- PTAB · Mar 25, 2026 · IPR2024-01380 · APJ Arthur M Peslak · IPR · Final written decision
The Board cancelled original claims 1–10 and granted substitute claims 11–19 because Petitioner did not prove claim 11 obvious over Torrence and Piepho.
RulingsFinal written decision- 112 supportGranted
“relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he hallmark of written description is disclosure.” Id. “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Yingbin-Nature (Guangdong) Wood Ind. Co., Ltd. v/ Int’l Trade Com’n, 535 F.3d 1322, 1334 (Fed. Cir. 2008). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Ariad, 598 F.3d at 1351 (citing Capon v. Eshhar, 418 F.3d 1349, 1357–58 (Fed. Cir. 2005)). “This inquiry . . . is a question of fact.” Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). Further, inventions in the mechanical and electrical-based arts usually involve predictable factors and can be more predictable than other fields, such as chemistry and biology. See In re Fisher, 427 F.2d 833, 839 (CCPA 1970);” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction We determine that no express construction of any claim term is necessary for purposes of this Decision. 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’”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“[c]ombin[e] the tapered region of Piepho with the shaft of Torrence, the tapered region would extend from an uppermost extremity of the shaft.” RMTA Opp. 9. But, Petitioner concedes that neither reference discloses a tapered region extending from the uppermost extremity. Petitioner argues that Torrence’s shaft is straight (Amended RMTA Sur-reply 9) and that “[t]he tapered region of Piepho does not extend to the extreme end of the shaft.” RMTA Opp. 11 (emphasis added). Because neither Torrence nor Piepho discloses a shaft with a tapered region that “extends from an uppermost extremity of the shaft,” we find that the combination of Torrence and Piepho does not teach limitation 11[a]. We now analyze whether Petitioner provides reasoning with a rational underpinning why a person of ordinary skill in the art would have been motivated to modify Torrence with Piepho to extend Torrence’s taper from the upper extremity of its shaft. slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,827,568 - 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 · Sep 11, 2024 · IPR2023-00763 · APJ Kristen L Droesch · IPR · Remand
Instituted review of claims 7 and 11 on the § 103 ground over Park and IEEE 802.16-2004.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“considering the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential only as to Section II.B.4.i) (“General Plastic”), and expanded upon in Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve”). Paper 17 (“Decision”). Petitioner requested Director Review of the Decision, which was granted. Papers 18, 19. On March 22, 2024, the Director issued a Decision Vacating the Decision as an improper extension of the “significant relationship,” as set forth in General Plastic and Valve, and remanding to the Board to issue a decision on institution that addresses the merits of the Petition. Paper 28 (“Director’s Decision”).” slip op. at 2
- RemandOther
“considering the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) (precedential only as to Section II.B.4.i) (“General Plastic”), and expanded upon in Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019) (precedential) (“Valve”). Paper 17 (“Decision”). Petitioner requested Director Review of the Decision, which was granted. Papers 18, 19. On March 22, 2024, the Director issued a Decision Vacating the Decision as an improper extension of the “significant relationship,” as set forth in General Plastic and Valve, and remanding to the Board to issue a decision on institution that addresses the merits of the Petition. Paper 28 (“Director’s Decision”).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2020). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”). Accordingly, for purposes of this decision, we adopt Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,447,450 - PTAB · Mar 14, 2024 · PGR2022-00061 · APJ Thomas L Giannetti · PGR · Final written decision
The Board granted Patent Owner’s non-contingent motion to amend, cancelling claims 1–34 and replacing them with substitute claims 35–66 supported by the written description.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“complies with the legal requirements set forth in 35 U.S.C. § 326(d) and 37 C.F.R. § 42.221. Lectrosonics, Paper 15 at 4, 7–8. Specifically, Patent Owner must show that the amendments do not enlarge the scope of the claims or introduce “new matter.” See 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii)). Lectrosonics describes “new matter” as follows:” slip op. at 4
- 112 supportGranted
“description support for the proposed substitute claims. See 35 U.S.C. § 326(a)(9); 37 C.F.R. § 42.221; Lectrosonics, Paper 15 at 7–8. The written description test is met when the original disclosure of the application relied upon reasonably conveys to a person of ordinary skill in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“We disagree with this argument because it is not consistent with the ’953 patent specification or the plain meaning of “replace.” Neither party requested a special construction of the term “replace.” We see no merit in Petitioner’s contention that the plain meaning of “replace” in Figure 32 does not require removal of the device being replaced. The contention that the plain meaning of “replace” does not require “removing” was explored with Petitioner’s counsel at the oral argument: THE BOARD: If you replace a player in a football game or baseball game, a new player goes in and replaces that player. You don't add a 12th, a 12th player or a 10th player to a baseball team. You replace the player that’s there with a different player. Isn’t that what replacement is all about? COUNSEL FOR PETITIONER: Your Honor, in that context, it absolutely is. Because there’s no other way to understand that. You know, but we’re not talking about baseball or people here obviously. Hearing Tr. 18:23–19:3 (emphasis added).” slip op. at 15
Claim constructionPatents in suitUS 11,349,953 - PTAB · Oct 15, 2020 · IPR2019-00995 · APJ Timothy J Goodson · IPR · Final written decision
The Board granted the non-contingent motion to amend, canceling claims 2, 8, 10, 18, 19, 28–30, 32–34, 37, 38, 40–42, 45, and 47 and substituting claims 48–62, which were not shown obvious.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“minimal probative value because Patent Owner has not adequately demonstrated a nexus between the asserted objective indicia and the merits of the claimed invention. Mot. to Exclude 3–4; Reply Mot. to Exclude 1–2. This argument attacks the merits of Patent Owner’s substantive arguments on objective indicia and does not establish an evidentiary basis for excluding Mr. Van Vliet’s testimony. We agree with Patent Owner that Mr. Van Vliet’s testimony is relevant to the issue of objective indicia of nonobviousness. See Opp. Mot. to Exclude 1–2. Petitioner also argues that Mr. Van Vliet’s declaration should be excluded because it contains hearsay. Mot. to Exclude 4–6; Reply Mot. to Exclude 2. Petitioner states that it “is not moving to exclude based on the fact that the Declaration itself [is] hearsay, but rather that it contains a multitude of statements therein that are themselves hearsay, made by persons other than Van Vliet . . . .” Mot. to Exclude 5. However, as Patent Owner points out, Petitioner does not identify any specific statements in the declaration that constitute hearsay. Opp. Mot. to Exclude 4. Even after Patent Owner pointed out this lack of specificity, Petitioner’s Reply still does not clarify which specific statements in the declaration are alleged to be hearsay and instead simply repeats the assertion there are “a multitude of statements therein that are themselves hearsay.” Reply Mot. to Exclude 2.” slip op. at 11
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“however, we first consider whether Patent Owner’s Revised Motion to Amend meets the statutory and regulatory requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Lectrosonics, Paper 15 at 4. To satisfy those requirements, Patent Owner must demonstrate that: (1) the amendment proposes a reasonable number of substitute claims; (2) the amendment responds to a ground of unpatentability involved in the trial; (3) the amendment does not seek to enlarge the scope of the claims of the patent or introduce new subject matter; and (4) the proposed claims are supported in the original disclosure (and any earlier filed disclosure for which the benefit of filing date is sought). See 35 U.S.C. § 316(d) (2018); 37 C.F.R. § 42.121 (2018).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We determine that the plain language of the claim, which requires that the fuel delivery connections “compris[e]” the fuel level sensor, shows that the fuel level sensor is structurally connected to the fuel level sensor. As Petitioner agrees, this claim language requires that the fuel delivery connection includes the fuel level sensor. Tr. 34:17–20. Both the fuel delivery connections and the fuel level sensor are structures, so for one to include the other, they must be physically connected. Petitioner’s argument give effect to the word “comprising.” Because a fuel delivery connection and a fuel level sensor would be operationally connected in any system that has both items, Petitioner’s interpretation essentially reads out the word “comprising” and treats the claim phrase as if it recited “fuel delivery connections and a fuel level sensor.” Our interpretation that the fuel delivery connections must be physically connected to the fuel level sensor is more faithful to the claim’s recitation that the fuel delivery connections “compris[e]” the fuel level sensor. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (“A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so.”) (quoting Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005)).” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“a low and high fuel level in the tanks to which the fuel delivery connection is connected.” RMTA A1. Patent Owner proposes that “low” fuel level means “empty or nearly empty” and “high” means “full or nearly full.” Id. at 5 nn.16–17 (citing Ex. 1001, 4:1–4, 6:7–12; Ex. 2002, 10). Petitioner does not contest Patent Owner’s proposed constructions or offer competing constructions for these terms. See generally Opp. RMTA; Tr. 13:17–15:14. Although Patent Owner’s argument in support of these constructions is truncated, we determine that Patent Owner’s proposals are supported by the evidence of record. The ’906 patent describes that operators can be provided with “visual representations or displays showing the fuel level in each of the tanks 12. Any visual representation or display may be used that shows at least a high level condition (tank full) and a low level condition (tank empty or nearly empty) and preferably also shows actual fuel level.” Ex. 1001, 3:66–4:4; see also id. at 6:7–10 (explaining that “[t]he control station 56 may be provided with a full readout or display for each fuel tank 12 being filled that shows the level of fuel in the fuel tank 12 including when the fuel tank 12 is near empty and near full. An alternative is to provide only fuel empty (low sensor dry) or fuel full (high sensor wet) signals.”). These descriptions equate a high fuel level with the tank being full or nearly full and a low fuel level with the tank being empty or nearly empty. Patent” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,029,906 - PTAB · Oct 13, 2020 · PGR2019-00045 · APJ Christopher C Kennedy · PGR · Final written decision
The Board cancelled claims 13, 18, and 19, but denied substitute claims 23–25 because their percentage-and-range limitations introduced new matter.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“3. Scope of Proposed Substitute Claims A motion to amend “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 326(d)(3); 37 C.F.R. § 42.221(a)(2)(ii). Although Patent Owner does not appear to separately address this requirement in the Revised Motion to Amend, see generally Revised MTA, we have reviewed the proposed substitute claims and determine that they do not enlarge the scope of the claims of the patent because they add limitations that render each proposed substitute claim narrower than original challenged claim 13.2 Petitioner does not contend otherwise. See generally Opp. On this record, we determine that the Revised Motion to Amend satisfies this requirement.” slip op. at 9
- 112 supportMotion to amend, deniedDenied
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“description support for numerical ranges identified by the parties is General Hospital Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368, 1372 (Fed. Cir. 2018).4 In that case, the Federal Circuit explained: The disclosure of a broad range of values does not by itself provide written description support for a particular value within that range. Instead, where a specification discloses a broad range of values and a value within that range is claimed, the disclosure must allow one skilled in the art to immediately discern the limitation at issue in the claims. Id. (emphasis added); cf. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (“[T]he disclosure of a range is no more a disclosure of the end points of the range than it is of each of the intermediate points.”). The Federal Circuit has also stated that, “[i]n the absence of blazemarks” that point to a particular species or sub-genus, “simply describing a large genus of compounds is not sufficient to satisfy the written description requirement.” Fujikawa v. Wattanasin, 93 F.3d 1559, 1571 (Fed. Cir. 1996). We find those cases to be instructive because we discern no guidance in the original disclosure that points to the percentage+range limitation of proposed substitute claim 23. Nor do we find anything in the original disclosure that would “allow one skilled in the art to immediately discern” 4 Despite the fact that Sienna was cited in (1) Petitioner’s opposition to Patent Owner’s original Motion to Amend, Paper 24 at 11; (2) the Preliminary Guidance issued by the Board, PG at 8; and (3) Petitioner’s opposition to Patent Owner’s Revised Motion to Amend, Opp. at 12, Patent Owner fails to cite or discuss Sienna, see generally Revised MTA; Reply. the percentage+range limitation. See Sienna, 888 F.3d at 1372. Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to any mesh sieve number range other than 3–35, and Patent Owner has not persuasively identified any portion of the original disclosure that attributes any significance to having a particular proportion of particles (e.g., 61 wt%) falling within some narrower mesh sieve number range. See Ex. 1021 (Coffield Decl.) ¶¶ 23–24.” slip op. at 14
§ 112 disclosurePatents in suitUS 10,071,852 - PTAB · Sep 21, 2020 · IPR2019-00846 · APJ Jennifer Meyer Chagnon · IPR · Final written decision
Claims 3 and 4 are cancelled, and substitute claims 12 and 13 are added; Petitioner did not prove the substitute claims obvious over the asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Dr. Ducharme testifies that a person of ordinary skill in the art “would have had at least an undergraduate degree in mechanical engineering, or equivalent education, training, or experience, with at least two years of experience with [Unmanned Aeriel Vehicles (UAV)].” Ex. 1003 ¶ 72. Dr. Reinholtz testifies that a person of ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering and at least two years of experience designing mechanisms and mechanical structures of the type used in releasable couplings and locking devices. Additional education could substitute for professional experience and significant work experience could substitute for formal education.” Ex. 2001 ¶ 28. Dr. Reinholtz acknowledges that he does not view “Dr. Ducharme’s proposed definition as substantially different from [his own].” Ex. 2001 ¶ 30. We agree and note that our consideration of the issues presented does not turn on which proposed definition is applied. Dr. Ducharme and Dr. Reinholtz also acknowledge that their respective testimony would remain the same regardless of which of these definitions of a person of ordinary skill in the art is applied. See Ex. 1028 ¶ 23; Ex. 2001 ¶ 30. In any event, for purposes of this Final Written Decision, we adopt Petitioner’s description of a person of ordinary skill in the art, while maintaining our prior determination (Inst. Dec. 10) that the prior art reflects the appropriate level of skill at the time of the claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“1. “lugs” and “notches” Claim 1 recites, inter alia, “the shaft lock portion defining notches configured to engage corresponding lugs on the blade lock portion.” Ex. 1001, 6:7–9 (emphasis Petitioner’s (Pet. 23)). In the Institution Decision, we construed “lugs” and “notches,” in accordance with Petitioner’s proposal, as “projections” and “indentations,” respectively. See Inst. Dec. 12; Pet. 24; Ex. 1003 ¶ 86. The parties do not dispute this construction in their subsequent briefing, and we discern no reason to change this construction based on the complete record of this proceeding. Therefore, we maintain our prior construction for purposes of this Final Written Decision.” slip op. at 15
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted
“claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes two substitute claims in place of two challenged claims. Revised Mot. Amend 1, 27. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. Therefore, we determine that the amendments propose a reasonable number of substitute claims.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable
“screwed onto the wrong driveshaft, when using a conventional threaded attachment mechanism (such as that described in Sasaki) is actually “mistake-proof.” Based on the evidence of record, we determine that it is not. Or, in other words, we determine that the conventional threaded attachment mechanism taught by Sasaki does not teach the Engagement Limitation (i.e., it does not prevent the clockwise lock mechanism from “be[ing] engaged in” the counterclockwise lock mechanism). According to Patent Owner, “the conventional screw-on type blade attachment mechanism does not prevent the attachment of a blade to the wrong drive.” Revised Mot. Amend 15 (citing Ex. 2001 ¶¶ 52–54, 59). Patent Owner contends that “it is relatively easy to attach a blade on the wrong drive on a UAV that utilizes the conventional screw-on type connection mechanism.” Id. (citing Ex. 2001 ¶¶ 52–54); see also Ex. 2006 (video created by Dr. Reinholtz demonstrating that a blade can be attached to the wrong drive using a screw-on type attachment mechanism). In its Reply, Patent Owner argues, again relying on the testimony of Dr. Reinholtz, that “[w]ith a conventional threaded attachment mechanism, when a blade is screwed onto the wrong driveshaft, the blade becomes engaged in the lock mechanism.” Reply 2 (citing Ex. 2016 ¶¶ 20–24). Petitioner, on the other hand, relying on the testimony of Dr. Ducharme, contends that “[w]hen a blade is forced onto the driveshaft and the threads are ‘stripped’, the blade is not, and cannot be, ‘engaged’ with the lock mechanism”; “[r]ather, the metal threads on the shaft lock portion are likely carving out new notches in the blade lock portion.” Opp. 12 (citing Ex. 1028 ¶ 49). According to Patent Owner, however, the “[i]ntent of the UAV designer is not a part of the Engagement Limitation.” Reply 2; see id. (noting that “Petitioner’s position appears to be premised on the incorrect notion that the Engagement Limitation requires the engagement of lock mechanism components in the precise way that is intended by the designer of the UAV”). Patent Owner contends that to “be engaged in,” as properly construed, “include[s] the type of connection between threads when a blade is screwed onto the wrong driveshaft.” Id. at 3. As we have construed it, to “be engaged in” merely requires “being interlocked.” See supra Section II.C.2. Relying on testimony of Dr. Reinholtz, Patent Owner further contends that “when a blade is screwed onto the wrong driveshaft, the threads on the blade mate or interlock with the threads on the driveshaft.” Reply 3 (citing Ex. 2016 ¶¶ 20, 23–24); see also Tr. 31:8–12 (“[A]s Dr. Reinholtz explains [at Ex. 2016 ¶ 23], that when a blade is misthreaded, a mechanical connection is created by engagement between the threads either because threads on the blade are deformed around threads on the shaft or threads on the shaft carved through threads on the blade.”). As shown in Dr. Reinholtz’s video, when the blades are screwed onto the wrong driveshaft, the blade and shaft are locked together (i.e., “interlocked” or “engaged”). Ex. 2006; see also Ex. 2001 ¶ 54 (describing the video, and indicating that the incorrectly installed blades “do not fall off” and are “securely attached”).” slip op. at 32
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,260,184 - PTAB · Dec 30, 2014 · IPR2013-00403 · APJ Justin T Arbes · IPR · Final written decision
The Board canceled claims 1–27 and granted substitute claims 28 and 30, but denied substitute claims 29 and 31–33 for failure to meet amendment requirements or show patentability.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 28 as a substitute for claim 2, claim 29 as a substitute for claim 11, claim 30 as a substitute for claim 13, claim 31 as a substitute for claim 22, claim 32 as a substitute for claim 24, and claim 33 as a substitute for claim 27. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’583 patent. See Mot. 8. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 12
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Term Proposed Interpretation “sync point” “a location in a data flow having data meeting a specified criteri[on]” “fine sync point” “a location in a data flow having data meeting a specified fine criteri[on] that is less restrictive than a coarse criteri[on]” “coarse sync point” “a location in a data flow having data meeting a specified coarse criteri[on] more restrictive than a fine criteri[on]” Mot. 6–7 (citing Ex. 1001, col. 9, ll. 20–57). Petitioner in its Opposition does not argue that Patent Owner’s proposed interpretations are incorrect. We agree that Patent Owner’s proposed interpretations represent the broadest reasonable interpretation of the claims in light of the Specification of the ’583 patent. The Specification discloses fine filter 560 and coarse filter 565, where “[t]he appliance designates the locations in the data flow which meet the fine and coarse filter criteria as fine and coarse sync-points, respectively,” and the filter criteria for coarse filter 565 are “more restrictive” than the filter criteria for fine filter 560. Ex. 1001, col. 9, ll. 20–38. The Specification also describes an example where “the filter criteri[on] declares a fine sync-point when the top five bits of the hashes are all zeros and a coarse filter criteri[on] which stores or compares hashes when the top ten bits of the hashes are all zeros” (i.e., the filter criterion for the coarse filter is more restrictive). Id. at col. 9, ll. 30–34. Accordingly, we interpret “sync point,” “fine sync point,” and “coarse sync point” as set forth above.” slip op. at 14
- Prior constructionPrior construction adoptedDecided for patent owner
“Also, in the Decision on Institution, we interpreted various claim terms of the independent claims of the ’583 patent as follows: Term Interpretation “network memory” (claims 1, 12, device(s) in a network for and 23) storing information “appliance” (claims 1, 12, and 23) hardware and/or software elements applied to a particular use “instruction” (claims 1, 12, and a message or signal that 23) indicates, explicitly or implicitly, an action to perform See Dec. on Inst. 6–10. Patent Owner’s proposed substitute claims depend from the original independent claims of the ’583 patent, and the parties do not dispute these interpretations in their papers. We do not perceive any reason or evidence that now compels any deviation from these interpretations. Accordingly, for purposes of assessing the proposed substitute claims, we incorporate our previous analysis of the three terms above. See id.” slip op. at 15
Claim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 8,370,583 - PTAB · Dec 30, 2014 · IPR2013-00402 · APJ Justin T Arbes · IPR · Final written decision
The Board canceled claims 1–12 and granted the motion to amend for substitute claims 13 and 15, but denied it for claims 14 and 16–18 based on unmet amendment and eligibility requirements.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“In a motion to amend, the patent owner bears the burden of proof to demonstrate patentability of its proposed substitute claims over the prior art and, thus, entitlement to the claims. Idle Free at 7. This does not mean that the patent owner is assumed to be aware of every item of prior art known to a person of ordinary skill in the art. However, the patent owner should explain in its motion why the proposed substitute claims are patentable over not just the prior art of record, but also prior art not of record but known to the patent owner: A patent owner should identify specifically the feature or features added to each substitute claim, as compared to the challenged claim it replaces, and come forward with technical facts and reasoning about those feature(s), including construction of new claim terms, sufficient to persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner. The burden is not on the petitioner to show unpatentability, but on the patent owner to show patentable distinction over the prior art of record and also prior art known to the patent owner. Some representation should be made about the specific technical disclosure of the closest prior art known to the patent owner, and not just a conclusory remark that no prior art known to the patent owner renders obvious the proposed substitute claims. Id. This includes addressing the basic knowledge and skill set possessed by a person of ordinary skill in the art even without reliance on any particular item of prior art. Id. at 7–8; Toyota at 4–5. The petitioner then has the opportunity, in its opposition, to argue any deficiency in the patent owner’s motion and “come forward with specific evidence and reasoning, including citation and submission of any applicable prior art,” to rebut the patent owner’s position on patentability. Idle Free at 8.” slip op. at 16
- ScopeMotion to amend, grantedGranted
“1. No Broadening of Scope Proposed substitute claims in an inter partes review “may not enlarge the scope of the claims of the patent.” 35 U.S.C. § 316(d)(3); see 37 C.F.R. § 42.121(a)(2)(ii). In its Motion to Amend, Patent Owner proposes claim 13 as a substitute for claim 4, claim 14 as a substitute for claim 3, claim 15 as a substitute for claim 8, claim 16 as a substitute for claim 7, claim 17 as a substitute for claim 12, and claim 18 as a substitute for claim 11. Mot. 1–6. Each claim includes all of the limitations of the corresponding claim for which it is a substitute, and adds additional limitations. No limitations are removed. Petitioner in its Opposition does not dispute Patent Owner’s assertion that the proposed substitute claims do not enlarge the scope of the claims of the ’226 patent. See Mot. 8–9. We are persuaded that the proposed substitute claims do not enlarge the scope of the original patent claims.” slip op. at 11
- 112 supportGranted
“2. Written Description Support Pursuant to 37 C.F.R. § 42.121(b), a motion to amend in an inter partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended,” and “[t]he support in an earlier-filed disclosure for each claim for which benefit of the filing date of the earlier filed disclosure is sought.”” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundDecided for patent owner
“Patent Owner argues that it would not have been obvious to incorporate the technique of Spring into a network data de-duplication system, as recited in the proposed substitute claims, because Spring “had very limited practical application in the network memory context.” Mot. 12. Patent Owner’s position is supported by the statement in McCanne ’376 that due to Spring’s small cache and first-in first-out replacement policy, “the efficacy of [Spring’s] approach is limited to detecting and exploiting communication redundancies that are fairly localized in time.” Ex. 1003 ¶ 20; see Mot. 12. The proposed substitute claims, which identify sync points from which forward and backward memory comparisons are performed, are not limited to only recently transmitted data. Patent Owner also asserts that the specific combination of “fine and coarse filtering of hash values” and “forward and backward memory comparison” limitations recited in the proposed substitute claims represents a practical solution to the “tradeoff” that exists with data de-duplication systems, and is not solved by any of the prior art of record. Mot. 12–13. Specifically, Patent Owner states that there is a “tradeoff” between the size of an index and the likelihood that an indexed segment will be matched. Id. Spring uses a small fixed-size cache and small packets, and, thus, works best for only recently transmitted data. Id. By contrast, according to Patent Owner, the proposed substitute claims provide a practical solution to the tradeoff by operating at the byte-level and using a combination of fine and coarse filters to identify sync points from which forward and backward memory comparisons are performed. Id. Patent Owner’s explanations regarding the prior art and why the proposed substitute claims allegedly would not have been obvious are supported by the record and are persuasive. We also note that although Petitioner addresses the “fine and coarse filtering of hash values” limitations in its Opposition (arguing that they are taught by Hsu), Petitioner does not argue that Hsu—or any other reference— teaches or suggests the “forward and backward memory comparison” limitations. Nor does Petitioner propose any specific combination of references that allegedly would have rendered obvious the proposed substitute claims as a whole. Thus, Patent Owner’s assertions regarding key aspects of the prior art, such as Spring, essentially are unrebutted.” slip op. at 23
§ 101 eligibility§ 103 obviousnessPatents in suitUS 8,312,226 - PTAB · May 20, 2014 · IPR2013-00124 · APJ Lora M Green · IPR · Final written decision
The Board granted cancellation of claims 1-26 and allowed substitute claims 27-44, but denied substitute claim 45 as unpatentable over Behan.
RulingsFinal written decision- ScopeMotion to amend, grantedGranted
“patent claims. 35 U.S.C. § 316(d)(3); 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“partes review must set forth “[t]he support in the original disclosure of the patent for each claim that is added or amended.”” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundMixed
“In order to establish a prima facie case of obviousness based on structural similarity, the prior art must provide a reason to make the claimed compound, and there must also be “„adequate support in the prior art‟ for the 7 P.E.A. Teal et al., (Z)-11-Hexadecen-1-ol: A Behavioral Modifying Chemical Present in the Pheromone Gland of Female Heliothis Zea (Lepidoptera:Noctuidae), 116 CAN. ENTOMOLOGY 777-79 (1984). Ex. 2003. 8 Yih-Shen Hwang et al., Structure-Activity Relationship of Unsaturated Fatty Acids as Mosquito Ovipositional Repellents, 10 J. OF CHEM. ECOLOGY 145-51 (1984). Ex. 2004. change in structure.” Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (quoting In re Grabiak, 769 F.2d 729, 731-32 (Fed. Cir. 1985)). The United States Court of Appeals for the Federal Circuit noted that the test for obviousness of a compound based on structural similarity is in accordance with the legal principles enunciated by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), specifically, that it is important to identify “„a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does‟ in an obviousness determination.” Takeda, 492 F.3d at 1356-57 (quoting KSR, 550 U.S. at 418). Thus, “in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.” Takeda, 492 F.3d at 1357.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundDecided for petitioner
“We acknowledge that McMahon and the Zhang Declaration are evidence that the ordinary artisan would not have had a reasonable expectation that, because a compound is known to repel mosquitoes, such as Aedes aegypti, the compound would also repel ticks, such as Amblyomma variegatum. Claim 45, however, encompasses the use of isolongifolanone when R1 is a hydrogen atom and R2 is an oxygen atom, which is the same compound specifically taught by Behan. See Pet. 7-8 (showing the structure of isolongifolanone, and discussing how it is encompassed by the chemical formula set forth in claim 1). As discussed above, Behan teaches the use of isolongifolanone to repel mosquitoes or cockroaches. Patent Owner provides no evidence that ticks and mites would not be present on the same objects or areas where mosquitoes and cockroaches are found, which are the insects addressed by Behan. Thus, by applying the isolongifolanone taught by Behan to an object or airspace for the purpose of repelling mosquitoes or cockroaches, one would also inherently repel ticks and mites. “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see also Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1377-78 (Fed. Cir. 2005) (noting that the realization of a new benefit of an old process does not render that process patentable); Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001) (stating in the context of a claimed process that was drawn to the same use comprising the same steps of the prior art, “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.”). We, therefore, conclude that the preponderance of the evidence does not support the patentability of proposed claim 45.” slip op. at 17
§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 7,579,016
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.