- Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 28, 2026 · IPR2024-01174 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–8 and 10–23 are unpatentable: the Board found claims 1–15 anticipated or obvious over the asserted grounds and claims 16–23 obvious over the Native combination.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“argument that the prior art fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Reply 6–7 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that Lesniak teaches how to make stable compositions by including a secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Id. Ex. 1086 ¶ 7; see also Reply 6 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32).” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 17 (citing Ex. 1002 ¶¶ 27–29). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications at this stage of the proceeding. PO Resp. 10. For this Decision, we adopt and apply Petitioner’s proposal above, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1, 16, and 20 reciting “a deodorant stick” is limiting” as it provides antecedent basis for the recitation of “said deodorant stick being free of an aluminum salt” for each independent claim. PO Resp. 7–10. Patent Owner also points to dependent claims 6–9 as relying on the preamble reciting “a deodorant stick” as antecedent basis for claim elements. Id. at 9. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 19 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick). We determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find that the evidence of record fails to support Patent Owner’s argument that the prior art fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Reply 6–7 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that Lesniak teaches how to make stable compositions by including a secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Id. Ex. 1086 ¶ 7; see also Reply 6 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32). Having considered the parties’ positions and evidence of record, summarized above, we determine that Lesniak provides sufficient disclosure to enable a person of ordinary skill in the art to formulate deodorant stick within the parameters of claim 1. Therefore, for the reasons discussed above, we conclude that Petitioner has proved by a preponderance of evidence that Lesniak anticipates claim 1.” slip op. at 22
Patent outcomesUS 11,497,706 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,497,706 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 28, 2026 · IPR2024-01173 · APJ Susan L C Mitchell · IPR · Final written decision
Claims 1–7, 9–13, and 16–19 are unpatentable: claims 16–17 are anticipated by Lesniak, and the remaining challenged claims are obvious over the stated combinations.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“argument that the Lesniak fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Pet. Reply 8 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Ex. 1086 ¶ 7; see also Reply 8 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32).” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 24 (citing Ex. 1002 ¶¶ 27–28). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. See generally PO Resp. We adopt and apply Petitioner’s proposed definition of a POSA, which is consistent with the level of skill reflected in the asserted prior art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said deodorant stick being free of an aluminum salt” and “said deodorant stick” having a particular hardness range. PO Resp. 8–9. Patent Owner also points to dependent claims 5–8 as relying on the preamble reciting “a deodorant stick” as antecedent basis for claim elements. Id. at 10. We agree.” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We find that the evidence of record fails to support Patent Owner’s argument that the Lesniak fails to enable a stable deodorant stick. Rather, we are persuaded by Petitioner that Lesniak sufficiently teaches compositions with the relevant ingredients and achieves stable compositions through the use of a second wax having a melting point of 73 to 90° C. Pet. Reply 8 (citing Ex. 1003, 1:39–54). For example, Lesniak’s compositions (nos. 8 and 11) that used such a second wax, namely CastorWax MP80, are disclosed as sufficiently stable. Ex. 1003, Table 2. Here, we further credit the testimony of Dr. Michniak-Kohn that secondary wax, such as castor wax, with a sufficiently high melting point. Ex. 1003, 1:39-54, 5:23-32, Table 2. Both of the compositions (nos. 8 and 11) tested by Lesniak that had such a wax passed the stability tests. Ex. 1086 ¶ 7; see also Reply 8 (“Lesniak overcame any stability issues, as it expressly discloses compositions that are ‘physically stable at high and low temperatures.’”) (citing Ex. 1003, 5:23–32). Having considered the parties’ positions and evidence of record, summarized above, we determine that Lesniak provides sufficient disclosure to enable a person of ordinary skill in the art to formulate a deodorant stick within the parameters of claims 16 and 17. e) Conclusion as to Claims 16 and 17 We agree with Petitioner that “the challenged claims recite nothing more than well-known deodorant ingredients performing their conventional functions.” Pet. Reply 2. Therefore, for the reasons discussed above, we conclude that Petitioner has proved by a preponderance of evidence that Lesniak anticipates claims 16 and 17.” slip op. at 22
Patent outcomesUS 10,905,647 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,905,647 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 26, 2026 · IPR2024-01105 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1, 3–8, and 11–14 as anticipated by Lesniak; claims 2, 9, 10, and 15 as obvious over the respective asserted combinations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art (“POSA” or “POSITA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 27 (citing Ex. 1002 ¶¶ 26–28). Patent Owner does not dispute Petitioner’s proposal about the POSA’s qualifications. PO Resp. 7– 8. We adopt and apply Petitioner’s proposed definition of a POSA, which does not appear to be inconsistent with the level of skill reflected in the asserted prior art.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said stick range. PO Resp. 8–10. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 27 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick).” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“disclosure to enable a person of ordinary skill in the art to formulate deodorant stick within the parameters of claim 1. d) Conclusion as to claim 1 Having considered the parties’ positions and evidence of record, summarized above, we are persuaded by Petitioner’s analysis that Lesniak discloses all elements of claim 1. We are not persuaded to Patent Owner’s arguments to the contrary. Accordingly, we determine that Lesniak anticipates claim 1.” slip op. at 20
Patent outcomesUS 10,966,915 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,966,915 - Dr. Squatch, LLC v. The Procter & Gamble CompanyAll claims unpatentablePTAB · Jan 21, 2026 · IPR2024-01104 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–18 are unpatentable under § 103: claims 1–7, 9–13, and 15–18 over Lesniak, Phinney, and Bianchi ’518; claim 8 adds Lamb; claim 14 adds Bianchi ’254; and claims 1–18 are also unpatentable over the …
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner asserts that the preamble of independent claim 1 reciting “a deodorant stick” is limiting” as it provides antecedent basis for certain other claim elements, specifically, for the recitation of “said stick being free of an aluminum salt” and “said stick” having a particular hardness range. PO Resp. 8–9. We agree. Petitioner does not provide argument to the contrary. See, e.g., Pet. 30 (arguing that Lesniak discloses a deodorant stick in the form of an antiperspirant stick). We determine that no express construction of any other claim term is necessary to resolve the dispute between the parties. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art (“POSA”) at the time of the invention “would have (1) at least a B.S. or equivalent degree; and (2) at least two years of experience in cosmetics formulations.” Pet. 24 (citing Ex. 1002, ¶¶ 26–28). Patent Owner does not dispute Resp. We adopt and apply Petitioner’s proposed definition of a POSA, which is consistent with the level of skill reflected in the asserted prior art.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“We have considered Patent Owner’s arguments but find, on this record, Petitioner to have the better position. In particular, we are persuaded that a POSA would have been motivated to add magnesium hydroxide to Lesniak’s compositions because Phinney teaches that: (i) zinc oxide has “low activity” as a “deodorant agent”; (ii) magnesium hydroxide is “an effective synergistic effects, hence motivating a POSA to add magnesium hydroxide to Lesniak’s zinc oxide deodorants. Ex. 1004, 1:13- 3:16, 5:61-67. Reply 10; see also PO Resp. 25–26 (arguing that a POSA would have found it obvious to add magnesium hydroxide to the composition of Lesniak because zinc oxide is not a particularly efficacious antimicrobial in deodorants when used alone, whereas magnesium hydroxide is an effective deodorant). We acknowledge that Phinney suggests mixing zinc oxide with water in order to convert zinc oxide to zinc hydroxide. See, e.g., Ex. 1004, 1:17– 19 (“It was also found that a mixture of the hydroxides of zinc and magnesium could provide long lasting protection against odour due to perspiration.”). The evidence of record, however, shows that both magnesium hydroxide and zinc oxide were known options for deodorant antimicrobials, and claim 1 does not require a minimal level of effectiveness such that the combination of magnesium hydroxide and zinc oxide would need to outperform any other combination including the mixture of zinc and magnesium hydroxides. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“Our case law does not require that a particular combination must be the preferred, or the most desirable, combination[.]”). Here, we also credit the testimony of Dr. Michniak-Kohn that “POSA would understand that the water-based vs. anhydrous distinction is not relevant, as a POSA would understand that magnesium hydroxide would still function as an antimicrobial in anhydrous compositions such as those disclosed by Lesniak.” Ex. 1086 ¶ 9 (citing Ex. 1072, 1-2, 5 (disclosing deodorants without added water and with zinc oxide and/or magnesium hydroxide)). Accordingly, we are persuaded by Petitioner that “a POSA would have been” slip op. at 22
- Obviousness (§103) › KSR rationalesMotivation foundUnpatentable
“teaches baking soda as an effective ingredient in a deodorant. Ex. 1005, 131–33. Baking soda is also known to cause irritation that may motivate some to remove it from deodorants. See Ex. 2011 ¶ 109–110. Thus, the specific set of advantages and disadvantages for using baking soda in a deodorant was known to a person of skill in the art. On this record, the inclusion or exclusion of baking soda presents no unexpected result and the evidence of record establishes that it would have been an obvious matter of design choice within the skill of the art to balance the advantages and disadvantages associated therewith. See Medichem, S. A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine”); see also Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”) In view of the above, we determine that the preponderance of the evidence supports Petitioner’s argument that claim 8 would have been obvious over the combination of Lesniak, Phinney, Bianchi ’518, and Lamb. Accordingly, we determine that claim 8 is obvious by the combination of Lesniak, Phinney, Bianchi ’518, and Lamb.” slip op. at 32
Patent outcomesUS 11,540,999 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,540,999 - Google LLC v. 138 East LCD Advancements LimitedAll claims unpatentablePTAB · Dec 19, 2025 · IPR2024-00959 · APJ George R Hoskins · IPR · Final written decision
Claims 1–10 are unpatentable: claims 1–8 as obvious and claim 9 as anticipated and obvious over the stated prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the level of [ordinary] skill . . . set forth in the Petition.” PO Resp. 14; Ex. 2001 ¶¶ 20–21. We adopt Petitioner’s unopposed assessment of ordinary skill, as it appears to be consistent with the ’082 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We discuss the scope of the term “specification data” in claim 1 below in Section III.D.3(b)(v) when comparing the claim with Fisher. We construe the term “image processing control data” in claim 1 below in Section III.E.2(e)(i) when comparing the claim with Ohga. Otherwise, based on the arguments and evidence presented, we determine no explicit construction is needed to resolve the parties’ controversy. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Dr. Papanikolopoulos’s testimony that Kuwata teaches away from modifying its camera 22 to access an external server (such as Fisher’s Internet-enabled external data source) by stressing advantages of a self-contained camera-printer pair without external dependencies. See PO Resp. 15–16, 26–28 (citing Ex. 1005 ¶¶ 75, 77); Ex. 2001 ¶¶ 61–64. The cited disclosures in Kuwata simply do not discuss any advantages arising from a self-contained camera-printer pair without external dependencies, or any disadvantages arising from connecting camera 22 to an Internet server. See Ex. 1005 ¶¶ 75, 77. The cited disclosures instead tout the advantages arising from a camera manufacturer (rather than an end user photographer) specifying the image output control information CI for a specific camera-printer pairing, to reduce differences between an image as confirmed by the end user on the camera’s display and the image outputted by the printer. See id. That advantage, however, has nothing to do with whether camera 22 may or may not communicate with an Internet server. Indeed, rather than being self-contained as Patent Owner and Dr. Papanikolopoulos would have it, we find Kuwata’s camera 22 includes an I/O port for wired or wireless communication to transmit the camera’s image files GF / 10 to various printers 24 and various personal computers (PCs). See Ex. 1005, Fig. 4, ¶¶ 81, 85; Ex. 1003 ¶ 84; Pet. 14. Thus, Kuwata allows for and does not discourage communication between camera 22 and an Internet server such as Fisher’s external data source. In particular, Kuwata does not detract from the benefits of updating image output control information CI after the camera is manufactured, for example so that the camera can be paired with printers that were not yet on the market when the camera was manufactured. Moreover, Fisher recognizes that “a manufacturer may create various ancillary data files 418, and make the ancillary data files 418 available on a distributed computer network like the Internet for subsequent downloading and utilization by camera device 110.” Ex. 1006 ¶¶ 42, 55. That teaching in Fisher dovetails with Kuwata’s disclosure concerning camera manufacturers optimizing their cameras with various different printers, supporting Petitioner’s combination. See Ex. 1003 ¶¶ 84–89, 102–108.” slip op. at 27
Patent outcomesUS 7,428,082 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,428,082 - Apple Inc. v. THL Holding Company, LLCAll claims unpatentablePTAB · Jul 3, 2025 · IPR2024-00398 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1–9 are unpatentable as obvious: claims 1, 4, 7, and 8 over Kalliola and Vauclair; claims 2, 3, and 6 with Kalayjian; claim 5 with Turunen; and claim 9 with Trimble.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner agrees with the qualifications proposed by Petitioner: “this description reasonably represents the level of ordinary skill necessary to understand and implement the teachings of the ’680 Patent, as well as the prior art cited in this proceeding.” PO Resp. 13–14 (citing Ex. 2002 ¶ 22). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’680 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner proposes that, based on Patent Owner’s proposed construction in the parallel litigation, we construe “pairing signal” as “[p]rocessor signal to initiate a wireless device pairing sequence.” Pet. 6 (quoting Ex. 1009, 15–168). In Response, Patent Owner adopts Petitioner’s interpretation of this term. PO Resp. 14. We adopt the parties’ proposed construction for this term. We determine that we need not construe any other claim terms. 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 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Second, Petitioner demonstrates that the combination of Kalliola and Vauclair teaches claim limitations 1(d)(iv) and 1(d)(v). As discussed and cited to above, the Petition identifies that, with Kalliola’s touch screen as the claimed “touch screen,” Kalliola’s processor presents a graphical user interface via its touch screen as set forth for limitation 1(c) and 1(d)(ii), and Kalliola’s processor operates in conjunction with its graphical user interface to perform claimed steps as set forth for limitation 1(d)(iii). See Pet. 20–29. We agree that the assertions are supported by Kalliola’s disclosure of a touch screen with a graphical user interface presented thereon, where “tactile elements” “allow the user . . . to enter data . . . into the device.” See Ex. 1004 ¶¶ 26, 40, 42, 44, 51, 71, Figs. 3, 5. Petitioner also asserts, and we agree, that Kalliola teaches the use of Bluetooth-enabled emitters in remote devices that communicate with its wireless communication device with a signal emitter. Pet. 29–31 (citing Ex. 104 ¶¶ 9, 71, 73–75, 77, 107, Fig. 5). Petitioner contends, and we agree, that Vauclair provides additional specificity regarding the pairing process between two devices with its disclosures of a pairing process between devices using protocols that include Bluetooth, wherein a user can select a pairing option from a menu on a display. Id. at 31–32 (citing Ex. 1005 ¶¶ 22, 24, 28, 30, 34–36, 49, Fig. 1; Ex. 1003 ¶¶ 164–167). Petitioner argues, and we agree, that it would have been obvious to a person of ordinary skill in the art to configure Kalliola to use its processor to present “a pairing menu to enable a user to initiate a Bluetooth pairing process between the WCD and the signal emitter by selecting a pairing option via the WCD’s touchscreen,” with Vauclair teaching at least the selection of a pairing option presented on its display, because the presented pairing menu on Kalliola’s touch screen would allow the user to pair the WCD with the user’s personal item signal emitters and would also allow the devices to recognize each other on subsequent connections. Id. at 34–35 (citing Ex. 1003 ¶ 172); see also Ex. 1005 ¶¶ 30, 36. Consequently, we also agree with Petitioner’s assertion that it would have been obvious to a person of skill of ordinary skill in the art that Kalliola’s graphical user interface on its touch screen would have generated signals corresponding to the user’s inputs at least to carry out designated functions, like the initiation of a pairing process, and “the signals generated by the GUI from interaction at the touchscreen would be sent to the WCD’s processor so that the processor can interpret the user’s inputs and take the appropriate action.” Pet. 35; see also Pet. Reply 2–7. Petitioner also asserts, and we agree, that generating processor signals in response to a user indication was a known mechanism for wireless devices, as were Bluetooth pairing and corresponding pairing menus, and there would be no change to the respective functions of Kalliola’s’ wireless communication devices and Vauclair’s pairing menu. Pet. 36 (citing Ex. 1003 ¶ 175). The Petition argues, and we agree, that because Bluetooth pairing and pairing menus were conventional prior to time of the invention, there would have been a reasonable expectation of success configuring Kalliola’s wireless communication device. Id. (citing Ex. 1003 ¶ 176); see also Ex. 1003 ¶¶ 71–75 (Dr. Buehrer providing evidence on Bluetooth-connected devices and associated pairing). Accordingly, we determine that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, a reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(iv). As to limitation 1(d)(v), we also agree with Petitioner that in response to a generation of a pairing signal as discussed in limitation 1(d)(iv), Vauclair discloses that wireless transceivers communicate a series of RF signals back and forth to pair the devices. Pet. 37–38. Petitioner asserts, and we agree, that, in combination, it would have been obvious to configure Kalliola’s Bluetooth transceiver with Vauclair’s teachings for the communication of RF signals to pair devices. Id. at 39. Petitioner contends, and we agree, that a person of ordinary skill in the art would have understood that Kalliola teaches that its wireless communication device performs Bluetooth communications with signal emitters, with the user selecting a desired signal emitter for locating objects, and that this pairing would also allow two Bluetooth devices to recognize each other on subsequent connections. Id. (Ex. 1003 ¶ 184). Petitioner asserts, and we agree, that applying Vauclair’s known technique of communicating RF signals to pair devices would improve Kalliola’s wireless communication device and yield the predictable result of Bluetooth-paired devices. Id. We also agree with Petitioner’s argument that this pairing was an understood and conventional feature of Bluetooth mobile communication devices, so there was a reasonable expectation of success in the combination. Id. at 40 (citing Ex. 1003 ¶ 186); see also Ex. 1003 ¶¶ 71–72 (Dr. Buehrer providing evidence on Bluetooth-connected devices). Accordingly, we find that Petitioner has provided sufficient evidence of rationale to combine Kalliola and Vauclair, reasonable likelihood of success in the combination, and that the prior art teaches limitation 1(d)(v).” slip op. at 40
- Strike new argumentNew argument consideredDecided for petitioner
“Ex. 1003 ¶ 172. The Petition also asserts that, in the combination, there would be no change to the respective functions of either Kalliola’s WCD or Vauclair’s pairing menu. Pet. 36. Thus, the Petition relies on Kalliola’s processor, and its touchscreen, and graphical user interface with Vauclair’s teachings for the pairing menu displayed, wherein pairing signals are generated by Kalliola’s graphical user interface by interaction with the screen. As we discuss further below, Petitioner includes assertions that Vauclair itself teaches that the pairing signal is generated by its graphical user interface. See id. at 33, 37. The Petition, however, also relies on the combination of Kalliola and Vauclair to teach generating a pairing signal by Kalliola’s graphical user interface by interaction with its screen, as discussed above. Id. at 35. Accordingly, it is not necessary to reach the issue of whether Vauclair alone teaches that its graphical user interface generates the pairing signal. Additionally, we do not find that Petitioner’s further arguments in its Reply concerning interaction with Kalliola’s wireless communication device through its graphical user interface were impermissibly presented in view of the Petition’s specific assertions on the teachings of the combination of Kalliola and Vauclair, as discussed above, and its reliance on user interaction with Kalliola’s graphical user interface for the teaching of generating the pairing signal. See 37 C.F.R. § 42.23(b).” slip op. at 39
Patent outcomesUS 11,265,680 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,265,680 - Apple Inc. v. THL Holding Company, LLCAll claims unpatentablePTAB · Jul 3, 2025 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Final written decision
Claims 11–19 are unpatentable as obvious: claims 11–14 over Kalliola, Turunen, Oswald, Vauclair, and Kalayjian; claims 15–18 with Thorn; and claim 19 with Thorn and Sharp.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that the level of ordinary skill in the art corresponds to “a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2-4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming.” Pet. 4 (citing Ex. 1003 ¶ 35). “Patent Owner agrees that this description reasonably represents the level of ordinary skill required to understand and implement the teachings of the ’246 Patent, as well as the prior art cited in the Petition.” PO Resp. 14 (citing Ex. 2002 ¶ 22). Accordingly, we adopt Petitioner’s proposed level of skill.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“device.” This term appears twice in claim 11, once in the phrase “an orientation sensor to detect rotation of the mobile communication device,” and once in the phrase “rotation of the mobile communication device detected by the orientation sensor.” Ex. 1001, 39:13–14, 39:36–38. Patent Owner argues that we should construe this term as limited to “detecting the rotation of the mobile communication device as a whole, not the movement of individual components.” PO Resp. 15–18. Petitioner disputes this, arguing that “rotation of the mobile communication device” should be construed not only to cover rotation of the device as a whole but also should “encompass[] any rotation of the mobile communication device relative to any object, including itself,” which would extend to rotation of “any component of the device.” Reply 4–5. We need not resolve this dispute to determine the outcome of Petitioner’s asserted challenges to the ’246 patent. As discussed more fully below, under either party’s proposed construction of “rotation of the mobile communication device,” Petitioner has shown by a preponderance of the evidence that the challenged claims are unpatentable. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Expert testimonyOther
“On the record developed during trial, we are persuaded that Petitioner has shown by a preponderance of the evidence that Kalliola teaches “an orientation sensor to detect rotation of the mobile communication device,” where “rotation of the mobile communication device” includes rotation of the device as a whole, regardless of whether it also includes rotation of one portion of the device relative to another. Kalliola teaches “motion sensors integrated in WCD 100” that are “used to detect when WCD 100 is being moved,” as well as to detect “when user 110 moves WCD 100 too quickly for an accurate DoA estimation.” Ex. 1004 ¶¶ 84, 86. Although Patent Owner argues that Kalliola’s motion sensors do not detect rotation of the device, this is incorrect on the record as developed at trial. Kalliola teaches that the motion sensor may take “the form of a semiconductor gyroscope chip.” Id. ¶ 84. There is ample evidence that gyroscopes detect rotation. Ex. 1013, 38 (identifying as an “orientation sensor” a “[t]hree-axis gyro” and a “[d]ynamic [h]igh [r]ange [gyro]”); Ex. 1046, 49:18–20 (Dr. Feuerstein testifying that gyroscopes “can be used to detect angular velocity”); Ex. 1047 ¶ 47 (citing Ex. 1051, 170; Ex. 1053, 9) (Dr. Buehrer testifying that a person of ordinary skill in the art “would understand that gyroscopes are well-known inertial sensors that specifically detect rotational motion”). Thus, by a preponderance of the evidence, Petitioner has shown that Kalliola teaches the “orientation sensor to detect rotation of the mobile communication device” of this limitation.” slip op. at 17
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“whether Kalliola’s teaching of pausing and resuming its DoA estimation based on detected rotational motion, or Kalliola’s teaching of speeding up its DoA estimation based on detected rotational motion, amounts to determining direction based on rotation. Pet. 63–64; PO Resp. 25–27; Reply 24–27; Sur-Reply 11–14. On the record developed during trial, we are persuaded that the preponderance of the evidence supports a finding that Kalliola teaches determining direction based on rotation. First, Kalliola discloses “pausing a DoA estimation until the motion of the WCD is detected by the motion sensors,” then resuming “the updating of the DoA estimation” when motion is detected. Ex. 1004 ¶¶ 14, 84. Second, Kalliola discloses a “correction or compensation mode” that is “employed when user 110 moves WCD 100 too quickly for an accurate DoA estimation,” with this “increase[d] speed of the DoA estimation” being triggered by the “[i]ncreased activity detected by motion sensors in WCD 100.” Id. ¶ 86. As discussed above with respect to limitation 11(d), the detected motion that triggers either of these modes can be rotational motion of the WCD detected by a gyroscope.” slip op. at 22
Patent outcomesUS 11,350,246 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,350,246 - Innoscience (Zhuhai) Technology Company, Ltd. / Innoscience America, Inc. v. Efficient Power Conversion CorporationAll claims unpatentablePTAB · Mar 25, 2025 · IPR2023-01384 · APJ Jeffrey W Abraham · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Yoshida and Saxler; the Board did not reach the alternative grounds.
RulingsFinal written decision- Skill levelOther
“In light of the record before us, we determine that we do not need to reach a specific finding regarding the level of ordinary skill in the art. See 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”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In the Institution Decision, we declined to adopt Petitioner’s proposed construction of the “side surfaces” limitation and determined that it was not necessary to further construe this term because “[t]he parties do not dispute that the language ‘side surfaces extending horizontally’ encompasses a gate material with sloped side surfaces as depicted in Figure 5 of the ’335 patent.” Inst. Dec. 11–16 (citing Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). We invited the parties to address this limitation further during the course of this trial, but neither party provided additional evidence or argument regarding the “side surfaces” limitation. Inst. Dec. 16; see generally PO Resp.; Reply; Sur-reply. Accordingly, we maintain our determination from the Institution Decision that we do not need to construe the “side surfaces” limitation. Inst. Dec. 15– 16.” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“This evidence, particularly the language in the ’335 patent itself, undermines Patent Owner’s argument that “[t]he process for forming gate ledges using separate masks instead of the self-aligned process disclosed in the ’335 patent cannot produce ledges that are ‘substantially symmetric.’” PO Resp. 39 (emphasis added); see also PO Resp. 42–43 (arguing that a gate structure with ledges having substantially equal widths is “not achievable” without using a single photo-mask process). We have considered the evidence presented by Patent Owner and Dr. Schubert in support of Patent Owner’s arguments. PO Resp. 38–43; Ex. 2005 ¶¶ 49–51. We, however, are unable to discern sufficient evidence supporting a conclusion that using separate masks cannot produce ledges that are substantially symmetric, particularly when the ’335 patent suggests otherwise. See Ex. 1001, 4:60– 63 (referring only to the “possibility of misalignment”). Even if, as Patent Owner and Dr. Schubert contend, misalignment “naturally” occurs when using a two-mask process, that does not foreclose the possibility that the” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“It is well settled that “[a] reference does not teach away . . . if it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Furthermore, “teaching that a composition may be optimal or standard does not criticize, discredit, or otherwise discourage” slip op. at 31
Patent outcomesUS 10,312,335 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,312,335 - Billerud Aktiebolag (Publ) v. Westrock MWV, LLCSome claims unpatentablePTAB · Mar 12, 2025 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Final written decision
Claims 1, 2, and 4–22 are unpatentable as obvious; claim 23 was not shown unpatentable. Substitute claims 25–26 are allowed, while 24 and 27 are denied for lack of written-description support.
RulingsFinal written decision- Expert testimonyPetitioner expert discountedOther
“Exhibits 1013 and 1014 are also not admissible as expert testimony because Mr. Wirén is not “qualified as an expert by knowledge, skill, experience, training, or education.” Fed. R. Evid. 703. “To offer expert testimony from the perspective of a skilled artisan in a patent case—like for claim construction, validity, or infringement—a witness must at least have ordinary skill in the art. Without that skill, the witness’ opinions are neither relevant nor reliable.” Kyocera Senco Indus. Tools Inc. v. Int’l Trade Comm’n, 22 F.4th 1369, 1376–77 (Fed. Cir. 2022). Mr. Wirén does not meet our definition of a person of ordinary skill in the art. See Section II.B, supra. That definition is based on the undisputed testimony of Messrs. Zotterman and Klass. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. Although Mr. Wirén has a Master’s of Science in chemical engineering, he lacks any experience or specialization in paperboard manufacturing. Ex. 2011, 12:1–10, 19:6–25, 20:2–7. We therefore agree with Patent Owner that Exhibits 1013 and 1014 are the testimony of Mr. Wirén and should be excluded from evidence because Mr. Wirén is not a person of ordinary skill in the relevant art. PO MTE 5–6, 9; Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008) (“Unless a patent lawyer is also a qualified technical” slip op. at 61
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art Based on the testimony of the parties’ witnesses, we determine that a person of ordinary skill in the art would have had a bachelor’s degree in paper science and engineering, chemical engineering, process engineering, mechanical engineering, or a related degree, with three to five years of experience in paperboard manufacturing, or a master’s degree in paper science and engineering, chemical engineering, process engineering, or mechanical engineering, or a similar field with a specialization in paperboard manufacturing. Ex. 1003 ¶ 24; Ex. 2003 ¶ 26. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’142 Patent Specification and the asserted prior art references.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“A claim construction that excludes a particular element is viewed as a “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, we find no claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Petitioner shows persuasively that the temperature limitation is taught by the combination of Fugitt and Papermaking. Pet. 32–34. Fugitt discloses that “[t]he rolls of the calender may be steam heated.” Ex. 1004 ¶ 26. In a section titled “Heated Rolls,” Papermaking discloses that “Steam can be used up to 170°C [338°F] surface temperature.” Ex. 1010, 95, 98. Petitioner is thus correct that, “[w]hile Fugitt teaches that a hot calender may be steam heated, Papermaking clarifies that one of ordinary skill in the art would understand that steam heated thermo-rollers may reach up to 338°F.” Pet. 36. Based on these disclosures, we are persuaded by Mr. Zotterman’s testimony that it would have been “obvious to heat the thermo-roller of Fugitt to at least 250°F.” Ex. 1003 ¶ 159. combine Fugitt and Papermaking because of Papermaking’s status as a “trusted handbook[],” because both references disclose a method of manufacturing a paperboard structure with hot calendering,” and “because of the known advantages of heated rollers.” Pet. 36–37; Ex. 1003 ¶¶ 157, 159, 162. Petitioner’s contention is supported by Papermaking’s disclosures that, for cartonboard, “[p]recalendering is used before the coater to reduce roughness and porosity” and “[h]igh thermo roll temperatures (in some cases over 200°C) result in bulk savings because of the temperature gradient.” Ex. 1005, 80–82; see also Pet. 38; Ex. 1003 ¶ 164 (citing these disclosures). Papermaking’s disclosed range of “up to 170°C [338°F]” for steam- heated rolls (Ex. 1010, 98), overlaps the claimed range of “at least 250°F.” Patent Owner agrees. Tr. 27:11–13. “If the relevant comparison between a disputed claim limitation and the prior art pertains to a range of overlapping values, ‘. . . even a slight overlap in range establishes a prima facie case of obviousness.’” Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1341 (Fed. Cir. 2020) (citing In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). “[S]uch an overlap creates a presumption of obviousness, and . . . the burden of production falls upon the patentee to come forward with pertinent evidence that the overlapping range would not have been obvious in light of the prior art.” Id. (citing E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006, 1008 (Fed. Cir. 2018)). slip op. at 21
Patent outcomesUS 11,293,142 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 11,293,142 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22
- Strike new argumentNew argument consideredDecided for petitioner
“Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25
Patent outcomesUS 9,008,483 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,008,483
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.