- PTAB · Jan 28, 2025 · IPR2024-01078 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–6, 11–15, and 38–43 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Schröder and Mestas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–6, 11–15, and 38–43 based on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In view of the parties’ arguments and evidence, we do not agree with Patent Owner’s characterization of Mestas as cumulative. Noting that the Office allowed claims of the ’686 Application over U.S. Patent Application Publication No. 2013/0106603 (Ex. 2006, “Weast”), Patent Owner argues that Mestas discloses the same wristband as Weast. Prelim. Resp. 10–12, 58. Patent Owner overlooks that the Office’s consideration of Weast in the prosecution of the ’686 Application occurred after the ’953 patent issued, which does not show consideration of Weast’s or Mestas’s wristband configuration in the allowance of the ’953 patent’s claims. Ex. 2009, 1, 3; Ex. 1001, code (45); Prelim. Resp. 10–12, 58.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (Ex. 1002 ¶ 29). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See Prelim. Resp. 12. Based on the testimony of Dr. Anthony, we agree with Petitioner’s stated understanding of the level of ordinary skill in the art. Ex. 1002 ¶ 29. 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 ’953 Patent Specification and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner expresses that it “does not believe that any term requires express construction.” Pet. 8. Patent Owner does not dispute this assertion. See generally Prelim. Resp. At this stage, we need not and do not construe expressly any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,281,953 - PTAB · Dec 12, 2024 · PGR2024-00039 · APJ Elizabeth M Roesel · PGR · Institution
The Board instituted PGR on claims 1–17, finding the Schröder obviousness challenge to claim 1 met the institution threshold; it did not reach the remaining challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the parties’ arguments and evidence, we determine that Petitioner’s showing for the printed circuit board of claim element 1[c], as summarized above, is sufficient for purposes of granting institution of a post-grant review. For purposes of institution, Petitioner’s contentions are adequately supported by Schröder, which describes inlay 12 as a “flexible carrier material, e.g. PET, Kapton, etc.” and a “carrier” for the antenna, chip module, and “at least one further electronic component,” as well as Schröder’s Figures 7 and 8, which depict inlay 12 between ring halves 16 and 18. Ex. 1007, 12:28–42, 12:48–52, 12:61–65, 13:23–25. We have considered Patent Owner’s argument that Schröder’s inlay 12 “is merely a substance for holding the coil in place, not a printed circuit board,” as well as Patent Owner’s argument contrasting Schröder’s description of inlay 12 with the express disclosure of “a circuit on a circuit board” elsewhere in the reference. Prelim. Resp. 29–30 (emphasis omitted; citing Ex. 1007, 8:57–59, 22:48–50; Ex. 20119). These arguments raise a serious issue about whether a POSITA would have understood Schröder’s inlay 12 as teaching a printed circuit board. This issue would benefit from further development at trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“E. Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. 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 ’702 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 7; Prelim. Resp. 21.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,874,702 - PTAB · Dec 6, 2024 · PGR2024-00030 · APJ Elizabeth M Roesel · PGR · Institution
Instituted PGR of claims 1–10 and 12–18; Petitioner met the institution threshold for claim 1 based on obviousness over Schröder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In applying § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal experience, and vice versa. Ex. 1002 ¶ 21. 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 ’178 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 8; Prelim. Resp. 25.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“Petitioner relies on Dr. Anthony’s testimony that a POSITA would have understood Figures 6–8 as showing a cavity as recited in claim 1 and the battery must be arranged within that cavity because “[o]therwise, if the battery did not fit within the ‘finger-ring,’ the ‘finger-ring’ either has (1) a battery that sticks out or is exposed to the environment or (2) a wired connection to power its components, which is contrary to the intent of having a portable, wearable device.” Ex. 1002 ¶ 166. Dr. Anthony opines that “[a] POSITA would have understood that the battery’s location within the cavity is the ‘first portion’ of the cavity because the battery necessarily occupies space in the cavity.” Id. ¶ 168. Such testimony, when viewed along with the rest of Petitioner’s showing, provides sufficient basis for institution.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,868,178 - PTAB · Dec 3, 2024 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2003). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’109 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner has stipulated as follows: Petitioners stipulate that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 8,982,109 on the grounds presented in the petition in IPR2024-00856, Petitioners will not pursue an invalidity defense in district court that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Paper 13 (Updated Mandatory Notices), 1 (citing Ex. 1044). We determine that this stipulation is consistent in scope with the stipulation in Sotera Wireless cited approvingly in the Guidance Memo. Consistent with the Guidance Memo, therefore, we decline to exercise our discretion to deny institution under Fintiv in view of the parallel district court proceeding.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, a person of ordinary skill in the art “as of December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶¶ 65–67). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard. The prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 13. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms and phrases necessary to our decision. See, e.g., 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy. To the extent further clarification or explanation of any claim term is necessary for this Decision, we will do so in the context of our analysis of that term infra.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,109 - PTAB · Nov 26, 2024 · IPR2024-00810 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 was obvious over Rosenberg and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).9 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on all of the parties’ arguments and evidence, Petitioner demonstrates a reasonable likelihood of establishing that claim 1 of the ’110 patent would have been obvious over Rosenberg and Park. Pet. 18–19, 52–73, Prelim. Resp. 6–8, 14–18. In the following sections, we discuss in detail the parties’ current disputes regarding Petitioner’s position that claim 1 would have been obvious over Rosenberg and Park.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 8 (citing Ex. 1003 ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard” and that “[t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 10. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe only those claim terms and phrases necessary to our decision. See, e.g., 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,110 - Lifecore Fitness, LLC D/B/A Assault Fitness v. Woodway USA, Inc.Some claims unpatentablePTAB · Oct 24, 2024 · IPR2023-00849 · APJ Amee A Shah · IPR · Final written decision
Claims 1, 4, 7–12, 14, 17, and 21–25 are unpatentable as obvious; claims 18, 20, 26, and 27 were not shown unpatentable.
RulingsFinal written decision- Prior constructionPrior construction adoptedOther
“1. “safety device” For the ’745 patent, the District Court construed “safety device” as “a” slip op. at 20
- Skill levelOther
“B. LEVEL OF ORDINARY SKILL IN THE ART In determining the level of ordinary skill in the art, various non-” slip op. at 17
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusNot shown unpatentable
“5. Objective Indicia of Nonobviousness a) Legal Standards Objective evidence of non-obviousness “may often be the most probative and cogent evidence in the record” and “may often establish that an invention appearing to have been obvious in light of the prior art was not.” Transocean, 699 F.3d at 1349. Thus, notwithstanding what the teachings of the prior art would have suggested to one skilled in the art, objective evidence of nonobviousness (or “secondary considerations”) may lead to a conclusion that the challenged claims would not have been obvious. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). Thus, our obviousness analysis includes consideration and weighing of Patent Owner’s indicia of nonobviousness.” slip op. at 72
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“cited by Petitioner, we find that on this record, Petitioner has demonstrated by a preponderance of evidence obviousness of claims 1, 4, 7–12, 14, 17, and 21–25 but has not demonstrated by a preponderance of evidence obviousness of claims 18 and 20 based on Socwell, Magid, and Sclater.” slip op. at 82
Patent outcomesUS 10,799,745 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,799,745 - Google LLC v. Dialect, LLCInstitutedPTAB · Oct 23, 2024 · IPR2024-00753 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR of claim 12, finding a reasonable likelihood it would be unpatentable as obvious over Kennewick and Ross.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating discretionary denial under § 325(d), the Board follows a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). The Advanced Bionics framework is further informed by the factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”).2” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not oppose Petitioner’s formulation of the level of ordinary skill in the art. See Prelim. Resp. generally. For purposes of this Decision, we are satisfied that Petitioner’s formulation of the level of ordinary skill in the art generally comports with the level of skill necessary to understand and implement the teachings of the ’160 patent and the asserted prior art, so we apply that formulation here.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On this record, we agree with Petitioner that the similarities of Kennewick and Ross to the ’160 patent and the efficiency that would be obtained by using Ross’s technique of storing contexts of most-recently-accessed applications would have led a POSITA to combine the references. Ross expressly states that “[t]he goal is to provide multiple-application support relatively quickly,” meaning Ross’s technique seeks to be more efficient. Ex. 1005 ¶ 35. Although Patent Owner argues that Kennewick’s context scoring system is different from what Patent Owner characterizes as Ross’s “first-tomatch” system, on this record, we agree with Petitioner that Ross fits well with Kennewick’s teachings, or, as Petitioner puts it, “picks up where Kennewick leaves off.” Pet. 37 (citing Ex. 1002 ¶ 76). Specifically, Kennewick describes matching text in a transcription, such as keywords and criteria, to grammar expressions, to identify contexts for scoring. Ex. 1002 ¶ 68 (citing Ex. 1004 ¶ 144). Kennewick discloses that possible contexts are scored and the top one or few are used for further processing. Ex. 1002 ¶ 78; Ex. 1004 ¶ 152. Kennewick further teaches that a follow-on question of a dialog may inherit key words and criteria from a stack. Ex. 1002 ¶ 78; Ex. 1004 ¶¶ 144–145, 166. Ross discloses that the most-recently-accessed context in a list will be the first context evaluated when processing the next utterance. Ex. 1002 ¶ 80; Ex. 1005 ¶ 35. On this record, we do not see these teachings as conflicting or” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,640,160 - Lifecore Fitness, LLC D/B/A Assault Fitness v. Woodway USA, Inc.Some claims unpatentablePTAB · Oct 22, 2024 · IPR2023-00843 · APJ Meredith C Petravick · IPR · Final written decision
Claims 30–34, 37–39, 41, 45–49, 57, and 59 are unpatentable under § 103 over Chickering, Magid, and Sclater; the remaining challenged claims were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“We do not adopt Patent Owner’s definition of the level of ordinary skill in the art because it is overly broad. During oral argument, Patent Owner clarified that its proposed level of ordinary skill includes a person with a mechanical engineering degree and no experience in the treadmill industry. See, e.g., Tr. 73:1–6. A POSA should have some knowledge related to treadmills as the ’884 patent and the prior art all relate to the field of treadmills. See generally Exs. 1001, 1009–1013; See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Both Petitioner and Patent Owner’s definitions encompass a person who has at least a degree in mechanical engineering degree. Pet. 5; PO Resp. 3–4. Petitioner’s definition additionally requires knowledge of exercise biomechanics, including anthropometry, and Patent Owner’s additionally requires knowledge of design, construction, testing, and operation of manual treadmills. Patent Owner argues that “any definition that requires a POSA to be a degreed engineer with ‘a demonstrated understanding of exercise biomechanics, including anthropometry’. . . — would necessarily exclude certain named inventions.” PO Sur-reply 2–3. We agree with Patent Owner that that experience and knowledge of treadmills is require, but the knowledge of exercise biomechanics is not. Ex. 2018 ¶ 70. Accordingly, we determine that a POSA would have a Bachelor’s of Science degree in mechanical engineering and at least one year of experience in the treadmill industry, including experience and knowledge of the design, construction, testing, and operation of manual treadmills overall.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “substantially prevent” The District Court construed “substantially prevent” as “restricts rotation to allow for only one rotational direction of movement.” Ex. 1033, 16. In this proceeding, we need not construe this claim term as there is no related dispute. 2. “safety device” For the ’884 patent, the District Court construed “safety device” as “a device that includes the elements recited [in the claims] and restricts rotation to allow for only one rotational direction of movement.” Ex. 1033, 23. Both parties indicate that we should adopt the District Court’s construction. PO Resp. 5; Pet. Reply 2. We, thus, construe “safety device” as “a device that includes the elements recited [in the claims] and restricts rotation to allow for only one rotational direction of movement We need not construe explicitly any other claim terms to reach our” slip op. at 13
- Prior constructionPrior construction adoptedDecided for patent owner
“2. “safety device” For the ’884 patent, the District Court construed “safety device” as “a device that includes the elements recited [in the claims] and restricts rotation to allow for only one rotational direction of movement.” Ex. 1033, 23. Both parties indicate that we should adopt the District Court’s construction. PO Resp. 5; Pet. Reply 2. We, thus, construe “safety device” as “a device that includes the elements recited [in the claims] and restricts rotation to allow for only one rotational direction of movement We need not construe explicitly any other claim terms to reach our” slip op. at 14
- Expert testimonyPatent owner expert discountedDecided for petitioner
“We find Patent Owner’s arguments and the testimony of Dr. Blair to be unpersuasive, because we do not agree that the claimed running surface is required to be a surface with which a runner’s feet are intended to make contact when using a treadmill. Dr. Blair testifies that “[a] POSA would understand a treadmill’s ‘running surface’ to be a surface that a runner’s feet would typically make contact when the user is running on the treadmill during normal use” and that, because a runner’s feet is not intended to contact the belt at the area where the forward rollers meet the rearward rollers, that area is not part of the running surface. Ex. 2018 ¶¶ 90–92. Dr. Blair’s testimony, however, contains no sufficient explanation to support his conclusion of what a POSA would understand by the term “running surface.” See id. ¶ 90. Further, Dr. Blair’s testimony is inconsistent with the language of claim 30. Claim 30 recites: “the running belt comprises a curved running surface.” Ex. 1001, 35:58–59. The language of claim 30 does not require the running belt’s running surface to only be portions that the runner typically or is intended to run upon. Dr. Blair’s testimony is also inconsistent with the ’884 patent which does not describe the running surface as being limited to the surface that a runner’s feet would typically make contact when the user is running on the treadmill during normal use. See generally id. The ’884 patent describes numerous examples of continuous running surfaces with a wide variety of” slip op. at 37
Patent outcomesUS 10,561,884 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,561,884 - Lifecore Fitness, LLC D/B/A Assault Fitness v. Woodway USA, Inc.Some claims unpatentablePTAB · Oct 22, 2024 · IPR2023-00836 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–12, 14, and 18 are unpatentable over the stated obviousness grounds; claims 15 and 25 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“skill in the art because it is overly broad. During oral argument, Patent Owner clarified that its proposed level of ordinary skill includes a person with a mechanical engineering degree and no experience in the treadmill industry. See, e.g., Tr. 73:1–6. A POSA should have some knowledge related to treadmills as the ’580 patent and the prior art all relate to the field of treadmills. See generally Exs. 1001, 1009–1013; See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Both Petitioner and Patent Owner’s definitions encompass a person who has at least a degree in mechanical engineering degree. Pet. 5; PO Resp. 3–4. Petitioner’s definition additionally requires knowledge of exercise biomechanics, including anthropometry, and Patent Owner’s additionally requires knowledge of design, construction, testing, and operation of manual treadmills. Patent Owner argues that “any definition that requires a POSA to be a degreed engineer with ‘a demonstrated understanding of exercise biomechanics, including anthropometry’. . . — would necessarily exclude certain named inventions.” PO Sur-reply 2–3. We agree with Patent Owner that that experience and knowledge of treadmills is require, but the knowledge of exercise biomechanics is not. Ex. 2018 ¶ 70. Accordingly, we determine that a POSA would have a Bachelor’s of Science degree in mechanical engineering and at least one year of experience in the treadmill industry, including experience and knowledge of the design, construction, testing, and operation of manual treadmills overall.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“1. “substantially prevent” The District Court construed “substantially prevent” as “restricts rotation to allow for only one rotational direction of movement.” Ex. 1033, 16. In this proceeding, we need not construe this claim term as there is no related dispute. 2. “safety device” For the ’580 patent, the District Court construed “safety device” as a means-plus-function claim limitation with corresponding structure being “a operated pin system, or a band brake system with a lever.” Ex. 1033, 17–22. Both parties agree that we should adopt the District Court’s construction. PO Resp. 5; Pet. Reply 2. We, thus, construe “safety device” to encompass “a one-way bearing assembly, a cam locking system, a taper lock, a user operated pin system, or a band brake system with a lever” and equivalents.” slip op. at 13
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed patent owner constructionDecided for patent owner
“Both parties agree that we should adopt the District Court’s construction. PO Resp. 5; Pet. Reply 2. We, thus, construe “safety device” to encompass “a one-way bearing assembly, a cam locking system, a taper lock, a user operated pin system, or a band brake system with a lever” and equivalents.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We are not persuaded by Patent Owner that either of Chickering or Magid teaches away from the combination proposed in the Petition — modifying Chickering’s single-belt embodiment to include Magid’s unidirectional control mean 6, 6’ (Pet. 41). Patent Owner points to differences between Chickering and Magid, but we are not persuaded that those differences – number of belts, use as a therapeutic device as opposed to a recreational exercise device, use of handles – would discourage a POSA from making the proposed combination. Ex. 1036 ¶¶ 57–59. slip op. at 28
Patent outcomesUS 9,039,580 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,039,580 - Duration Media LLC v. Rich Media Club LLCInstitution deniedPTAB · Oct 17, 2024 · IPR2024-00937 · APJ Michael J Fitzpatrick · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–14 were obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In sum, the Petition fails to demonstrate that the asserted prior art teaches, or renders obvious, the “causing a communication” limitation, let alone it being in response to the “determination” limitation. There is not a reasonable likelihood of Petitioner prevailing as to claim 1.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“page is in the visible area of the browser window.” Ex. 1001, 60:4–6. But nothing in the claim suggests that the determination is optional or that it need not ever occur. For example, the “in response to” limitation of claim 1 does not use the conjunction “if,” as was the case in Schulhauser. See 2016 WL 6277792, *3 (interpreting “triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria” such that “triggering an alarm state” only needs to be performed “if the electrocardiac signal data is not within the threshold electrocardiac criteria.”).7 In fact, the prior step (a) of claim 1 explicitly requires the determination, reciting: “(a) determining whether a predefined portion of the predefined area of the ad content display page is in the visible area of the browser window.” Ex. 1001, 60:1–3. As properly construed, the “in response to” language modifies the recited step of “causing a communication to be sent from the remote computing device to one or more dispatcher servers” such that the step must be “in response to a determination that the predefined portion of the predefined area of the ad content display page is in the visible area of the browser window.” Ex. 1001, 60:4–8. In other words, “causing a communication” is a required step of the method of claim 1.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for patent owner
“Patent Owner argues that a person having ordinary skill in the art also would have had “experience in the internet advertising industry” and urges us to adopt the same formulation as we adopted in the final written decision in IPR2023-00953. Prelim. Resp. 4. We agree with Patent Owner that the person of ordinary skill in the art would have had such experience. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). The difference between the parties’ proposals as to the person of ordinary skill in the art, however, is immaterial here. Thus, for purposes of deciding the Petition, we adopt Petitioner’s proposal.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“when the content area is visible.” (citing Ex. 1018, 10:16–18)); see also Ex. 1018, 5:11–14 (“In operation S202, the system identifies whether the event occurs. When the event occurs, the system performs operation S203, otherwise, the system waits for the event to occur. In this instance, the event may include a user enter event or a scrolling event.”). Whether a scrolling event occurs, however, does not satisfy the specific language of the claim reciting “a determination that the predefined portion of the predefined area of the ad content display page is in the visible area of the browser window.” Nor does the Petition explain how it might.” slip op. at 15
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 11,741,482
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.