- BTL Industries, Inc. v. Inmode Ltd.No claims unpatentablePTAB · Oct 1, 2025 · IPR2024-00703 · APJ Meredith C Petravick · IPR · Final written decision
Claims 1–58 were not shown unpatentable: the Edwards, Ingle, and Mosher combination fails to establish key limitations, and Ollivier was not shown to be a prior art printed publication.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We apply Patent Owner’s proposed definition, as it appears consistent with the field of the ’511 patent and the prior art and is consistent with testimony of Dr. Poulos and the cross-examination testimony of Dr. Berenholz. See Okajima v. Bourdeau, 261 F.3d 1350, 1355, (Fed. Cir. 2001) (the level of ordinary skill in the art may be reflected in the prior art itself); Ex. 2001 ¶¶ 35–39; Ex. 2005, 55:5–17, 57:17–58:19. In our view, however, Petitioner’s proposed definition is not so different that our decision would change if we were to apply Petitioner’s proposed definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner’s argument are persuasive. We agree with Patent Owner that a plain reading of the wherein clause requires the treating to begin at the introitus and extend at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. This construction is consistent with the ’511 patent’s Specification, which states: In typical embodiments, the length of the energy delivery element is about 1 to about 3 cm in length, in other embodiments it may be as long as about 4 cm. This is a length well adapted to treating the lower aspects of the vagina, wherein treatment by the method comprises contacting the vaginal epithelium in a region that extends from the introitus inward to a position about 3 to 4 cm inward from the introitus. In some embodiments of the invention, the method can b[e] practiced with a single row of parallel contract sites immediately inside the introitus. In other embodiments, the method may include deeper rows, or rows that overlap an initial row, while keeping the contact sites within the lower portion of the vagina. Ex. 1001, 3:28–40 (emphasis added); see also id. at 14:47–57. The ’511 patent Specification also states: “the portion of the vagina to be treated is a region between the introitus and a position located no further than about 3 to about 4 cm inward from the introitus.” Id. at 11:48–51 (emphasis added). Given the plain language of claim 1, consistent with the ’511 patent’s Specification, we construe “heating a portion of the vagina extending from the introitus inwardly to a location from 1 cm to 3.5 cm in from the introitus” to require heating a portion of the vagina beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus.” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Patent Owner’s arguments is persuasive. The cited portion of Mosher does not explicitly state the location of the treatment area. Ex. 1006 ¶ 74. In it Reply, Petitioner additionally points to paragraph 54 of Mosher, which states: “Preferably, the location of the treatment volume of endopelvic fascia will be disposed along a length of the urethra between the bladder neck and the external meatus so as to avoid injuring nerves.” Pet. Reply 14 (quoting Ex. 1006 ¶ 54). Petitioner argues that “[t]reating the vaginal wall adjacent to the mid-urethral region is within the claimed region of ‘from 1 cm to 3.5 cm in from the introitus.’” Pet. Reply 14–16. This, however, does not teach the claimed area beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. The Petition fails to show that either Edwards or Mosher discloses heating a portion of the vagina beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. In its Reply, Petitioner argues that it would have been obvious to modify Edwards to treat the area beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. See, e.g., Pet. Reply 2–4, 16–17 (citing Pet. 35). The Petition’s argument is unpersuasive because it is conclusory and does not adequately address Edwards’s use of a speculum. Pet. 35. The Petition includes no” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“In its Reply, Petitioner argues that it would have been obvious to modify Edwards to treat the area beginning at the introitus and extending at least the first centimeter into the vagina and up to 3.5 cm in from the introitus. See, e.g., Pet. Reply 2–4, 16–17 (citing Pet. 35). The Petition’s argument is unpersuasive because it is conclusory and does not adequately address Edwards’s use of a speculum. Pet. 35. The Petition includes no persuasive explanation as to why it would have been obvious to modify Edwards to use the treatment blade without the speculum. See Pet. 22–24, 35–36. We determine that Petitioner fails to meet its burden to show by a preponderance of the evidence that claim 1 is unpatentable over Edwards, Ingle, and Mosher.” slip op. at 26
Patent outcomesUS 8,961,511 not shown unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,961,511 - PTAB · Aug 25, 2025 · PGR2025-00028 · APJ George R Hoskins · PGR · Institution
The Board instituted PGR on claims 1–20 and all asserted grounds after finding claim 1 more likely than not unpatentable under § 101.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 324(a), the Director may not authorize a post-grant review unless the information in the petition, if unrebutted, “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons that follow, we institute a post-grant review as to claims 1–20 of the ’423 patent on all grounds of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art would have had “an educational background of, or practical experience equivalent to, a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately three years of experience with electronic payment systems, vending machine technologies, or distributed network systems,” where “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 20 (citing Ex. 1003 ¶¶ 20–26). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on the record presented, including our review of the ’423 patent and the types of problems and solutions described in the ’423 patent and cited 2 Petitioner states that it “takes no position on the proper priority date for the [c]hallenged [c]laims” and “uses the earliest possible priority date claimed, December 18, 2013,” for purposes of its asserted grounds. Pet. 14. prior art, we agree with Petitioner’s definition and apply it for purposes of this Decision. See, e.g., Ex. 1001, 1:42–2:21 (stating that “[t]he present application relates to the field of payment processing systems” and describing the functionality of payment accepting units in the “Background” section).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Interpretation We interpret each challenged claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b). Petitioner states that, “for purposes of [its] Petition, the Board need not construe any claim terms to resolve the parties’ disputes, and the claims should be given their ordinary and customary meaning.” Pet. 20. Patent Owner agrees that “[n]o constructions are necessary” to decide the issues disputed by the parties. Prelim. Resp. 2–3. We conclude that no express interpretation of any claim term is necessary to determine whether to institute a post-grant review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted) (emphasis added)).” slip op. at 8
- PTAB / AIA Trials › §315(e) estoppelNot reached
“For the reasons explained below, we conclude, on the merits and based on the current record, that Petitioner has shown that it is more likely than not that claim 1 is unpatentable as claiming patent-ineligible subject matter under 35 U.S.C. § 101. See Pet. 77–84. Accordingly, we need not determine at this time whether collateral estoppel applies based on the Board’s decision in PGR2021-00093. The parties, however, should address the issue in their papers during trial, with citations to relevant authority. In particular, the parties are encouraged to address (1) how the collateral estoppel requirement that the issue be “identical to one decided in the first action” applies in the context of an asserted ground under 35 U.S.C. § 101, and (2) the parties’ apparent disagreement as to whether collateral estoppel may be applied in such circumstances on a “limitation-by-limitation basis.” See Pet. 72, 75 (quoting Google LLC v. Hammond Dev. Int’l, Inc., 54 F.4th 1377, 1381 (Fed. Cir. 2022)); Prelim. Resp. 20–21; see also Kroy IP Holdings, LLC v. Groupon, Inc., – F.4th –, No. 2023-1359, 2025 WL 2178321, at *4 (Fed. Cir. Aug. 1, 2025) (Dyk, J., dissenting) (“In subsequent Board proceedings, it is well established that collateral estoppel applies to claims adjudicated by the Board to be unpatentable and also to ‘related claims that present identical issues of patentability,’ i.e., patentably indistinct claims. . . . ‘It is well established that patent claims need not be identical for collateral estoppel to apply.’” (citing MaxLinear, Inc. v. CF CRESPE LLC, 880 F.3d 1373, 1377 (Fed. Cir. 2018); Google, 54 F.4th at 1381)).” slip op. at 12
Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousnesscites Mayo · Bilski · Berkheimer · Enfish · Electric PowerPatents in suitUS 11,972,423 - PTAB · Jun 23, 2025 · PGR2025-00016 · APJ Eric C Jeschke · PGR · Institution
The Board instituted PGR on claims 4–14 on all asserted grounds, finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 324 (2024); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute a post-grant review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner and “notes that it substantially tracks” Patent Owner’s definition. Prelim. Resp. 19–20; see also id. at 20 n.7 (defining one of ordinary skill in the art as having “at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of machines, or have had equivalent knowledge and experience”). Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Patent Owner’s proposal is the same, except for use of the term “machines” instead of “vehicles.” Furthermore, Patent Owner does not argue at this stage of the proceeding that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“In contrast, we view the record at this stage as supporting an understanding of the “frame” in “mainframe” as a supporting structure. Patent Owner provides a dictionary defining “frame” as a “rigid supporting structure” (Prelim. Resp. 22 (citing Ex. 2009 at 3)), and Petitioner proposes “a supporting structure” based on that definition (see Pet. Reply CC Br. 3 (mistakenly citing Ex. 2007 rather than Ex. 2009)). Further, this dictionary definition does not contradict the “mainframe” described in the Specification or any other intrinsic evidence. See, e.g., Ex. 1001, Fig. 4, 2:44–45 (“FIG. 4 is a perspective view of a mainframe of a compact tool carrier.”); see also Phillips, 415 F.3d at 1322–23 (stating that judges may “rely on dictionary definitions when construing claim terms, so long as the dictionary definition does not contradict any definition found in or ascertained by a reading of the patent documents”).” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Patent Owner’s argument does not identify a deficiency in the Petition, however, because we did not adopt any part of Patent Owner’s proposed construction of “mainframe,” including the phrase “the body,” which serves as the starting point of Patent Owner’s argument here. See § II.C.3. Instead, we preliminarily construe “mainframe” under its plain and ordinary meaning as a primary supporting structure. Id. Limitation 4.2 makes clear that the “mainframe” supports the “loader.” The current record supports that at least the structures shaded in green and blue in the annotated version of Figure 1 of KR996 immediately above are the primary supporting structure for the loader (i.e., a “mainframe”)—i.e., when in operation, those structures provide the primary “weight-bearing frame supporting the loader unit 40” in KR996. Pet. 24 (“KR996’s mainframe includes the frame components of KR996 vehicle for supporting the attached loader unit 40 by providing structural or weight-bearing support when the vehicle is in operation.” (citing Velinsky Decl. ¶¶ 65–67)); Pet. 26–27 (stating that the “mainframe” are the “portions [that] are part of a frame or body making up the KR996 vehicle when in operation providing structural and weight-bearing support for the loader unit 40, in addition to support for other features such as the control station and drive mechanism” (citing Velinsky Decl. ¶ 67)); see, e.g., Ex. 1005, Figs. 7–9 (showing the vehicle of KR996 in operation). The testimony of Dr. Velinsky supports these positions, explaining that one of ordinary skill in the art would have understood the green and blue structures above as part of a “mainframe.” See Velinsky Decl. ¶¶ 66– 67, cited at Pet. 24–27. At this stage of the proceeding, Patent Owner has not presented declaration testimony—but rather only attorney argument— supporting that one of ordinary skill in the art would have identified fixture 41 in KR996 as something other than a “mainframe.” See Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (“‘[A]ttorney argument is not evidence’ and cannot rebut other admitted evidence.” (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017))). On the current record, we determine that Petitioner has made a sufficient showing that KR996 discloses or suggests the mainframe limitations.” slip op. at 29
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 12,098,063 - PTAB · Jun 23, 2025 · IPR2025-00381 · APJ Eric C Jeschke · IPR · Institution
The Board instituted IPR on claims 1–10 on all asserted grounds, finding a reasonable likelihood that Kubota would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner and “notes that it substantially tracks” Patent Owner’s definition. Prelim. Resp. 19–20; see also id. at 20 n.7 (defining one of ordinary skill in the art as having “at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of machines, or have had equivalent knowledge and experience”). Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Patent Owner’s proposal is the same, except for use of the term “machines” instead of “vehicles.” Furthermore, Patent Owner does not argue at this stage of the proceeding that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“But that the Specification may indicate that a “loader support” and a “mainframe” may have some similar functionality does not make the terms interchangeable from a claim construction perspective. See Bd. of Regents of the Univ. of Texas Sys. v. BENQ Am. Corp., 533 F.3d 1362, 1371 (Fed. Cir. 2008) (“Different claim terms are presumed to have different meanings.”) (citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co., 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”)). For these reasons, we are not persuaded by Patent Owner’s view that intrinsic and extrinsic evidence regarding a different term—“mainframe”—supports a similar proposed construction for “loader support.” See, e.g., Prelim. Resp. 22–27 (discussing intrinsic and extrinsic evidence relating to “mainframe” and then proposing a definition of “loader support”). Instead, we apply the plain and ordinary meaning of “loader support,” which aligns with the view of the Iowa District Court. See Ex. 1020 at 5 (the Iowa District Court stating that “loader support” “will be given [its] plain and ordinary meaning”); 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action . . . that is timely made of record in the inter partes review proceeding will be considered.”). We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We have reviewed Petitioner’s contentions with respect to the claim, and for the reasons below, we determine that the Petition shows a reasonable likelihood that Petitioner would prevail in demonstrating that claim 1 is both anticipated and would have been obvious based on KR996.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,465,891 - PTAB · Jun 10, 2025 · IPR2025-00171 · APJ Eric C Jeschke · IPR · Institution
Instituted IPR on claims 1–16 and 19–28 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including 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.” Id. (internal quotation marks and citation omitted).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the Texas District Court stayed the Texas Litigation pending the resolution of this inter partes review and the related inter partes reviews. See Ex. 1037 at 6; Prelim. Reply 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use 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”). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,202,266 - Sram, LLC v. Fox Factory, Inc.All claims unpatentablePTAB · Jun 6, 2025 · IPR2024-00216 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–9, 11–15, and 19 are unpatentable, including by anticipation over Gartner and Nakaya and obviousness over Gartner and Kodama and Nakaya and Kodama.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’223 patent “would have a degree in Mechanical Engineering and at least three years’ experience in vehicle suspension technology, or a Master’s degree in Mechanical Engineering with a concentration in design of vehicle suspension technology and/or shock absorbers.” Pet. 5–6, n.1. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. Based on the complete record, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As Petitioner discerns, claim 1 does not recite “dampening only at the end portion of a compression stroke.” Rather, claim 1 expressly requires “a fluid flow path formed in the bottom out cup for providing fluid communication from the cup to the compression portion of the chamber during a compression stroke of the damper[.]” Ex. 1001, 7:44–47 (emphasis added). In this way, claim 1 contemplates that the bottom out cup operates “during a compression stroke of the damper,” rather than only at the end portion of a compression stroke or only near an end of a compression stroke. Similarly, independent claims 11 and 19 do not require that the bottom out cup provide damping only at the end or near the end of a compression stroke. See Ex. 1001, 8:8–23, 8:61–9:5. Claim 11 recites “a bottom out cup in fluid communication with the damper chamber” and “an adjustable fluid flow path formed in the cup, the flow path providing fluid communication between the cup and the primary compression chamber in a compression stroke of the damper.” Id. (emphasis added). Claim 19 also recites “in a compression stroke of the damper” and does not limit damping to the end, or near the end of a compression stroke. See id. at 8:61–9:5 (“in to the compression chamber at a first rate with the valve in a first position and at a second rate with the valve in a second position where the first rate is greater than the second rate and the valve includes an adjuster accessible from an exterior of the shock absorber.”) (emphasis added). The ’223 patent as a whole also does not describe the bottom out cup as damping or providing dampening only at the end or near the end of the compression stroke, but more broadly as during the compression stroke. With reference to Figure 3A, the ’223 patent discloses that bottom out piston 250 enters “the bottom out cup 275 during a compression stroke of the shock absorber.” Ex. 1001, 3:38–50 (emphasis added). Additionally, we observe that the ’223 patent discloses “[a]s the piston completely engages the cup 275, dampening is increased.” Id. at 3:64–65 (emphasis added). We understand this to mean that bottom out dampening occurs at the end of the compression stroke, but may also occur “during” the compression stroke and “increase” as the piston completely engages the bottom out cup.” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. code (57) (emphases added). Though Gartner does not explicitly employ the term “bottom out cup,” it is not lost upon us that the internal shock absorber, e.g., shock absorber 400, functions during/in a compression stroke (e.g., after the initial portion of the compression stroke), to provide dampening while protecting from bottoming out. Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
Patent outcomesUS 8,550,223 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 8,550,223 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 7, 2025 · IPR2024-00031 · APJ Annette R Reimers · IPR · Final written decision
Claims 16–20, 24, 26, and 27 are unpatentable: claims 16, 19, 20, 24, and 27 are anticipated by Bhattacharya, and all challenged claims are obvious over Bhattacharya and Spain.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner for the following reasons. First, Patent Owner’s definition is consistent with our determination in IPR2023-01210, which involved the same ’358 patent, and Petitioner does not explain sufficiently why we should adopt a different definition. See generally Pet. Reply.” slip op. at 8
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. In this case, Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 42–44. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 ¶ 8). In his supplemental declaration, Dr. Sundaresan further testifies that: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 2018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 2012, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim wording “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. See Pet. Reply 4 (explaining why that plain meaning supports Petitioner’s proposed construction). Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Ex. 2012, 18–20.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Based on the entire trial record, we agree with Petitioner’s analysis with supporting evidence and credit Dr. Sundaresan’s testimony supporting Petitioner’s position. See Pet. 20–37. Thus, we determine that Bhattacharya discloses the recitations of claim 15. b. Remaining Claims 16, 19, 20, 24, and 27 Claims 16, 19, 20, 24, and 27 depend from claim 15. Ex. 1001, 13:19–21, 12:30–36, 12:52–55; 12:63–67. Petitioner accounts for the limitations recited in each of claims 16, 19, 20, 24, and 27. Pet. 37–42. Patent Owner does not offer any arguments specifically addressing the limitations of claims 16, 19, 20, 24, and 27. See PO Resp. passim. Petitioner shows, by a preponderance of the evidence, that each element of claims 16, 19, 20, 24, and 27 is disclosed by Bhattacharya.” slip op. at 41
Patent outcomesUS 8,400,358 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,400,358 - Apple Inc. v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · May 7, 2025 · IPR2024-00032 · APJ Brian D Range · IPR · Final written decision
Claims 2–5, 9, 11, 12, 14–16, 18–22, 27, 29, 31, and 32 are unpatentable over the asserted anticipation and obviousness grounds; claims 1, 25, and 35 were disclaimed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The ’494 patent is directed to locating a wireless mobile device in a geographic region. Ex. 1001, 1:20–27; PO Resp. 45. Bhattacharya is directed to estimating the geographic location of a wireless terminal. Ex. 1005, code (57), ¶¶ 1, 13; PO Resp. 44–45. Spain is directed to a method for locating the concentration of mobile radio traffic in a coverage area. Ex. 1006, code (54), ¶¶ 1, 11; PO Resp. 45. We find that there is support in the ’494 patent and prior art consistent with Patent Owner’s assertion that the qualifications of a person of skill would include knowledge of radio navigation and mobile communications technology. Accordingly, we adopt Patent Owner’s proposed qualifications for a person of ordinary skill.” slip op. at 9
- BurdenDecided for petitioner
“Patent Owner, however, has not identified any language in the Petition that explicitly incorporates by reference Dr. Sundaresan’s testimony. See generally PO Resp.; PO Sur-Reply. Nevertheless, to the extent that the Petition purportedly incorporates by reference Dr. Sundaresan’s testimony, we do not find such incorporation sufficiently extensive to merit disregarding the testimony. Typically, an incorporation by reference is deemed improper in instances in which large portions of a declaration are incorporated—particularly where the incorporation serves to circumvent a word-count limit. See, e.g., Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (informative). In this case, however, Dr. Sundaresan’s testimony describing the level of ordinary skill in the art is short. Ex. 1003 ¶ 8. The amount of testimony is not extensive and, thus, its purported incorporation into the Petition presents little or no imposition on Patent Owner or the Board.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In reply, Petitioner argues that “under any reasonable read of the Sundaresan Declaration, Dr. Sundaresan implied agreement with the POSITA definition based on its inclusion in a signed declaration.” Pet. Reply 15. We agree with Petitioner. Although Dr. Sundaresan does not state explicitly that the proposed definition of the ordinary skill in the art is his opinion, we are persuaded that the manner in which the definition is set forth in his declaration indicates that he agrees with the definition. Patent Owner attempts to make much of Dr. Sundaresan’s statement that he had been informed of the qualifications of a person of ordinary skill in the art. See PO Resp. 41–43. Dr. Sundaresan’s testimony, however, set forth this understanding of the requisite level of skill in the art (Ex. 1003 9 Dr. Sundaresan has a doctoral degree in electrical and computer engineering and has extensive experience in wireless communications. Ex. 1003 ¶¶ 75–78. Dr. Sundaresan also has experience with navigation and geolocation systems such as development of wireless tracking systems, as evidenced by his experience in companies such as NavigateIO Inc. Id. at ¶¶ 77–78. Patent Owner does not argue that Dr. Sundaresan fails to meet requirements for the level of qualifications of one of ordinary skill in the art under its proposed qualifications, which we adopt here. See generally PO Resp.; PO Sur-reply. Based on a review of his qualifications, we determine that Dr. Sundaresan qualifies as a person of ordinary skill at the time of the invention. ¶ 8). In his supplemental declaration, Dr. Sundaresan testifies: I agreed with this POSITA definition when preparing the Declaration, and I continue to hold the opinion that the POSITA definition is both correct and appropriate based on the disclosures of the ’358 patent and the prior art analyzed in the Declaration. Ex. 1055 ¶ 17. Dr. Sundaresan further testifies that “[i]f I did not agree with the POSITA definition, then it would not have been included [] in paragraph 8 of the Declaration.” Id. ¶ 18. Dr. Sundaresan’s inclusion of the definition of the level of ordinary skill in his original declaration indicates that he agrees with the definition, as confirmed by his cited subsequent testimony. We note that, even with Patent Owner’s arguments, the record is clear that Patent Owner was on notice of Petitioner’s proposed definition of the level of ordinary skill at the time of the Petition. Pet. 6; cf. Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990, 1006 (Fed. Cir. 2023) (holding that Petitioner is not required to anticipate all arguments in its Petition and allowing consideration of reply where patent owner had sufficient notice of petitioner’s position and adequate opportunity to respond).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision.” slip op. at 27
Patent outcomesUS 8,786,494 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,786,494 - PTAB · Apr 29, 2025 · IPR2025-00031 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–19 on all petitioned challenges, finding a reasonable likelihood of prevailing on at least one claim based on Norris anticipation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Considering the Fintiv factors (summarized above) as a whole, we find that trial in the District Court will not begin any earlier than February 2, 2026, and the trial date is very likely to be set back by at least a few weeks due to the delayed Markman process to fall around the same time as the Board’s late April 2026 statutory deadline, so the Fintiv analysis turns on other factors. See Fintiv, at 9. Further, the evidence presented here indicates the parties and the Court have not yet made a significant investment in the District Court Litigation, and Petitioner’s Sotera stipulation mitigates concerns of duplicative efforts and potentially conflicting decisions. Overall, we determine that efficiency and integrity of the patent system are best served by not exercising discretion to deny institution based on the District Court Litigation.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(iii) Conclusion as to Claim 1 For the foregoing reasons, we conclude the record shows a reasonable likelihood that Petitioner would prevail with respect to challenging claim 1 as anticipated by Norris.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’435 patent “would have either (1) a Bachelor of Science in Mechanical, Electrical, or Petroleum Engineering or an equivalent field, and at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production, or (2) at least four years of oil and gas industry experience including well drilling, completion, or production.” Pet. 7; Ex. 1003 ¶ 51. “Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 15 (citing Pet. 7). For purposes of this Decision, we adopt the level of ordinary skill in the art as articulated by Petitioner because, based on the current record, it is not disputed, and it appears to be consistent with the ’435 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“First, we accept (for purposes of this Decision) Patent Owner’s construction of the claim term “acceptable threshold” as referring to a limit, wherein, when the limit is reached, something happens or changes. See Prelim. Resp. 18 (citing Exs. 2002, 2003, and 2004). We find, however, that this is how Norris’s control system operates, based on the present preliminary record. That is, Norris’s application controller 401 monitors the pressure within pressure-side manifold 250b as measured by pressure sensor 185, and compares that measured pressure with a desired pressure. See Ex. 1004, Figs. 2, 3A, and 3B, ¶¶ 22, 29–31, 35–37. Then, “upon variation from the desired settings,” Norris’s control system increases or decreases the operation of pumps 270 to “restore the desired pressure.” Id. at Fig. 2, ¶ 37 (emphasis added). Regardless of whether the desired pressure setting is applied as a single pressure value, or as a range having minimum and maximum pressure values, determining that the measured pressure varies from the desired pressure setting is applying a limit which, when it is reached, changes the operation of pumps 270. Second, based on the present preliminary record, we reject Patent Owner’s additional claim construction position that the claim term “acceptable” requires that the limit must be an “operational limit” representing a potential failure condition that results in shutting down one or more pumps 270. See Prelim. Resp. 19–22 (citing Ex. 1001, 5:65–6:9, 6:56–59, 7:63–66, 8:16–17, 8:25–28, 10:4–11, 11:11–18). It is true that the ’435 patent specification describes such an operational limit as one example of an “acceptable threshold.” See Ex. 1001, 5:65–6:6, 6:56–59, 7:63–66, 8:16–17, 8:25–28, 10:4–11, 11:11–18. However, the ’435 patent specification also describes another example of an “acceptable threshold” as “automatically adjusting” rather than turning off a pump (id. at 10:4–11), and indicates the control system may “adjust” the pumps and other system components “so that each is performing its job most efficiently.” Id. at 5:51–6:9 (emphasis added), 7:41–54, 8:1–9; see also id. at 6:40–61 (“Operating efficiencies for each individual component and the system 40 may be greatly improved,” for example “[p]ump efficiencies may be monitored . . . to optimize boost and rate . . . to deliver a consistent job.”). Patent Owner’s claim construction that would limit the scope of the claim term “acceptable threshold” to require applying an operational pump limit, to the exclusion of applying limits that simply optimize efficient pump operation, is contradicted by this intrinsic evidence. Indeed, claim 10 depends from independent claim 7 (which contains the same “acceptable threshold” limitation as claim 1), to further limit the scope of the claimed invention to “determining that the one or more parameters are indicative of a potential failure condition.” Id. at 12:63–64 (claim 7), 13:23–25 (claim 10) (emphasis added). Claim differentiation therefore suggests that the independent claims are broader than that.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,655,435 - Uatp IP LLC v. Slick Slide LLCInstitutedPTAB · Apr 8, 2025 · PGR2024-00054 · APJ Julia Heaney · PGR · Institution
The Board instituted PGR on claims 1–17 and 22–28 and all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Upon consideration of the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one claim challenged in the Petition is unpatentable. Further, Patent Owner has not persuaded us that it is appropriate to exercise our discretion not to institute review. Accordingly, we institute a post-grant review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level patent owner adoptedOther
“On this record, we do not find Patent Owner’s proposed experience level of at least five years in measurement and analysis of coefficient of friction to be supported. As to the necessity of experience in textile engineering and fiber science, Patent Owner’s position, although not supported by declarant analysis of the factors listed above, is consistent with the disclosure of the ’854 patent, which describes features of a mesh layer in textile and fiber terms. See e.g., Ex. 1001, 10:17–11:14, 12:65–13:8, 14:20–24. On the whole, however, we do not discern on this record how specific experience in textile engineering and fiber science of a person of ordinary skill would materially alter the outcome at this stage of the proceeding. For purposes of this decision only, we apply Patent Owner’s proposed definition of a person of ordinary skill in the art, except for the requirement of five years of experience in measurement and analysis of coefficient of friction. The level of skill in the art remains an open issue in this proceeding. Further submissions by the parties may include argument and evidence that would assist in the resolution of this issue at the close of trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “no formal claim construction is necessary in this proceeding.” Pet. 10; Reply 1, 4. Patent Owner contends the terms “mesh layer” and “coefficient of friction” require construction. Prelim. Resp. 14–16; Sur-reply 2–5. We have considered the parties’ arguments and discuss them below with regard to each of the terms Patent Owner contends should be construed. Because our determination that Petitioner demonstrates at least one challenged claim meets the threshold for institution (see SAS Inst., 138 S. Ct. at 1359–60) is not based on construing the term “mesh layer” or “coefficient of friction,” we determine we need not construe either claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). As further discussed below, we invite the parties to address claim construction at trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We agree with Petitioner that the ’854 patent specification does not include clear and explicit lexicography or a disclaimer that would support requiring “coefficient of friction” to be determined by a specific ASTM test method. The portion of the specification Patent Owner asserts as a definition of “coefficient of friction” (see Ex. 1001, 11:31–42) is a description of an embodiment; we find it does not express patentee intent to redefine the term. Further, the statement that “the coefficient of friction … may be determined using the … ASTM D1894 standard test method” (id. at 11:32–35) indicates that use of that specific test method is optional. Accordingly, in the absence of patentee lexicography or disavowal, we do not limit the scope of the term “coefficient of friction” to require that it be measured by a specific ASTM standard. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). We note that the ’854 patent specification sets forth a definition for the coefficient of friction between the surfaces of the mesh material and the slide surface. Ex. 1001, 4:38–46. As stated above, however, we do not expressly construe any claim term at this stage of the proceeding. Should the parties address the construction of “coefficient of friction” at trial, we will make a determination after the close of evidence and any hearing.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,998,854
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.