dispute, and because the parties’ definition is consistent with the disclosures in the ʼ203 patent, the prior art, and the declaration testimony of Mr. Nranian and Dr. Basirat, we view the prior art and arguments through this lens when determining whether the claims are unpatentable as obvious over the prior art.5 See Graham, 383 U.S. at 17 (identifying “the level of ordinary skill in the pertinent art” as an underlying factual inquiry to be resolved in deciding obviousness, which is a question of law).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Although the parties spend significant portions of their briefing discussing the term “eccentric” and how it applies to certain figures from the ʼ203 patent and the relied-upon prior art, we determine that it is not necessary to expressly construe the term “eccentric” beyond the parties’ agreed-upon definition. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Rather, we adopt Patent Owner’s proffered definition because it is consistent with the intrinsic record and because it is not in dispute. Specifically, Patent Owner asserts that the plain meaning of the term “eccentric” is defined as “located elsewhere than at the geometric center; also: having the axis or support so located.” PO Resp. 18–19 (citing the Merriam-Webster online dictionary definition of the term “eccentric” for support). Petitioner agrees with this definition. Pet. 35 (asserting that certain prior art elements are eccentric “because they are not located at the center of the filter insert or housing”); Pet. Reply 9 (arguing that certain elements are eccentric because they “do not have an axis located at the geometric center”); id. at 10 (arguing the eccentricity of an element that does “not have an axis in the center” which has “an off-center axis”); see also Ex. 2017 ¶ 33 (Dr. Basirat testifying that “[a] POSITA would understand that ‘eccentric’ in the context of [the] ʼ203 patent, means that central axis is located elsewhere than at the geometric center [and] not placed centrally or not having its axis or other part placed centrally”). The parties’ definition of “eccentric” is also consistent with the usage of the term in the ʼ203 patent. Ex. 1001, 10:23–31; Fig. 17.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Rather, we adopt Patent Owner’s proffered definition because it is consistent with the intrinsic record and because it is not in dispute. Specifically, Patent Owner asserts that the plain meaning of the term “eccentric” is defined as “located elsewhere than at the geometric center; also: having the axis or support so located.” PO Resp. 18–19 (citing the Merriam-Webster online dictionary definition of the term “eccentric” for support). Petitioner agrees with this definition. Pet. 35 (asserting that certain prior art elements are eccentric “because they are not located at the center of the filter insert or housing”); Pet. Reply 9 (arguing that certain elements are eccentric because they “do not have an axis located at the geometric center”); id. at 10 (arguing the eccentricity of an element that does “not have an axis in the center” which has “an off-center axis”); see also Ex. 2017 ¶ 33 (Dr. Basirat testifying that “[a] POSITA would understand that ‘eccentric’ in the context of [the] ʼ203 patent, means that central axis is located elsewhere than at the geometric center [and] not placed centrally or not having its axis or other part placed centrally”). The parties’ definition of “eccentric” is also consistent with the usage of the term in the ʼ203 patent. Ex. 1001, 10:23–31; Fig. 17.” slip op. at 14
- Expert testimonyPetitioner expert discountedDecided for patent owner
“(opining that “Patent Owner’s construction of ‘having an axis no located in a geometric center’ is too narrow”). Mr. Nranian’s Declaration testimony in this respect is not persuasive for several reasons. First, it is internally inconsistent. Compare Ex. 1016 ¶ 3 (criticizing the “axis” language in Patent Owner’s definition), with id. ¶¶ 9, 11 (relying on that very language to support an argument). Also, Mr. Nranian’s proposed definition of “eccentric” to merely mean “not located at the center” begs the question of what, precisely, is “the center”? Mr. Nranian does not persuasively explain how far a person of ordinary skill in the art would understand she could travel from the exact center point of an object and still be in “the center” of that object. See Tr. 10:13–19 (Judge McGee asking whether the center is “a miniscule point in the middle of [the] disc”); see also id. at 10:25–12:26 (Judge Weatherly highlighting the significant ambiguity in referring to something as in “the center”). Also, Mr. Nranian’s opinion is inconsistent with how the ʼ203 patent compares something that is “central,” i.e., “at the center,” and something that is “eccentrically” located. Ex. 1001, 7:13–14 (describing pipe nozzle 15 as “central”); id. at 8:53–56 (describing a “through hole” as “located in the center of the front panel 22” depicted in Figures 7 and 8); id. at 10:23–31 (describing return 12 as “in the center” and outlet 13 as “eccentrically thereto” in Figure 17). Patent Owner’s colorized and annotated Figure 7 is reproduced below: Patent Owner’s colorized and annotated version of Figure 7 of the ʼ203 patent illustrates “central pipe nozzle 15” in yellow passing through the “through hole” located in “the center” of front panel 22. PO Resp. 20. Significantly, pipe nozzle 15 and the through hole in panel 22 are both described as “central” and in “the center” but must have different diameters; otherwise, “central pipe nozzle 15” would not be capable of traveling through “through hole 22.” Ex. 1001, Fig. 7. Thus, the ʼ203 patent intrinsically bases whether an element is “central” or “in the center” on whether its axis is located at the geometric center. This is also illustrated in Figure 17 of the ʼ203 patent, reproduced below: Figure 17 of the ʼ203 patent illustrates filter housing 10 with return 12 “in the center . . . and, eccentrically thereto, the outlet 13 with the seat 14 for the blocking element 24.” Ex. 1001, 10:23–30. Finally, Mr. Nranian’s narrow interpretation of “eccentric”––which excludes the “having the axis or support so located” in the geometric center language––is at odds with the arguments it was proffered to support. Cf. Pet. Reply 9 (arguing that certain elements are eccentric because they “do not have an axis located at the geometric center”); id. at 10 (arguing the eccentricity of an element that does “not have an axis in the center” which has “an off-center axis”).” slip op. at 29
Patent outcomesUS 9,023,203 not shown unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,023,203 - Jiangsu Favored Nanotechnology Co., Ltd. v. P2i Ltd.All claims unpatentablePTAB · Apr 11, 2025 · IPR2024-00380 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1–5, 7, and 9–14 are unpatentable as obvious over Cohen and Legein or Francesch and Legein; Petitioner’s motion to strike is denied as moot.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“The parties agree that a person of ordinary skill in the art in the field of the ’087 patent in June 20154 “would have had at least a bachelor’s degree in a field such as chemistry, physics, or chemical engineering, as well as at least two years of experience with plasma-polymerization techniques.” Pet. 20 (citing Ex. 1002 ¶¶ 22–29); PO Resp. 13 (Patent Owner stating that it “does not dispute this characterization of the level of ordinary skill in the art.”); see also PO Sur-reply 1–2 (noting both parties’ agreement on the education and experience level of the ordinarily skilled artisan).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the fully developed trial record, we determine that no claims need an express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Because of Patent Owner’s shifting definitions of the education and experience level of the ordinarily skilled artisan, it is unclear on the complete record what precise definition Patent Owner and Dr. Senkevitch are applying when arguing the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13; Ex. 2007 ¶¶ 30, 31, 33, 34, 37, 40, 52–55, 60, 68, 74, 76, 77, 80–86, 89, 91, 94, 95, 100, 102–105, 108, 110, 111, 113–116, 118–120, 122, 124, 127–134. We, therefore, give Dr. Senkevitch’s testimony regarding the capabilities of a person of ordinary skill in the art minimal weight, which leaves us with Patent Owner’s insufficiently supported arguments regarding the skilled artisan’s capabilities. PO Resp. 13, 22–27, 31–32, 34–40; PO Sur-reply 1–6, 11–13. Moreover, as Petitioner correctly points out, the ʼ087 patent expressly teaches that the precise conditions for forming a protective polymeric coating “will vary depending upon factors such as, without limitation, the nature of the monomer compound, the crosslinking agent, the substrate, as well as the desired properties of the coating” and that such “conditions can be determined using routine methods.” Ex. 1001 15:1–15:5 (emphasis added); Pet. Reply 17. Where the patent itself leaves to the judgment of an ordinarily skilled artisan the assessment of these factors to ascertain suitable conditions for forming the protective coating, we find persuasive Petitioner’s view that it would have been well within the level of ordinary skill to ascertain such suitable conditions.” slip op. at 20
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We disagree with Patent Owner. Although the claims of the ʼ087 patent recite obtaining the protective cross-linked polymeric coating “by exposing the device or component to a plasma,” the field of endeavor analysis in an analogous art inquiry does not exclusively turn on the claims at issue, but rather takes account of the entirety of a patent’s disclosure. See In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004) (explaining that “the PTO must show adequate support for its findings on the scope of the field of endeavor in the application’s written description and claims” (emphasis added)); In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (rejecting an argument that the field of endeavor was limited to a claimed “Internet terminal” when “the specification describes various communication media, including facsimile machines and email, as related to the invention.”). This is significant here because the ʼ087 patent discloses that “[t]he … invention relates to protective coatings” and specifically “relates to protective coatings for electronic or electrical devices and components thereof, and methods of forming such coatings.” Ex. 1001, 1:14–17. Based on this disclosure, we find that the ʼ087 patent’s field of endeavor relates to “protective coatings for electronic or electrical devices and components thereof” broadly, not just those formed on such devices or components via a plasma polymerization process as asserted by Patent Owner. Id. Although Cohen does not explicitly disclose that its crosslinked polymers constitute a “protective coating,” Cohen does disclose that its “copolymerizable mixture can be cast into films” (Ex. 1004, 2:61–62), that the polymerization can “effected in situ,” and that the polymers may be used in “numerous” electrical applications (id. at 5:17–25). Tr. 8:9–10:2, 27:2– 21; see Pet. Reply 5 (explaining how “Cohen described insulating polymers that could be applied as films and be used to protect substrates including cables and electrical coils.” (citing Ex. 1004, 2:60–63, 5:13–25)). These disclosures suggest strongly that Cohen’s crosslinked polymers––if cast into a film or formed in situ on an electrical device or component––would serve as a protective coating on that electrical device or component, even though Cohen does not expressly refer to its crosslinked polymers ipsis verbis as a “protective coating.” Thus, we find that Cohen is within the field of endeavor of the ʼ087 patent.” slip op. at 15
Patent outcomesUS 11,041,087 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,041,087 - Affordable Wire Management, LLC v. Cambria County Association For The Blind And Handicapped, Inc.All claims unpatentablePTAB · Mar 7, 2025 · IPR2024-00139 · APJ Nathan A Engels · IPR · Final written decision
Claims 1–19 are unpatentable as obvious over the CAB Website and CAB Whitepaper; the Board did not reach the other instituted grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“would have had a bachelor’s degree in a pertinent discipline, such as electrical engineering, civil engineering, mechanical engineering or equivalent with 2–3 years of experience in electrical utility systems, planning, and design” and “the number of years of experience could be higher or lower given the level of education and vice versa.” Pet. 23. In its Preliminary Response, Patent Owner contended Petitioner’s level of ordinary skill is too high. Prelim. Resp. 32. According to Patent Owner, a POSITA would have had “an associate degree in an engineering discipline, and 1–2 years’ experience in electrical power systems” and “[a] lack of work experience can be remedied by additional education, and vice versa.” Prelim. Resp. 31 (citing Ex. 2001 ¶ 21). Our Institution Decision states that we preliminarily determined a POSITA would have had a bachelor’s degree in an engineering discipline and two years of experience in electrical power systems. Inst. Dec. 5–6. Patent Owner’s Response states that Patent Owner applies the Board’s 9 The parties have not directed our attention to any objective evidence of obviousness or non-obviousness. preliminary determination (PO Resp. 6, n.3), and Petitioner did not subsequently address the issue. Based on the full record, we determine a POSITA would have had a bachelor’s degree in an engineering discipline and two years of experience in electrical power systems. We are satisfied that this comports with the level of skill necessary to understand and implement the teachings of the ’291 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (explaining the applied prior art may reflect an appropriate level of skill). slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“the cable hangers (which support the current wires, data wires and other wires). That is, a single multi-function line supports the cable hangers, as a messenger wire, and provides a current path, as a grounding conductor.” Ex. 1001, 2:33–37 (emphasis added). And the sentence following that passage, which is cited by both parties, states: “Accordingly, as used herein, a ‘multi-function line’ means a tension member that supports current wires and/or cable hangers, and, which is conductive.” Ex. 1001, 2:37–40 (emphasis added). The sentences immediately following that sentence provide additional context, stating: “That is, a messenger wire is not a ‘multi-function line.’ Similarly, a conductor that does not support other constructs is not a ‘multi-function line.’” Ex. 1001, 2:40–42 (emphasis added). Thus, the specification indicates that a multi-function line is a tension member, “is conductive,” and supports other constructs such as current wires and/or cable hangers. In contrast, the specification does not mention “effective ground fault current path.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Based on the entire record, Petitioner shows that the combination of the CAB Website and the CAB Whitepaper satisfy the limitations of claim 1. We also agree with Petitioner that a POSITA would have had reason to combine the references’ teachings, at least because the CAB Website expressly refers to the CAB Whitepaper, suggesting to a POSITA that the references’ teachings should be considered together. Pet. 47–48; see Reply 6–8.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“First, we agree with Petitioner that Patent Owner has not shown that the cited products are coextensive with, and have the required nexus between, the products and claim 1. See Reply 18–29. Even if Patent Owner sells an “Integrated Grounding System” that satisfies each limitation of claim 1, that system is undeniably comprised of “various” “exemplary” interchangeable parts that have uses outside of the claimed invention, that at least purportedly relate to many other of Patent Owner’s patents, and that were known in the prior art. E.g., Ex. 2064, ¶ 304 (identifying “exemplary” product part numbers, including CAB-9605, CAB-9705, CAB-9760, and CAB-9607), n.10; App’x A, A5 (identifying a part number “representative” part the “mid-pier kit”); Ex. 1049, 6–7 (identifying Patent Owner’s patent’s relating to different part numbers). For example, Patent Owner identifies two patent numbers purportedly protecting its “grounding Mid Pier Kit,” the ’551 patent and US Pat. No. 10,461,518. Ex. 1049, 6–7. Patent Owner identifies three of its patents as protecting its copper messenger wire, part number CAB-9605: (i) the ’551 patent, (ii) US Pat. No. 10,461,518, and (iii) US Pat. No. 10,811,859. Id. And Patent Owner identifies eight different patents, but not the ’551 patent, as protecting the cited cable hangers, CAB- 9760. Id. And as explained in the analysis above, all of these parts were known and available in the prior art, as evidenced by the CAB Website and the CAB Whitepaper. We can discern no nexus between the features of the ’551 patent and the alleged objective evidence of nonobviousness given that the so-called “Integrated System” includes multiple, interchangeable, and “exemplary” part numbers that were known in the prior art. See Yita LLC v. MacNeil IP LLC, 69 F.4th 1356, 1364 (Fed. Cir. 2023) (“But our case law makes clear that objective evidence of nonobviousness lacks a nexus if it exclusively relates to a feature that was known in the prior art—not necessarily well-known.” (internal quotations and citations omitted)); see also Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success is due to an element in the prior art, no nexus exists.”).” slip op. at 21
Patent outcomesUS 10,177,551 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,177,551 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedAll claims unpatentablePTAB · Feb 28, 2025 · IPR2021-00045 · APJ Nathan A Engels · IPR · Remand
Claims 1–3, 9–11, and 17–19 are unpatentable as obvious over Masters; claims 5, 13, and 21 are unpatentable as obvious over Masters and Stone.
RulingsRemand decision- RemandOther
“stated that on remand, the Board should “adopt a new construction that includes application instance-level, application-level, device-level, and tierlevel data” and “the Board should determine whether Masters, including its Decision Review Display and Path Display, renders the ‘collecting’ and ‘correlating’ limitations obvious in view of the Board’s new construction. In addition, the Board should consider Masters’ Appendix J in assessing whether Masters’ Path Display teaches life cycle events and the claimed correlating step.” Netflix, 2024 WL 3507601 at *8. After the Federal Circuit issued its mandate, with our authorization, the parties filed the following briefs: Petitioner’s Opening Brief on Remand (Paper 41, “Pet. Remand Br.”), Patent Owner’s Response Brief on Remand (Paper 42, “PO Remand Resp.”), Petitioner’s Reply Brief on Remand (Paper 43, “Pet. Remand Reply”), and Patent Owner’s Sur-Reply Brief on Remand (Paper 44, “PO Remand Sur-Reply”).” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We determine a POSITA would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience,” which is consistent with the parties’ arguments and testimony of the parties’ declarants, as well as the level reflected in the ’722 patent and the asserted prior art. We determine it is unnecessary to reach the parties’ additional statements of the knowledge and skills that a POSITA would allegedly possess, as the parties’ arguments do not hinge on those statements.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We find Petitioner’s proposed construction to be generally consistent with the intrinsic record (including the claim language) and the Federal Circuit’s guidance. However, we decline to adopt the use of “related to” instead of “associated with” in Petitioner’s proposed construction because we determine the language used in the claim, “associated with,” is clear enough on its face and Petitioner provides no persuasive justification for altering the plain meaning to “related to”. Consistent with the Federal Circuit’s guidance, we determine the proper construction of “performance data” further includes data pertaining to the performance of a server and/or a technology tier. Netflix, 2024 WL 3507601 at *6 (citing Ex. 1001, 3:56–57, 4:3–8, 4:14–18, 7:26–29). Accordingly, we determine “performance data” means “data associated with the performance of one or more application instances, including instance-level, application-level, device-level, and tierlevel data and includes data pertaining to the performance of a server and/or a technology tier.” We determine no other terms require express construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Applying our construction of “performance data,” we agree with Petitioner that, among other things, the CPU utilization and review time shown in Masters’ Figure 5.6.2.1-2 and Figures 8A and 8B fall within the scope of the claimed “performance data.” See Pet. 50–56; Reply 17. The CPU utilization data and review time data are both data associated with the performance of one or more application instances. Further, the Figures and corresponding description in Appendix J evidence collection of the performance data for each application instance. Pet. 34–38, 50; Ex. 1024, 39. Similarly, the startup of a copy of the Auto-Special process on Altair11 constitutes a life cycle event, as it is the creation of an application instance, and the termination of Auto-Special on Altair7 is another example of a life cycle event, as claimed. Ex. 1024, 39; see Pet. 39–44. We agree with Petitioner that these Figures and related descriptions in Masters teach collecting performance data and correlating the performance data to the life cycle events. See Pet. 46, 50–55. We also agree with Petitioner that Masters’ Figures 9A and 9B similarly show the collection and correlation of performance data, at least with the response time, action time, CPU score, and similar metrics depicted in the Figures. Pet. 47–49. Figures 9A and 9B show the correlation of the performance data to a life cycle event, by, for example, depicting the performance issue (an overload on Altair11) that cause the creation of a new application instance on Altair3. Pet. Reply 12. We agree with Petitioner that the response time to trigger the creation of an application instance on Altrair3 and the amount of time the application instance takes to start are two examples of performance data correlated with the life cycle event. Pet. Masters, Figures 9A and 9B depict Masters’ Decision Review Display that provides a summary of allocation and reallocation actions taken by the RMA, and “[f]or each action, timing information regarding how long it took the Resource Management functions, e.g., the Resource Manager . . . and the Program Controller . . ., to both arrive at a decision and to enact the decided action are shown along with host fitness scores that were used in arriving at the allocation decision.” Ex. 1004, 30:1–10. We disagree with Patent Owner’s arguments that the Masters’ “response time” “cannot be associated with the performance of the ‘Semi-Auto’ application instance because the response time passes before the instance exists” (PO Remand Br. 4), and we agree with Petitioner that the time required to start an application instance is a metric associated with the creation of that instance. In sum, we agree with Petitioner that Masters teaches the Correlating Limitations.” slip op. at 28
Patent outcomesUS 7,457,722 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,457,722 - Netflix, Inc. v. Avago Technologies International Sales Pte. LimitedAll claims unpatentablePTAB · Feb 28, 2025 · IPR2021-00431 · APJ Nathan A Engels · IPR · Remand
Claims 4, 6–8, 12, 14–16, 20, and 22 are unpatentable as obvious over Masters.
RulingsRemand decision- RemandOther
“stated that on remand, the Board should “adopt a new construction that includes application instance-level, application-level, device-level, and tierlevel data” and “the Board should determine whether Masters, including its Decision Review Display and Path Display, renders the ‘collecting’ and ‘correlating’ limitations obvious in view of the Board’s new construction. In addition, the Board should consider Masters’ Appendix J in assessing whether Masters’ Path Display teaches life cycle events and the claimed correlating step.” Netflix, 2024 WL 3507601 at *8. After the Federal Circuit issued its mandate, with our authorization, the parties filed the following briefs: Petitioner’s Opening Brief on Remand (Paper 37, “Pet. Remand Br.”), Patent Owner’s Response Brief on Remand (Paper 40, “PO Remand Resp.”), Petitioner’s Reply Brief on Remand (Paper 41, “Pet. Remand Reply”), and Patent Owner’s Sur-reply Brief on Remand (Paper 42, “PO Remand Sur-reply”).” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We determine a POSITA would have had “a bachelor’s degree in Electrical Engineering, Computer Science, or a similar discipline, with one or two years of experience,” which is consistent with the parties’ arguments and testimony of the parties’ declarants, as well as the level reflected in the ’722 patent and the asserted prior art. We determine it is unnecessary to reach the parties’ additional statements of the knowledge and skills that a POSITA would allegedly possess.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We find Petitioner’s proposed construction to be generally consistent with the intrinsic record (including the claim language) and the Federal Circuit’s guidance. However, we decline to adopt the use of “related to” instead of “associated with” in Petitioner’s proposed construction. Consistent with the Federal Circuit’s guidance, we determine the proper construction of “performance data” further includes data pertaining to the performance of a server and/or a technology tier. Netflix, 2024 WL 3507601 at *6 (citing Ex. 1001, 3:56–57, 4:3–8, 4:14–18, 7:26–29). Accordingly, we determine “performance data” means “data associated with the performance of one or more application instances, including instance-level, application-level, device-level, and tier-level data and includes data pertaining to the performance of a server and/or a technology tier.”” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With that backdrop, we agree with the parties that the claim language itself sufficiently defines the term “application instance” and that it is unnecessary to further define the term.” slip op. at 17
Patent outcomesUS 7,457,722 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,457,722 - Tennant Company v. Oxygenator Water Technologies, Inc.No claims unpatentablePTAB · Feb 28, 2025 · IPR2021-00625 · APJ Kristina M Kalan · IPR · Remand
Claims 13, 14, and 17–27 were not shown unpatentable because Tennant did not establish that Wikey or Davies inherently disclosed the claimed microbubbles and nanobubbles.
RulingsRemand decision- RemandOther
“The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11. On September 19, 2024, we authorized the parties to file supplemental briefing, stating also that the “parties are not authorized to present new factual assertions, provide additional exhibits, or raise new arguments beyond those directed to the issues raised in the remand.” Ex. 3001. Pursuant to this authorization, Petitioner filed an Opening Brief on Remand (Paper 61; “Pet. Br. Rem.”) in support of its contentions. Patent Owner filed a Lead Brief on Remand (Paper 62; “PO Br. Rem.”) in support of its contentions. Petitioner filed a Reply Brief on Remand (Paper 66; “Pet. Reply Br. Rem.”). Patent Owner filed a Responsive Brief on Remand (Paper 65; “PO Resp. Br. Rem.”).” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency not foundNot shown unpatentable
“Accordingly, and in line with our previous determination that “Wikey appears to disclose each limitation of claim 13 except ‘microbubbles and nanobubbles having a bubble diameter of less than 50 microns’” (Final Dec. 20), we determine that Petitioner has not demonstrated that Wikey inherently discloses microbubbles or nanobubbles. Accordingly, Petitioner has not demonstrated that Wikey discloses every limitation of claim 13.” slip op. at 56
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“The Federal Circuit vacated and remanded our anticipation determinations as to claims 13, 14, and 17–27. Tennant, 11.1 The Federal Circuit further stated: “Because we vacate and remand to the Board to consider Tennant’s anticipation argument, we do not reach Tennant’s obviousness arguments (which depends on its contention that either Wikey or Davies produce nanobubbles).” Id. at 11.” slip op. at 3
Patent outcomesUS RE45,415 not shown unpatentable§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Affordable Wire Management, LLC v. Cambria County Association For The Blind And Handicapped, Inc.All claims unpatentablePTAB · Feb 25, 2025 · IPR2024-00178 · APJ James P Calve · IPR · Final written decision
Claims 1–10, 14–22, 24, and 25 are unpatentable as obvious over Carr and Almy; the Board did not reach the alternative Caveney grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. DISCUSSION A. Level of Ordinary Skill in the Art Petitioner asserts that a skilled artisan would have had “a bachelor’s degree in a pertinent discipline, such as electrical engineering, civil engineering, mechanical engineering or equivalent with 2–3 years of experience in electrical utility systems, planning, and design.” Pet. 20 (citing Ex. 1002 ¶ 51). Petitioner also asserts that the number of years of experience could be higher or lower given the level of education and vice versa. Id. (citing Ex. 1002 ¶ 51).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“In general, a preamble limits the invention if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim.” Cochlear Bone Anchored Solutions AB v. Oticon Med. AB, 958 F.3d 1348, 1354–55 (Fed. Cir. 2020) (quoting Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)). We agree with Petitioner that the preambles of claims 1 and 6 recite an intended use. The bodies of both claims recite a structurally complete system comprising a messenger wire and a plurality of cable hangers that are disposed along and suspended from the messenger wire and have a plurality of cable carrying surfaces structured to support at least one electrical cable of the plurality of electrical cables and are separated by a cable carrier divider. Ex. 1001, 10:27–37. According to the preambles, the system are used “for organizing a plurality of electrical cables extending from a plurality of solar panels.” Id. at 10:24–26. slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner asserts that Patent Owner’s construction “only replaces ‘organizing’ with ‘separating’” and “organizing” has a broader ordinary meaning than separating and includes “to arrange or order” not merely to separate. Reply 4 (citing Exs. 1052, 1053); id. at 5 (“Separated cables may be organized. But not all organized cables are necessarily separated.”). We adopt Petitioner’s interpretation of “organizing” as “to arrange or order.” Reply 4. This meaning is consistent with the preamble language of “[a] system for organizing a plurality of electrical cables extending from a plurality of solar panels” comprising a messenger wire and cable hangers disposed along and suspended from the messenger wire with cable carrying surfaces that support electrical cables separated by a divider. Ex. 1001, 10:24–37. The system organizes electrical cables by (1) suspending them from a messenger wire on cable hangers, (2) supporting the cables on cable carrying surfaces of each cable hanger, and (3) separating the cables on adjacent cable carrying surfaces of the cable hangers by using a divider. The “organizing” in the preamble encompasses each of these ways of arranging or ordering the electrical cables but is not limited to any particular way of doing so and merely recites an intended use of the systems. Because we interpret the preamble as reciting an intended use of the systems, we also interpret this portion of the preamble as an intended use of those systems. Our Decision would be the same under Patent Owner’s interpretation that organizing means separating because the combination of Almy and Carr renders obvious a system for organizing electrical cables extending from solar panels by suspending them from a messenger wire on cable hangers that also separate the cables, as discussed infra in Section II.D. See Reply 12 n.4.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner argues that a skilled artisan would not have replaced Almy’s wire loops with Carr’s hangers to prevent cross-induction because Almy discloses only DC power cables that extend from the photovoltaic (PV) modules to a combiner box and inverter that converts DC current to AC current without disclosing AC cables or data cables in close proximity to Almy’s DC cables that could create a cross-induction effect. PO Resp. 39– 44 (citing Ex. 1004 ¶¶ 3, 15, 34, Figs. 3, 6; Ex. 2038 ¶¶ 153, 154, 157–160, 163; Ex. 2004, 85:23–86:2, 148:9–14, 154:12–19). We disagree. We agree with Petitioner that a skilled artisan would have used Carr’s cable hangers to organize electrical cables in Almy’s solar power system and prevent cross-induction between AC, DC, and/or data cables. Pet. 45–46; Reply 12–13; Ex. 2001 ¶¶ 53–55. A skilled artisan would know that Carr’s cable hangers would improve Almy’s solar power system by supporting AC, DC, and/or data cables without cross-induction. Pet. 46; Reply 13; Ex. 1002 ¶¶ 48, 96–99; Ex. 1005, 1:27–34, 2:15–27, Fig. 1. Carr’s hangers would satisfy regulations requiring AC and DC cables to be separated. Reply 13. Because Almy’s wire loops cannot comply with NEC regulations that require the separation of AC, DC, and data cables, they limit the ability of Almy’s system to power trackers with AC current to move PV modules to track the sun and obtain maximum power. Ex. 1001, 1:20–56; PO Resp. 7–8 (describing the solar industry trend to use trackers and NEC rules requiring separation of AC, DC, and signal cables for such systems). Carr’s hangers would enable Almy’s solar power system to organize AC, DC, and data cables for solar panels and trackers on a single messenger wire to increase efficiency, comply with NEC rules, prevent cross induction, and avoid the costs of trenching and cable trays. Reply 12–13; Pet. 45–47; Ex. 1005, 1:27–34 (Carr’s cable hangers separate arial conducting cables to minimize cross induction); Ex. 1002 ¶¶ 32–36 (describing the benefits of separating electrical cables with hangers), 48, 96–98 (wire loops cannot prevent cross induction between current- and non-current-carrying cables as hangers do); Ex. 2001 ¶¶ 53–55 (NEC rules require separation of AC, DC, and signal cables); see Metso Mins., Inc. v Powerscreen Int’l Distrib., 526 F. App’x 988, 997 (Fed. Cir. 2013) (finding a motivation to combine to create a solution that complies with road permit regulations). Carr’s hangers would provide a simple, robust means to support and separate current- and non-current-carrying cables to prevent cross induction without deforming under load in Almy’s solar power system. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”); Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021)) (“This is the so-called ‘known-technique’ rationale. And if there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.”); DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (an implicit motivation to combine exists when a combination produces a stronger, cheaper, faster, lighter, smaller, more durable, and/or more efficient product); Ex. 1002 ¶¶ 32 (IEEE Standard 142 and NSC Rule 235G require spacing of current-carrying and data cables to avoid cross-linking), 42 (2014 NEC spacing requirements), 96–99 (Carr’s hangers support and space conducting cables to prevent cross-linking).” slip op. at 16
Patent outcomesUS 11,349,291 unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,349,291 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01114 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR challenging claims 2, 27–30, 32–36, 38, 40, 42–44, 46, 47, 52, 54, 57, and 59, exercising discretion because this was the fourth-ranked parallel petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise. 10 A petitioner is not entitled to an unlimited number of petitions (see Trial Practice Guide 59–61); instead, we determine whether the circumstances justify additional petitions (see id. at 59–60). This approach conforms with the rationale behind imposing a word count limit on petitions. See id. at 39 (discussing the reasons for establishing word count limits and urging parties to present “concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). i.e., the analysis of claim 2, the summary of the ’754 patent and prior art, the articulation of the level of skill in the art and claim construction, and the other preliminary comments—and we are not persuaded that they are sufficiently concise to support Petitioner’s argument. Claim 2 is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages. See Pet. 24–41. Petitioner provides no general information about the technology and submits that no claims need to be construed (id. at 7), yet Petitioner provides a five-page summary of the ’754 patent and its prosecution history (see id. at 2–6). Also, Petitioner provides a twelve-page summary of Ahn and Chaudhri (see id. at 7–19), despite the fact that neither reference is particularly long. Indeed, as Patent Owner notes, Petitioner was able to remove nearly 1,000 words from these common sections in at least one of the petitions. See Ranking Response 3–4. Because Petitioner’s analysis in the common sections does not appear to be concise, we are not persuaded that Petitioner’s use of approximately 8,350 words in those sections justifies the large number of petitions.” slip op. at 11
Discretionary denialPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01086 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 2, 8, 10, 16, 24, 26, and 224 because this petition ranked last among seven parallel petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise.” slip op. at 12
Discretionary denialPatents in suitUS 10,656,754
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.