• Uatp IP LLC v. Slick Slide LLCSome claims unpatentable
  PTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision

  Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20

  Patent outcomesUS 11,998,854 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 11,998,854
• Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentable
  PTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision

  Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22

  Patent outcomesUS 11,333,007 mixed
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 11,333,007
• Tanklogix, LLC v. Sitepro, Inc.Institution denied
  PTAB · Oct 10, 2025 · IPR2025-00652 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–23 and 25–30 were unpatentable over the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’403 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 10; Prelim. Resp. 4 (citing Ex. 2009 ¶ 73); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses element [1.2] because the evidence cited does not disclose a “first computer system being configured to provide remote control of the first pump or first valve” (i.e., a fluid-handling device). Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but Petitioner has not identified any disclosure of the capability to remotely control fluid-handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, Kahn’s disclosures that Petitioner relies on for allegedly teaching remote control are deficient. We discuss each. First, Petitioner points to the following, “[f]or instance, as illustrated in FIG. 1C, a fluid control device such as a valve 15A is located on the input side of a sen[s]or unit 110.” Ex. 1005, 8:19–21, cited in Pet. 13. This portion of Kahn, however, does not disclose remote control. Second, Petitioner cites to the following: Finally, or in addition to, the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance. Pet. 13 (citing Ex. 1005, 10:62–67). We agree with Patent Owner that this portion of Kahn teaches on-site alerts and local control of the fluid-handling device. See Prelim. Resp. 7. This portion of Kahn does not disclose remote control.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,294,403
• Tanklogix, LLC v. Sitepro, Inc.Institution denied
  PTAB · Oct 10, 2025 · IPR2025-00651 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–3, 6, 7, and 9–20 were unpatentable over any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’680 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “target value” is part of a command that is sent from a computing device to a server and then to a controller. The controller then receives a measurement of the fluid by a sensor and determines whether the measurement satisfies the “target value.” If the measurement does not satisfy the “target value,” further operations are undertaken. The recited operation sequence makes clear that the plain and ordinary meaning of “target value” is not as Dr. Wooley opines because the particular operating condition that a device is in at a particular time is represented by the measurement taken by the sensor, 11 Some claim language less relevant to construing “target value” was omitted for ease of reference. which the controller then uses to determine whether the measurement satisfies the “target value.” Additionally, claim 1 recites that the “target value” is sent as part of a command to the controller. The “target value” is not sent to the controller from the sensor, as might be expected if the plain and ordinary meaning of “target value” were as Dr. Wooley opines. Petitioner and Dr. Wooley’s construction would also result in “target value” meaning effectively the same thing as the measurement of the fluid by the sensor, a concept that is separately recited in claim 1 and to which the “target value” is compared. The Specification of the ’680 patent does not support Petitioner’s understanding of the plain and ordinary meaning of “target value.” Although the Specification does not recite “target value,” it recites “target state,” and describes “target state” sufficiently to understand the plain and ordinary meaning of “target” as used in “target value” and “target state.” In particular, the ’680 patent explains that “[i]n some embodiments, the process 104 includes receiving, via a network interface, from a remote user device, (e.g., via a command-center server) a command to change a state of a fluid-handling device to a target state.” Ex. 1001, 11:48–51. This portion reflects that the command is seeking to change a state of a fluid-handling device to a target state. In other words, the “target value” or “target state” is not generally “the particular operating condition that a device is in at a particular time”; rather, it is a value or state that the fluid-handling device is desired to be in, as Patent Owner and Dr. Durham explain. Additionally, just as claim 1 recites a directional component for the “target value” to be sent to the controller in a command, so too does the Specification describe a “target state” as being sent in a command from a remote user device. Thus, the Specification clearly supports the plain and ordinary meaning proposed by Patent Owner and Dr. Durham and not the plain and ordinary meaning proposed by Petitioner and Dr. Wooley. slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “time-stamped process data, report exception therein to the remote host, and extract and transmit time-stamped process data to the remote host.” Ex. 1005, Abst. (emphases added). Almadi explains that its remote field systems must include a plurality of controller units “to issue commands to, and gather and process data from a plurality of field devices, including remote systems and instruments, . . . [and] a database server for the storage of process data retrieved from the remote subsystems and instruments.” Id. at 2:22–30 (emphases added). Based on these disclosures, we agree with Patent Owner that Petitioner has not established that Almadi discloses element [1.4]. Specifically, the teachings from Almadi identified by Petitioner refer to process data, which is data retrieved from the remote subsystems/field devices. Thus, we understand that Almadi’s teaching—of using an Ethernet switch to transmit “process data”—describes transmitting data from the remote subsystems/field devices. See Ex. 1005, 3:13–17, cited in Pet. 15. But claim 1 and particularly element [1.4], recites “sending, with the server, the target value to the network address [which identifies a controller of the fluid-handling device13] via the network,” which is different than sending process data from the field devices to the remote host or database server for storage.” slip op. at 19

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,175,680
• Foil Boarding Company, Inc. v. MHL Custom, Inc.Instituted
  PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution

  The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “We disagree with Patent Owner. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR
  Patents in suitUS 9,586,659
• Resmed, Inc. v. New York UniversityAll claims unpatentable
  PTAB · Dec 4, 2023 · IPR2022-00989 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 2, 5–11, 13, and 15–30 are unpatentable as obvious over Sullivan995 and Sullivan460; anticipation was not shown, and the other obviousness ground was not reached.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person of ordinary skill in the art would have had “at least a bachelor’s degree in mechanical engineering, biomedical engineering, or a similar technical field, with at least two years of relevant product design experience” and “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶ 77). Petitioner further states that the “Petition does not turn on this precise definition, and the challenged claims would be unpatentable from the perspective of any reasonable person of ordinary skill in the art at the relevant time.” Id. (citing Ex. 1003 ¶ 78). Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. PO Resp. 15–16. We find that the ’539 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’539 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “awake state” Claim 24 recites, in part, “to determine whether breathing patterns indicate an asleep state or an awake state.” Ex. 1001, 11:36–12:7; see also id. at 9:49–64 (claim 1 reciting “between an awake state and an asleep state”), 10:42–56 (claim 11 reciting “at least one of an awake state or an asleep state”). In regard to its allegations of obviousness, Petitioner’s arguments suggest an “awake state” ordinarily means when a patient is not asleep. Pet. 36–37, 42. By contrast, with regard to its allegations of anticipation, Petitioner argues that under Patent Owner’s “implied construction of ‘an awake state’ based on [Patent Owner’s] infringement allegations” in district court, “the patient is in an awake state when there is an absence of obstructions or other breathing patterns indicative of sleep.” Id. at 68–70 (citing, e.g., Ex. 1018 ¶¶ 2, 158, 159). Petitioner provides no further support for this “implied construction” purportedly taken from Patent Owner’s district court allegations. Id. Dr. Kirkness, in support of Petitioner, applied the plain meaning of all terms and phrases. See, e.g., Ex. 1003 ¶ 80. In regard to supporting Petitioner’s allegations of anticipation, Dr. Kirkness merely assumed Patent Owner’s purported district court claim construction “position to be true.” Ex. 1003 ¶ 253. In this proceeding Patent Owner does not propose an express meaning for “awake state.” See PO Resp. 29–33. More generally, Patent Owner states that the ’539 patent “teaches how to distinguish between an awake state and an asleep state.” Id. at 8. From the arguments of the Parties, we discern no dispute in this proceeding that a plain and ordinary meaning of an “awake state” is a state in which a patient is not asleep. See Ex. 1001, 3:1–5 (distinguishing between “a wake state” and “a sleep state”), 7:22–24 (describing an embodiment with a processing arrangement that “may determine whether the patient is in a sleep state or a wake state based on the breathing pattern”).8 We apply the plain and ordinary meaning of “awake state” in this proceeding and further determine that Petitioner has not shown by a preponderance of the evidence that an awake state means “an absence of obstructions or other breathing patterns indicative of sleep.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “Next, we turn to the Specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs., 755 F. 3d at 1371 (citation omitted). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. In order for a patentee to act as its own lexicographer, the “patentee must ‘clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning’” and “must ‘clearly express an intent’ to redefine the terms.” Bradium Tech., 923 F. 3d at 1044. In this case, Patent Owner does not argue that it disavowed the full scope of the plain and ordinary meaning of claim 24, nor does Patent Owner argue that it explicitly defined “analyzing the breathing patterns” in the Specification. See, e.g., PO Resp. 29–32. We determine that there is no disavowal nor any explicit lexicographic definition of “analyzing the breathing patterns” in the Specification. Patent Owner instead relies on an “implied lexicography” theory as to why we should construe the phrase as Patent Owner proposes. PO Sur-reply 2, 6–7 (citing, inter alia, AstraZeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1339 (Fed. Cir. 2004)). We disagree.” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We disagree with Patent Owner’s arguments—that Petitioner fails to show any motivation to combine and that Sullivan460 is not enabled— merely because Dr. Kirkness indicated in a deposition that he did not know how a preset level is calculated from a sentence in Sullivan460. As Petitioner explains, enablement “is not a requirement to prove invalidity under §103.” Amgen, 314 F.3d at 1357 (under §103, “a reference need not be enabled; it qualifies as a prior art, regardless, for whatever is disclosed therein”). Moreover, we agree with Petitioner that the Challenged Claims do not require any preset level for a flow rate, and a person of ordinary skill “would have understood that a preset level is established from previously-acquired data or data from a previous window of time, such as an average level, for example, as taught in Sullivan995.” Pet. Reply 15 (citing Ex. 2014, 38:2–16; Ex. 1005, 17:3–27, Fig. 12). Patent Owner responds that Petitioner’s assertion is unsupported, and that “Petitioner is obligated to address this challenge, and failed to do so.” PO Sur-reply 18–19 (citing In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013)). We find Petitioner’s arguments persuasive because they are supported by the asserted references. Sullivan995 discloses that the computing system may “calculate control values of patterns for each patient based on moving average values or such values or patterns will be pre-programmed into the computing system.” Ex. 1005, 17:14–18. According to Sullivan995, when “signals deviate from predetermined values or patterns the computer system generates a signal which is sent to the feedback speed controller on the blower motor.” Id. at 17:19–22. Based on this disclosure, and given that Sullivan460 incorporates Sullivan995 by reference, we agree with Petitioner that Sullivan460’s disclosure of detecting that the flow rate has fallen below a preset level would have informed a person of ordinary skill that this level was predetermined, so that “the controller 100 activates the nCPAP apparatus 90 to supply air to the patient 30 at a pressure which ameliorates or eliminates the upper airway flow limitation.”16 Ex. 1006, 10:17–21.” slip op. at 50

  Patent outcomesUS 9,427,539 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,427,539
• Logan Outdoor Products, LLC, D/B/A Camp Chef v. Lifetime Products, Inc.Institution denied
  PTAB · Mar 22, 2023 · IPR2022-01467 · APJ Robert L Kinder · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable under the asserted anticipation and obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “Based on the record before us, Petitioner has not shown sufficiently how Dahle’s distinct embodiments would have been combined to teach each limitation of claims 1, 10, and 15. First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disagrees with the Petitioner’s statements regarding a person of ordinary skill in the art, but does not provide a proposed alternative. See Prelim. Resp. 14. Patent Owner further notes that the disagreement does not have any bearing on its contentions. Id. The level of ordinary skill in the art can be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)

    “First, Petitioner has not established sufficiently that insert 26, which is capable of burning charcoal or other burnable elements, discloses the claimed “wood pellet heat source.” Ex. 1004 ¶¶ 34, 42. Dahle’s insert 26 is designed to hold charcoal or similar burnable elements, and Petitioner does not explain how the insert discloses a wood pellet heat source. Dr. Stevick testifies that “[p]ellet grills are the types of grill that integrate the use of wood smoking in place of gas burners or charcoal to cook food.” Ex. 1003 ¶ 58 (emphasis added). Dr. Stevick explains that pellet grills may utilize a pellet reservoir that feeds pellets to an auger, which then transports them to a pellet burner, also referred to as a fire pot. Id. ¶ 62; see also Ex. 1001, 2:51–53 (“The wood pellet burner may include a cylindrical structure configured to receive wood pellets from the wood pellet reservoir via an auger.”). But none of this explains why Petitioner believes that Dahle’s insert 26 (depicted below in Figure 3) is a wood pellet burner.” slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found

    “Petitioner first observes that both references are directed to dual-fuel grilling systems that utilize both gas burners and wood pellet burners. Pet. 93. Even presuming this to be true, it does not provide a rational basis for modifying Sauerwein as proposed on its own; it is merely an observation that the references are analogous art. The mere fact that two references may be analogous art, however, is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Petitioner next states that Dahle teaches that dual-fuel source grills can be configured for different purposes. Pet. 93–94. Although we generally agree with this statement, it does not explain why a person of ordinary skill in the art would have considered it obvious to add a burner or shorten Sauerwein’s cooking surface and also move its wood pellet heat source directly below the gas heat source.” slip op. at 30

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,292,531
• Meta Platforms, Inc. v. Thales Visionix, Inc.Instituted
  PTAB · Mar 13, 2023 · IPR2022-01303 · APJ Bart A Gerstenblith · IPR · Institution

  Instituted review of claims 2, 4–7, 9, 11–13, 45–48, 50, and 54–59 on all grounds; the Board found a reasonable likelihood that claim 54 was obvious over Gottschalk and Kramer.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, which includes Petitioner’s strong showing regarding claim 54 and Patent Owner’s weaker evidence of nonobviousness, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Gottschalk and Kramer would have rendered the subject matter of claim 54 of the ’068 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Additionally, the Director recently clarified the Interim Procedure, stating that “[t]he Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (PTAB Feb. 27, 2023) (precedential). Here, we determine that, on balance, Fintiv factors 1–5 do not favor exercising our discretion to deny institution and, therefore, there is no need to determine whether the Petition establishes compelling merits. 7. Conclusion on Fintiv Factors Upon consideration of the Fintiv factors, we determine not to exercise our discretion to deny institution.” slip op. at 19

  • Parallel petitionsDenied

    “sufficiently address the challenged claims” of the ’068 patent. Notice 1. According to Petitioner, Gentex asserted a large number of claims in the parallel litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “B” and the Petition in IPR2022-01302 as “A.” Id. at 1–2. Petitioner also explains its reasoning for the grouping of the claims challenged in each petition and that the only overlap between the two petitions is claim 1, from which a large number of claims depend. Id. at 2–3. Patent Owner did not file a response to the Notice. Nor did Patent Owner otherwise dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims asserted in the related litigation. See PTAB Consolidated Trial Practice Guide, 59 (Nov. 2019)10 (recognizing that one circumstance in which more than one petition may be necessary is when a patent owner asserts a large number of claims in related litigation).” slip op. at 19

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, or an equivalent field, and three to five years of experience working with computer implemented tracking systems. Additional education might compensate for less experience and vice-versa.” Pet. 25 (citing Ex. 1005 ¶ 48). Patent Owner states that “[f]or purposes of responding to [Petitioner’s] Petition for [inter partes review], Patent Owner accepts [Petitioner’s] proposed person of ordinary skill in the art.” Prelim. Resp. 6. Patent Owner further states, “[h]owever, for any other purpose, Patent Owner disagrees with [Petitioner] at least that such [person of ordinary skill in the art] would be limited to a maximum of five years of experience.” Id. And, Patent Owner further “reserves the right to offer an alternative definition based on expert evidence in the event the Petition is instituted.” Id. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’068 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR
  Patents in suitUS 6,757,068
• Meta Platforms, Inc. v. Thales Visionix, Inc.Instituted
  PTAB · Mar 13, 2023 · IPR2022-01298 · APJ Arthur M Peslak · IPR · Institution

  The Board instituted IPR on claims 1, 2–12, 16–18, and 38 on all petitioned grounds, finding a reasonable likelihood that claim 1 would be obvious over Gottschalk and Kramer.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “Memo states that it may be useful to compare a trial date with evidence of a median time to trial. Director’s Memo 8. The purpose of doing so is to ascertain the likelihood of the scheduled trial date actually occurring on or around that date. Id. at 8 (“Stakeholders correctly noted that scheduled trial dates are unreliable and often change[,]” and a “scheduled trial date . . . is not by itself a good indicator of [when] the district court trial will occur.”). The Director’s Memo does not state that median time-to-trial statistics are themselves a trial date, or otherwise replace consideration of a trial date under Fintiv factor 2. And, in the circumstances here, where the case was transferred from the Western District of Texas, the usefulness of the median time to trial statistics is less clear. Ultimately, though, we will not speculate on when a trial may be scheduled. Accordingly, factor 2 favors not exercising our discretion to deny institution.” slip op. at 11

  • Parallel petitionsDenied

    “sufficiently address all the challenged claims” of the ’648 patent. Not. 1. According to Petitioner, “Patent Owner, via an exclusive licensee,” asserted a large number of claims in co-pending litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “A” and the Petition in IPR2022-01301 as “B.” Id. at 1–2.” slip op. at 14

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, which includes Petitioner’s strong showing regarding claim 1 and Patent Owner’s weaker evidence of nonobviousness, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Gottschalk and Kramer would have rendered the subject matter of claim 1 of the ’648 patent obvious to one of ordinary skill in the art at the time of the invention. 6. Summary of Claim 1 For all the foregoing reasons, we determine that Petitioner has shown a reasonable likelihood that claim 1 would have been obvious over the combined teachings of Gottschalk and Kramer.” slip op. at 37

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had a bachelor’s degree in computer science, or an equivalent field, and three to five years of experience working with computer implemented tracking systems, virtual reality systems, and/or augmented reality systems” but that “[a]dditional education might compensate for less experience and vice-versa.” Pet. 24–25 (citing Ex. 1005 ¶¶ 48–49). For purposes of this proceeding, Patent Owner does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 6. Patent Owner further states, “[h]owever, for any other purpose, Patent Owner disagrees with Petitioner at least that such [person of ordinary skill in the art] would be limited to a maximum of five years of experience.” Id. at 6. And, Patent Owner further “reserves the right to offer an alternative definition based on expert evidence in the event the Petition is instituted.” Id. For the purposes of this Decision, we apply Petitioner’s proposed level of skill in the art because it appears consistent with the problems addressed in the ’648 patent and the prior art.” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,301,648
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Ryan Hardin And Andrew HillInstituted
  PTAB · Feb 8, 2023 · IPR2022-01335 · APJ Arthur M Peslak · IPR · Institution

  The Board instituted IPR on claims 19, 20, and 37–52 based on the §103 combination of Hardin and Salmre, finding a reasonable likelihood of prevailing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the arguments presented in the Preliminary Response, as well as all supporting evidence, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’447 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all Challenged Claims of the ’447 patent on the ground stated in the Petition.” slip op. at 3

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther

    “(1) Petitioner asserts that substantially the same two claim limitations lack written description support in the ’094 application and U.S. Patent Application No. 13/856,392 (“the ’392 application”) (compare Pet. 23–29, with IPR2022-01333, Paper 4 (petition) at 23–28); (2) Petitioner asserts that because these limitations lack written description support in the ’094 and ’392 applications, the Challenged Claims are not entitled to the priority date of either of these applications and, therefore, Hardin ’665 (the pre-issuance publication of the ’094 application) is available as prior art to the Challenged Claims (compare Pet. 1, 2, 28–29, with IPR2022-01333, Paper 4 at 1, 2, 28–29);” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “(3) Petitioner asserts that the same combination of references— Hardin ’665 and Salmre—would have rendered the subject matter of the claims challenged in each petition obvious to one of ordinary skill in the art at the time of the invention (compare Pet. 29–64, with IPR2022-01333, Paper 4 at 29–66); (4) Petitioner asserts the same reasons with rational underpinning as to why one of ordinary skill in the art would have been motivated to combine the teachings of Hardin ’665 and Salmre as proposed with a reasonable expectation of success (compare Pet. 65–71, with IPR2022-01333, Paper 4 at 66–71);” slip op. at 15

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “that we should exercise our discretion to deny institution pursuant to 35 U.S.C. § 314(a) and Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (compare Prelim. Resp. 61–66, with IPR2022-01333, Paper 9 at 61–66);” slip op. at 16

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips
  Patents in suitUS 10,984,447

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.