- PTAB · Sep 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Remand
The Board instituted IPR of claims 1–21 on all asserted grounds after finding a reasonable likelihood of prevailing on the Nishida-based challenges.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“partes review of U.S. Patent No. 8,266,749 B2 (“the ’749 patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–21 of the ’749 patent. Nike, Inc. (“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 10) and Patent Owner filed a Sur-reply (Paper 13). We discretionarily denied institution under 35 U.S.C. § 325(d). Paper 20. Petitioner filed a request for Director Review of the Decision denying institution. Paper 21. Director Review was granted, the Decision denying institution of inter partes review was vacated, and the case was remanded to the Board. Id. at 4. Specifically, the case was “remanded to the Board with instructions to consider Petitioner’s Nishida grounds and to determine whether the Petition should be instituted.” Id. at 3–4.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the Petition and the Preliminary Response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’749” slip op. at 2
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In support of Petitioner’s position, Dr. Adanur testifies that “Nishida discloses that the unfinished surface area 1.1 is part of the web 1 itself,” that Nishida discloses that the computer-controlled process can (using Nishida’s phrase) “put in” up to seven different textile fibers or yarns into the web of material in one operation, and that, “[t]hus, Nishida discloses simultaneously knitting its layouts 2 and tongue 40 (each a ‘textile element’) with the unfinished surface area 1.1 (a ‘surrounding textile structure’).” Ex. 1002 ¶ 216 (citing Ex. 1022, 2:12–20, 4:47–55, 5:45–49). For purposes of institution, we credit that testimony over the testimony of Dr. Pastore, because, on the current record, we regard Dr. Adanur’s testimony as more consistent with the evidence. This and the other related issues may be explored more fully during the trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’749 patent in March 2004 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 23–24. Patent Owner states that, “[f]or purposes of this Preliminary Response, Nike applies Skechers’ definition for a person of ordinary skill in the art.” Prelim. Resp. 14. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - PTAB · May 24, 2024 · IPR2023-00861 · APJ Christopher M Kaiser · IPR · Remand
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was unpatentable under any asserted ground.
RulingsRemand decision- RemandOther
“Accordingly, the Director instructed us to “determine whether Petitioner has demonstrated that Figure 1 of Godefroy ‘is clear on its face’ or would have reasonably suggested the placement of Godefroy’s sacrificial anode ‘within 10 inches’ of the hot liquid inlet.” Id. at 9. “In making this determination,” the Director instructed us to “consider whether the expert testimony provides sufficient ‘technical detail, explanation, or statements supporting why the expert determines that the feature in question was required or would have been obvious based on the prior art disclosure.’” Id. In addition, although the Director’s decision “is limited to [our] application of Hockerson to the grounds in the Petition involving Godefroy,” the Director instructed us also to “consider what effect, if any, this decision has on the other asserted grounds.” Id. Finally, the Director instructed us to “set forth [our] interpretation” of “the limitation ‘within 10 inches of a hot liquid inlet to the radiator.’” Id. at 8 n.4.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“original decision, the Director’s decision, and the evidence currently of record, we determine that Petitioner has not shown a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“evidence. The challenged claims require that a sacrificial anode be placed within a certain distance—10 inches—of the hot liquid inlet, and, because the inlet has some non-zero size, it might be possible for an anode to be within that distance from some parts, but not from all parts, of the inlet. Accordingly, specifying the center axis of the inlet as the point from which to measure the distance to the anode improves on the plain words of the claim in terms of achieving the claim’s objective of placing the anode within a specified distance of the inlet. Moreover, when discussing the distance from the inlet to the anode, the specification of the ’494 patent uses the language “within 10 inches in any direction of the center axis of the inlet connection.” Ex. 1001, 7:61–64. Thus, the intrinsic evidence supports adopting Petitioner’s claim construction. Petitioner’s declarant, Dr. Medlin, relies on Petitioner’s proposed construction. See, e.g., Ex. 1004 ¶¶ 20 (noting that the construction “within 10 inches of the center axis of [a] hot liquid inlet” “ha[s] been adopted by Petitioner”), 96 (“the sacrificial anodes contained in each of the turbulators 2 would be placed within 10 inches of a center axis of a hot liquid inlet to the radiator of Tomosada”), 144 (“A POSITA would understand from Figure 1 that the sacrificial anode 14 is within 10 inches of a center axis of a hot liquid inlet”), 267 (“These teachings would further motivate a POSITA to located the sacrificial anode 12 within 10 inches of a center axis of the hot liquid inlet.”). This support for Petitioner’s proposed construction provides further reason for us to adopt it. Because it is supported by the intrinsic evidence of record, because Patent Owner proposes no alternative construction, and because Petitioner’s expert supports it, we adopt the construction of “within 10 inches of a hot liquid inlet to the radiator” that Petitioner proposes. Thus, we construe this term as “within 10 inches of the center axis of a hot liquid inlet to the radiator.” In other words, when discussing the distance between a hot liquid inlet and a sacrificial anode, we interpret “hot liquid inlet” as “center axis of the hot liquid inlet.”” slip op. at 5
- BurdenNot shown unpatentable
“Inherency may be relied upon in arguing either anticipation or obviousness. Schering, 339 F.3d at 1377 (applying inherency in an anticipation context); Par Pharma. Inc. v. TWI Pharma., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014) (applying inherency in an obviousness context). In both cases, however, “[t]he mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010). Instead, “the limitation at issue necessarily must be present, or the natural result of the combination of elements expressly disclosed by the prior art.” Par Pharma., 773 F.3d at 1195–96. Here, Petitioner has not shown sufficiently that, in Godefroy, the sacrificial anode necessarily is placed within 10 inches of the center axis of the hot liquid inlet. Dr. Medlin testifies that Figure 1 of Godefroy shows that “an entirety . . . or at least a significant portion of the sacrificial anode 14, is within 10 inches of a center axis of the inlet.” Ex. 1004 ¶ 144. But we cannot say that Figure 1 of Godefroy is clear on its face, or reasonably suggests, that this is necessarily the case. There are no dimensions shown on Figure 1, so it is unclear from the figure what the diameter of pipe 12 is. If that diameter is larger than 20 inches, then it simply is untrue that “sacrificial anode 14 is . . . necessarily placed within 10 inches of a center axis of a hot liquid inlet to the radiator,” as Dr. Medlin testifies. Id. ¶ 361. As noted above, neither Petitioner nor Dr. Medlin relies on the hot liquid inlet of Godefroy having any particular diameter, and Godefroy is silent as to the diameter of its inlet. Pet. 69–70; Ex. 1004 ¶¶ 144, 359–361, 381–382, 406–408; Ex. 1008, 1–15. Moreover, as Patent Owner notes, there is a wide range of sizes of radiators, including automobile radiators, available. Prelim. Resp. 3–5; Exs. 2001–2003. In the absence of any testimony or other evidence that tends to show that radiator inlet pipes necessarily have diameters less than 20 inches, Petitioner has not shown sufficiently that the diameter of Godefroy’s inlet pipe is small enough to ensure that any portion of the anode necessarily is within 10 inches of the center axis of the inlet.” slip op. at 11
Claim constructioncites Phillips - PTAB · Nov 14, 2016 · IPR2015-01243 · APJ Grace Karaffa Obermann · IPR · Final written decision
Petitioner failed to prove claims 1–8, 10, and 11 of the ’290 patent, claims 1–8 and 10–13 of the ’173 patent, and claims 1–6 and 8–19 of the ’510 patent obvious over Fohr, Sato, and …
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“We recognize that it may be necessary “to look to interrelated teachings of multiple patents . . . in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l, 550 U.S. at 418. Petitioner in these proceedings, however, directs us to no persuasive reason why an ordinary artisan would have turned to the heat-retaining battery module of Hallaj when working to implement a plurality of Sato’s cells in a pack to replace the capacitors in Fohr. Pet. 36–38 (nowhere addressing that critical point); Reply 13 (devoting four sentences to rebuttal of Patent Owner’s persuasive evidence that one would not have combined the disclosures of Hallaj, Fohr, and Sato in the manner claimed); see Ex. 1033, 15 (Examiner’s observation, in confirming the patentability of the challenged claims during reexamination, that Sato contains “no information as to how Sato’s cells would be implemented in a pack”). We view Petitioner’s unexplained leap from the single battery cell of Sato to the heat-retaining battery module of Hallaj as a classic example of impermissible hindsight reconstruction driven not by any teaching in the prior art, but by the claim requirement of a “plurality” of cells implemented in a battery pack. Pet. 36–38; Reply 13. Patent Owner, by contrast, comes forward with persuasive evidence, which we credit, showing that one of ordinary skill in the art would not have been led to arrange a plurality of Sato’s cells in the heat-retaining battery module of Hallaj because such a modified battery pack would have been unsuitable for use as a replacement for the capacitors in Fohr. Specifically, we credit the testimony of Dr. Blomgren, who cogently explains why a person of ordinary skill in the art would not have been led to the proposed modification. Ex. 2147 ¶¶ 79–85.” slip op. at 17
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We are not persuaded by Dr. Riley’s testimony that Fohr effectively teaches that both lithium-based battery cells and capacitors can achieve the 20 Amp Limitation, on a theory that “it’s actually the tool that draws the power” and “the right lithium cell” would be “a drop in replacement for this application.” Ex. 2169, 121:12–16 (Dr. Riley’s deposition testimony); Resp. 17. Dr. Riley readily admitted an unfamiliarity with capacitors, and identified no suitable “drop in” ready lithium cells available at the time of the invention. Ex. 2169, 121:11–122:4 (“[I]f I had a cell that could do similar things, I’d certainly swap it in there.”). On that point, we find more credible Dr. Blomgren’s testimony that “there is no guarantee that a given pack of battery cells can provide the current that a tool tries to draw.” Resp. 17 (citing Ex. 2147 ¶ 60).” slip op. at 13
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art We hold that the prior art references asserted in the Petition are representative of the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (absence of specific findings on “level of skill in the art does not give rise to reversible error ‘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 (Fed. Cir. 1985)). To the extent that a more specific definition is required, we hold that an ordinary artisan would include one holding a Bachelor’s Degree in Electrical Engineering with two or three years of experience in battery design. That definition comports with the very similar definitions advanced by the parties. In that regard, Petitioner asserts that an ordinary artisan would encompass a person holding a Bachelor’s Degree in Electrical Engineering with three years of experience in battery design. Pet. 8; Ex. 1007 ¶ 9. Patent Owner similarly asserts that an ordinary artisan would include a person holding a Bachelor’s Degree in Electrical Engineering with two years of battery design experience. Resp. 8; Ex. 2105 ¶ 24.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“In our Decisions to Institute, we construed the 20 Amp Limitation to require that “the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity.” Dec. 5. Neither party disputes that construction, which we adopt for the purposes of this Final Written Decision. To the extent that any other claim term requires express construction, we discuss the construction in our analysis below. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need be construed, and then only to the extent necessary to resolve the controversy). The following facts are supported by a preponderance of the evidence.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,944,173 - PTAB · Mar 11, 2015 · IPR2014-01108 · APJ Michael W Kim · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding after settlement, before a final decision on the merits.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” The requirement for terminating review with respect to Petitioner is met. Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Asustek Computer Inc., Dexin Electronics Co., Ltd., and Thermaltake Technology represent all petitioners in this review. The Board has discretion to terminate this review with respect to Better Mouse Co., LLC as Patent Owner. The above represent all parties in this proceeding.” slip op. at 2
NonePatents in suitUS 7,532,200 - PTAB · Sep 12, 2014 · IPR2013-00555 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without issuing final written decisions.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 3
None - PTAB · Sep 12, 2014 · IPR2013-00557 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five related inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met.” slip op. at 2
NonePatents in suitUS 7,047,705 - PTAB · Sep 12, 2014 · IPR2013-00554 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
None - PTAB · Sep 12, 2014 · IPR2013-00556 · APJ Christopher L Crumbley · IPR · Order
The Board granted the joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id. 1 Unless otherwise noted, citations are to the record of IPR2013-00554; similar papers may be found in the records of the other related proceedings. Based on the present record, we determine that it is appropriate to terminate these inter partes reviews both as to Sealed Air and Pregis without rendering a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.” slip op. at 2
NonePatents in suitUS 6,607,803 - PTAB · Sep 12, 2014 · IPR2013-00558 · APJ Christopher L Crumbley · IPR · Order
The Board granted the parties’ joint motions and terminated the five inter partes reviews without a final written decision.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” In these proceedings, the Board instituted trial on March 6, 2014 (Paper 13), but has not yet reached a decision on the merits with respect to the patentability of any involved claim. Accordingly, the requirement for terminating the reviews with respect to Sealed Air, as Petitioner, is met. Also under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).” Sealed Air is the sole Petitioner. The Board, therefore, has discretion to terminate these reviews with respect to Pregis. In their joint motions, the parties contend that the trials are at a “sufficiently early stage,” as Sealed Air has not yet filed its Replies to Pregis’ Patent Owner Responses, and no motions are outstanding at this time. Paper 45, 2-3. The parties also note that they have agreed to dismiss the co-pending district court action Pregis Innovative Packaging, Inc. v. Sealed Air Corporation (D. Del. Civil Action No. 13-1084-LPS), involving the patents and parties before us here. Id.” slip op. at 2
NonePatents in suitUS 7,047,705 - PTAB · Aug 4, 2014 · IPR2014-00731 · APJ Jacqueline Wright Bonilla · IPR · Order
The Board granted the joint motion to terminate the proceeding and the request to keep the settlement agreement confidential; no institution decision was made.
RulingsOther- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached
“This case is in the preliminary proceeding1 stage; no decision whether to” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“The Board generally expects that a proceeding will terminate after the filing of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Considering the facts and early stage of this 1 A preliminary proceeding begins with the filing of a petition for instituting a trial and ends with a written decision as to whether trial will be instituted. 37 C.F.R. § 42.2. proceeding, we agree with the parties that it is appropriate to terminate this proceeding.” slip op. at 2
NonePatents in suitUS 8,071,073
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.