- PTAB · Feb 27, 2025 · IPR2024-01227 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on all grounds for claims 1–5 and 8–13, finding a reasonable likelihood that claim 8 is anticipated by Fukui and claims 1 and 8 are obvious over Fukui-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Patent Owner contends that we should deny institution under 35 U.S.C. § 325(d) “because the Petition presents ‘the same or substantially the same prior art or arguments previously . . . presented to the Office.’” Prelim. Resp. 25–31 (alteration in original). Specifically, Patent Owner explains, the Office previously considered Sedor during the ’542 patent’s prosecution, and Sauter was made of record but not considered during prosecution. Id. Patent Owner, however, states that it “recognizes that this argument only reaches Sauter-based grounds, not Fukui-based grounds. This argument thus only needs to be addressed after the Board confirms the fundamental deficiencies in Petitioner’s Fukui-based grounds.” Id. at 25 n.3. Because, as set forth below, we do not, on the present record, find any “fundamental deficiencies in Petitioner’s Fukui-based grounds” that inhibit institution of trial, we regard Patent Owner’s § 325 request as moot, and we need not consider it further.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have [had] a B.S. degree or equivalent in mechanical or electrical engineering or similar fields, in addition to a minimum of two years of professional experience with or graduate studies involving design, development, and/or utilization of optical communication systems.” Pet. 26. On the present record, Patent Owner does not dispute this proposed level of skill. Prelim. Resp. 1–31. Neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears consistent with the ’542 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“enough to resolve . . . the lead Fukui ground” but that “[t]here are two disputes relevant to the alternative Sauter ground.” Pet. 22. With respect to the first of these “disputes,” Petitioner presents two claim constructions for the claim term or phrase “cassette width as measured between outer side edges thereof of one of one, two, three, four and six standard width units.” Id. at 23. The constructions are said to be from “the co-pending litigation,” with one characterized as “Patent Owner’s proposed construction”6 and the other as “CommScope’s proposed construction.”7 Of note is Petitioner’s 6 The claim construction attributed to Patent Owner is: “cassette width as measured between the outer side edges thereof that accommodates one of one, two, three, four, or six receptable modules.” Pet. 23. 7 Petitioner’s construction is: “The cassette width as measured between the outer side edges thereof equals one, two, three, four, or six times the contention that “[Patent Owner]’s construction cannot be correct,” and accompanying explanation in that respect. Id. at 22–23, 24. Patent Owner acknowledges that there is a dispute between the parties as to the noted claim construction but urges that “[t]he Board, however, need not fully resolve this claim construction dispute,” as, in Patent Owner’s view, the grounds based on Sauter are deficient based on either construction. Prelim. Resp. 21–22. We are mindful of Petitioner’s view that Patent Owner’s litigation construction is not correct. We also question whether that construction adds clarity in substituting “width that accommodates” for “width of,” and replacing “standard width units” with “receptable modules,” without, on this record, support for such word variations. Nevertheless, our determination whether to institute trial does not require resolution of any claim construction dispute, nor does it necessitate that we adopt any particular construction for the pertinent claim term. 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))). We invite the parties to develop the record more fully on this claim- construction issue during trial.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,435,542 - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Aug 9, 2024 · IPR2024-00460 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–21 on all petition grounds, finding a reasonable likelihood that claims 1–8 and 12–18 are anticipated by Nishida.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons set forth above, we conclude that Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. At this stage of the proceeding, the Board has not made a final determination on the construction of any claim term or the patentability of any challenged claim V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–21 of the ’749 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“arguments that Nishida-US does not disclose the “simultaneously knitting” limitation of the claims of the ’749 patent constitutes “error.” Pet. 86. In our view, whether error or not, there is clear inconsistency on the record before us as to assessment of Nishida’s and Nishida-US’s teachings pertaining to the pertinent “simultaneously knitting” requirement. In that regard, as discussed above, in accounting for that requirement, the Petition unambiguously relies on disclosure in Nishida specifically stating that “when the strip of material (1) is manufactured, the patterns (2) of the uppers are produced, at the same time as the strip of material.” Pet. 25 (citing Ex. 1005, Abstract (emphasis added by Petitioner)). At the very least, there is a reasonable case to be made that such disclosure conveys that the material (1) and the patterns (2) are created simultaneously. The record is devoid of any indication that the Examiner considered or apprehended the extent of that disclosure.15 “[M]isapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims,” as seemingly occurred here, does not lend itself to a conclusion that the exercise of discretion to deny institution is appropriate. See Advanced Bionics, IPR2019-01469, Paper 6 at 8–9 n.9.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“account for limitation 1[a], on this record, is difficult to follow. Nishida makes clear that its shoe making method involves production of material web 1 by knitting and which is “provided with a single or a plurality of unwound web part(s) 2.” Ex. 1005, 5. Nishida’s disclosure also, at this time, appears unequivocal in describing that “patterns (2)” and web material 1 (or “strip of material (1)”) are manufactured or produced “at the same time.” Id. at code (57) (Abstract). Nishida also unambiguously describes its material web 1 as including “surface areas 1.1.” Id. at 7. As is evident from, for instance, Nishida’s Figure 2, surface areas 1.1 surround unwound web parts (or patterns) 2.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“2. Proposed Ground of Obviousness Based on Nishida (Grounds 2 and 6) Petitioner contends that claims 9, 10, 19, and 20 would have been obvious to a person of ordinary skill in the art based on Nishida’s teachings taken with the general knowledge of a skilled artisan. Pet. 50–54. Petitioner supports its contention with citation to Dr. Brookstein’s testimony (Ex. 1003) as well as various record exhibits (e.g., Exs. 109, 1010, 1012, 1023). Id. Patent Owner does not challenge Petitioner recourse to a person of ordinary skill in the art’s general knowledge in accounting for claims 9, 10, 19, and 20. Rather, Patent Owner simply contends that the arguments it advanced in connection with Ground 1 also applies to Ground 2. As discussed above, at this time, we do not agree with Patent Owner’s arguments. Petitioner also contends that claims 11 and 21 would have been unpatentable over Nishida and Zuckerman (Ground 6). Pet. 81–84. Patent Owner also contends that the arguments it advances in conjunction with Ground 1 apply to Ground 6. Prelim. Resp. 37. We do not find those arguments availing. On the record before us, we determine that Petitioner has shown a reasonable likelihood of success in its patentability challenge to claims 9, 10, 19, and 20 based on Nishida (ground 2), and its challenge to claims 11 and 21 based on Nishida and Zuckerman (ground 6).” slip op. at 19
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Oct 16, 2023 · IPR2023-00745 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–4 and 8–22 for all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ recitations are similar in scope. Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. This proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. Petitioner’s definition is consistent with both the scope of the claimed invention and the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this Decision, we apply Petitioner’s definition of the person of ordinary skill in the art. We note, however, that our decision would be the same adopting either proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the terms “embedded” (recited in claims 1, 9, and 15), “lead” (recited in the independent claims), “pad” (recited in claim 1 and some of its dependent claims), and “pocket” (recited in dependent claim 8). Pet. 7–12. Patent Owner, at this time, “discerns no need to construe explicitly any claim language because doing so would have no effect on analyses of Masimo’s asserted grounds, and would not assist in resolving the present controversy between the parties.” Prelim. Resp. 6.” slip op. at 13
- BurdenOther
“We agree with Patent Owner that Petitioner’s citation to Mills (Ex. 1006, 5:18–19), which is “[y]et another VLSI chip . . . SRAM chip 38,” does not necessarily disclose a processor standing alone. Petitioner’s position, however, does not rely just on SRAM chip 38, but instead a VLSI comprising other circuit components, including a distinct processor. See Pet. 31 (citing Ex. 1006, 2:3–6). Petitioner first cites to Mills column 2 to support its position that “housing 12 comprises a very-large scale integrated (VLSI) circuit chip that includes an ‘ECG signal and abnormal event detection circuitry, analog-to-digital (AD) and digital-to-analog (DA) conversion circuitry, memory and processor circuitry.’” Id. (quoting Ex. 1006, 2:3–6). Petitioner next relies on Mills’ disclosure that “microprocessor and associated electronics, including firmware executed thereby, employs a digital bandpass filter reliably to detect ECG signals.” Id. (quoting Ex. 1006, 2:20–23). Petitioner next cites to Mills (Ex. 1006, 4:55–5:3), which describes “circuitry shown schematically in FIG.4, including on [PCB 50’s] bottom side a microcontroller (with integral ROM) chip 42.” Pet. 31. It is unclear from this citation whether Petitioner is relying on microcontroller 42 (on PCB 50’s bottom side) as a processor because Petitioner then quotes Mills’ discussion of SRAM chip 38, which states “that the VLSI is surface-mounted on the top side of printed circuit board (PCB) 50.” Pet. 31 (quoting Ex. 1006, 5:18–19). We understand Petitioner’s position as relying on the “very-large scale integrated (VLSI) circuit chip that includes” several components, including “memory and processor circuitry.” Pet. 31 (quoting Ex. 1006, 2:3–6). Notably, this section of the specification is labeled, “Background and Summary of the Invention,” and the paragraph describing this VLSI circuit chip is “summarizing the invention.” Ex. 1006, 1:7–8, 1:60. This VLSI circuit chip does not appear to us to be the same as VLSI SRAM chip 38, which is characterized by Mills as “[y]et another VLSI chip.” Ex. 1006, 5:18. Mr. Oslan testifies that “the VLSI is a processor coupled to the heart sensor (first and second electrodes 14 and 16, respectively) and is configured to receive and process the detected cardiac signal.” Ex. 1003 ¶ 65. Mr. Oslan relies on Mills’ disclosure of a microprocessor and associated electronics, including firmware employing a digital bandpass filter for detecting ECG signals. Id. (citing Ex. 1006, 2:20–23). This cited sentence of Mills further discloses characterizing ECG signals (processing) based on QRS complexes or pacer and defibrillator pulses, but ignoring noise and motion artifacts. Ex. 1006, 2:20–25. Patent Owner makes additional arguments, such as alleging that the” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - PTAB · Sep 1, 2023 · IPR2023-00658 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on the sole claim and all petitioned grounds, finding a reasonable likelihood of unpatentability, including anticipation and obviousness over Iannaccone.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not, on this record, point to specific evidence of copying or quality. Id. And, Patent Owner’s contention that the claimed design resulted from “substantial and sophisticated design expertise,” is similarly unsupported by corroborating evidence at this point. We have before us at this point in the proceeding mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that without a bachelor’s degree in furniture design, “a little more than two years of practical design experience . . . is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop.” Ex. 1002 ¶¶ 34–35. Based on the present record, we adopt the Petitioner’s articulation of a designer of ordinary skill, which is supported by the testimony of Mr. Hatch. As of yet, Patent Owner has not provided any evidence to rebut Petitioner’s or Mr. Hatch’s assertions. We also note that, under the present record, our analysis of this case would be the same under either party’s definition. The parties are free to address this issue at trial if they so wish.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“At this stage of the proceeding, we agree with Patent Owner that a verbal construction is not necessary to describe the overall ornamental nature of the ’012 design as Figures 1–23 clearly show the claimed table top and that the best description of the ornamental features of the ’012 design comes from the drawings themselves. For example, Figures 1–23 clearly depict a table top having two rectangular portions/planks having different widths.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“analysis discussed above, we recognize in the test for design patent obviousness articulated in Durling and Rosen that a primary reference must be found, “the design characteristics of which are basically the same as the claimed design.” Durling, 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391). And, that we must both “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” High Point Design, 730 F.3d 1301, 1311–12 (Fed. Cir. 2013) (quoting Durling, 101 F.3d at 103). As to part (1), in our claim construction we have determined that the correct visual impression created by the patent design as a whole is “that the solid lines illustrating the design in Figures 1–23 of the ’012 patent provide an accurate representation and understanding of the claimed table top and that a verbal construction is not necessary.” Section II.D.; see also In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). That said, we recognize that some description of the claimed design may be helpful.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousness - PTAB · Jul 10, 2023 · IPR2023-00438 · APJ Josiah C Cocks · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7, 9, 12–14, and 17–19 on all petitioned grounds, finding a reasonable likelihood of success based on Amano and related combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“including Ceci, applied by the Petitioner as a part of its proposed grounds are cumulative of subject matter previously considered by the Examiner, we do not find them availing. In that regard, Patent Owner attempts to equate some selected teachings of prior art that previously were presented during prosecution of the ’072 application (e.g., Lubell, Henry,14 and Fabrizio15) with new prior art relied on in the Petition, and proceeds to argue that the new prior art teachings are inadequate to account for certain features of the challenged claims. See Prelim. Resp. 18–29. In effect, Patent Owner’s arguments, although presented under the guise of a request for discretionary denial, essentially amount to direct challenges to the merits of Petitioner’s proposed grounds. That is not a scenario that warrants dispositive exercise of discretion, which would foreclose actual evaluation of the merits of the proposed grounds. Rather, in our view, the situation suggests that the appropriate course of conduct is to consider whether Petitioner’s proposed grounds are persuasive, or not, in conveying a reasonable likelihood that the challenged claims are unpatentable. Moreover, as discussed below, we conclude that, with respect to at least some of the proposed grounds, including grounds based on prior art that was not presented during prosecution of the ’072 application (e.g., Amano), Petitioner actually has shown a reasonable likelihood of success that the challenged claims are” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in the art (“POSITA”) for the technology of the ’413 patent would have had (1) a bachelor’s degree in engineering, computer science, industrial design, biomechanics, or a related field, and (2) at least two years of experience researching, developing, designing, and/or testing fitness or physiological sensors, wearable devices, physiological or biomechanical devices, remotely-controlled systems or interfaces, network-based applications and/or equipment, or the equivalent experience or education. Pet. 18 (citing Ex. 1009 ¶ 41). Patent Owner indicates that “[f]or purposes of this Preliminary Response only, Nike applies lululemon’s proposed level of skill in the art.” Prelim. Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal of the level of ordinary skill in the art as reasonable and consistent with the prior art. See also 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 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose claim construction for any term. See Pet. 17. Patent Owner also indicates that no claim construction is necessary at this time. Prelim. Resp. 15. We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs, Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,620,413 - PTAB · Jul 10, 2023 · IPR2023-00424 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–10 and 12–19 on all petition grounds, finding a reasonable likelihood of success based on Acres and related combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“necessary to address the meaning of the term “data” that appears in each of independent claims 1 and 12. Although Patent Owner represents in the “Claim Construction” section of its Preliminary Response that it is not necessary to construe any claim terms at this time (see Prelim. Resp. 13), Patent Owner does present a construction of the term “data” within the body of its Response. See id. at 17. In that respect, Patent Owner points to a dictionary definition of “data” as constituting “[f]actual information, such as that derived from observation, experimentation, or calculation, especially that which is used for processing and/or further analysis.” Id. (citing Ex. 2002, 4). Based on that definition, Patent Owner contends that “the ordinary and customary meaning of ‘data’ is factual information, from which decisions and subsequent actions can be made.” Id. at 18. Patent Owner offers that meaning in an attempt to distinguish over a “command” action performed in the prior art. Id. at 17 (citing Ex. 2002, 3 (“defining ‘command’ as ‘[o]ne or more signals which actuate a device’ or ‘[a]n instruction that causes a computer action”)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At the most elementary level, the Bug 601 takes control of compatible exercise machine parameters that determine exertion level. When the Bug 601 is used with a compatible treadmill 150, the treadmill speed is controlled by the Bug’s own processor 420. If the Bug 601 senses, based upon the exerciser’s heart rate, that exertion level should increase because the exerciser’s heart rate is below the target, the Bug 601 sends a command to the treadmill 150 telling it to increase speed by a specific amount. *** Alternatively, the Bug 601 can control both speed and incline to match the fitness goals of the exerciser. The Bug 601 can be configured to control any number of machine parameters. Ex. 1002 ¶¶ 89, 96. Thus, Acres discloses that based upon an exerciser’s heart rate, Bug 601 operates to send commands to treadmill 150 to control operational parameters of the treadmill, such as its speed and incline. Patent Owner is of the view that such commands do not constitute the required “first set of data” in claims 1 and 12 because those commands allegedly do not constitute “data.” See Prelim. Resp. 17–20. Patent Owner bases that view on its construction of the term “data” as being “factual information” that does not include Acres’s commands. See id. As discussed above in our Claim Construction section (§ II.C), however, on the record before us, it is not apparent why commands sent by Acres’s Bug that include information for controlling various operational parameters of a treadmill do not constitute data, even if data is something that is “factual information.” In other words, at this time, we question why the skilled artisan would have regarded the informational content of those commands being something other than “factual information” so as be excluded from being “data.”” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Thus, Acres discloses that based upon an exerciser’s heart rate, Bug 601 operates to send commands to treadmill 150 to control operational parameters of the treadmill, such as its speed and incline. Patent Owner is of the view that such commands do not constitute the required “first set of data” in claims 1 and 12 because those commands allegedly do not constitute “data.” See Prelim. Resp. 17–20. Patent Owner bases that view on its construction of the term “data” as being “factual information” that does not include Acres’s commands. See id. As discussed above in our Claim Construction section (§ II.C), however, on the record before us, it is not apparent why commands sent by Acres’s Bug that include information for controlling various operational parameters of a treadmill do not constitute data, even if data is something that is “factual information.” In other words, at this time, we question why the skilled artisan would have regarded the informational content of those commands being something other than “factual information” so as be excluded from being “data.” With respect to limitation [1C], Patent Owner contends that even if Acres’s commands are regarded as disclosing the “first set of data” required by limitation 1B, Petitioner has not accounted for the “first set of activity data” of limitation 1C under a theory that Petitioner has impermissibly used a single element in the prior art to account for two different claim limitations. See Prelim. Resp. 21–22. To wit, Patent Owner proposes that to the extent those commands are a “first set of data” (limitation [1B]) then that data is based on a user’s heart rate, yet the recited “first set of activity data” (limitation [1C]) also is based on a user’s heart rate, so Petitioner is said to improperly rely on the same heart rate data to satisfy both of the data limitations. Patent Owner’s proposal, however, is misplaced. There is no dispute that Acres’s heart rate data is activity data per limitation [1C]. The informational content of Acres’s commands as satisfying limitation [1B] is reasonably understood to be something different than heart rate data. As something different than heart rate data, those commands are not the same prior art element. Thus, this premise under which Patent Owner challenges Petitioner’s ground based on Acres is inapt. Even if there were some prohibition in some situations in which a prior art element cannot constitute multiple limitations of a claim, that is not the circumstance present here. Patent Owner does not present any further challenges to the grounds proposed by Petitioner based on Acres, including the ground involving both Acres and Pyles. We have considered Petitioner’s proposed grounds based on Acres alongside Patent Owner’s challenges to those grounds. On the record before us, we conclude that Petitioner has established adequately a reasonable likelihood of success in prevailing in its challenges to claims 1– 10 and 12–19 based on those grounds.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,923,225 - PTAB · Jun 30, 2023 · IPR2023-00349 · APJ Stephen E Belisle · IPR · Institution
The Board instituted IPR on claims 1–5, 7, 11, and 13 on all petitioned grounds, finding a reasonable likelihood that claims 1–5, 7, 11, and 13 are obvious over Sirmans and Kobayashi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). When instituting inter partes review, the Board will authorize the review to proceed on all of the” slip op. at 2
- BurdenDecided for patent owner
“3 goals in 3 consecutive days”) that on their face do not appear to explicitly or inherently disclose the features of the subject limitation, and we discern no explanation as to how or why the cited disclosure in Hoffman allegedly discloses such limitation (or whether Petitioner is relying on a particular claim construction to give effect to its argument). Likewise, Petitioner does not cite to any expert testimony or other evidence showing how or why the cited statements in Hoffman allegedly disclose such limitation. Indeed, Petitioner appears to place the onus on Patent Owner—and the Board—to ascertain how or why the cited statements (i.e., paragraph 198) allegedly discloses limitation 1[d]. The burden of proof here lies with Petitioner, not Patent Owner, and we do not ourselves create and adopt unpatentability arguments on behalf of Petitioner as to whether or how Hoffman might disclose the subject limitation. See Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify with particularity the evidence that supports the grounds for the challenge to each claim.” (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016))); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[W]e find no support for the PTO’s position that the Board is free to adopt arguments on behalf of petitioners that could have been, but were not, raised by the petitioner during an IPR.”); DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”). slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“activity time periods into Sirmans’ protocol criteria,” and “[i]n view of the combined teachings of Sirmans and Kobayashi, it would [have been] easy to implement determining whether the received athletic activity data exceeds the first activity goal for a predetermined number of consecutive activity time periods.” Pet. 62–63 (citing Ex. 1006 ¶¶ 124–128). Based on the present record, we find Petitioner’s arguments persuasive.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“Patent Owner argues Petitioner’s challenge based on the combination of Sirmans and Kobayashi is “rife with hindsight reasoning.” Prelim. Resp. 31–33. “Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1313–14 (CCPA 1971). Here, Patent Owner does not direct us to any knowledge gleaned only from applicant’s disclosure that Petitioner allegedly relies upon to support its obviousness rationale. See Prelim. Resp. 31–33.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,259,615 - PTAB · Jun 30, 2023 · IPR2023-00348 · APJ Stephen E Belisle · IPR · Institution
Instituted IPR of claims 1, 5–7, and 12 on all petition grounds after finding a reasonable likelihood that claims 1 and 5–7 are anticipated by Lofi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2022). We may not institute an inter partes review “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). 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. 37 C.F.R. § 42.108(a). Applying those standards, and upon consideration of the information presented in the Petition and Preliminary Response, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’930 patent is unpatentable. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, we institute an inter partes review as to all Challenged Claims of the ’930 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not present an alternative definition at this stage of the proceeding. See Prelim. Resp. 13 (“For the purposes of this Preliminary Response only, [Patent Owner] applies [Petitioner’s] proposed level of skill in the art.”). In determining the level of ordinary skill in the art, various factors 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) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues, at least at this stage of the proceeding, that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’930 patent, the background technical field, the prior art, and Petitioner’s proposed and unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Dr. Fischer (Ex. 1005 ¶ 44).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner submits “no constructions are necessary to resolve any disputes identified in this Petition” (Pet. 14), and “[Patent Owner] agrees,” contending that “[a]ll terms and phrases in the ’930 patent have their ordinary and customary meanings, which are readily apparent, and no further construction is required” (Prelim. Resp. 14). In determining whether Petitioner has demonstrated a reasonable likelihood of establishing unpatentability of at least one challenged claim in this case, we need not and do not construe expressly any claim terms. See Nidec, 868 F.3d at 1017.4 4 Although Patent Owner contends that it is not providing a construction of any claim term, we are cognizant that Patent Owner presents what amounts to an interpretation of the claim term “first athletic movement” within the body of its Preliminary Response in alleging deficiencies in the prior art vis- à-vis the claims of the ’930 patent. See, e.g., Prelim. Resp. 16–18.” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“interpretation of a “first athletic movement” in claim 1 to mean a “single athletic movement” is belied by the Specification and lacks sufficient support in the record before us. Indeed, the ’930 patent explicitly defines an “athletic movement” to “include[] movements [plural] relating to fitness, exercise, flexibility, including movements that may be part of one or more single and multiple participant athletic competitions, exercise routines, and/or combinations thereof” (Ex. 1001, 4:7–11 (emphases added)), and explains that “[t]he athletic movement may comprise a plurality of drills configured to test a plurality of fitness attributes and/or a plurality of athleticism attributes of the user” (id. at code (57) (emphases added)). The ’930 patent explains that “[a] combinatory score, a component sub-score, or values utilized in determining a score and/or sub-score . . . may be calculated or derived from the user’s performance during [ ] physical movements with predefined criteria, such as predefined drills or tests [both plural].” Ex. 1001, 22:43–48 (emphases added). The ’930 patent also explains that “system 100 may prompt user 124 to perform one or more exercises that are part of a drill,” where “[a] drill may include a predetermined number of exercises (e.g., pushups, squats, lunges, etc.) where system 100 prompts the user to perform a number of repetitions of each exercise.” Id. at 22:54–59 (emphases added). In addition, the ’930 patent states, “[c]alculation of the combinatory score and/or the sub-scores may be based upon combining a plurality of drill scores.” Id. at 24:63–65 (emphasis added). Patent Owner does not address any of these explicit disclosures in the ’930 patent in proffering, in conclusory form, that “a first athletic movement” means a “single” athletic movement or exercise. Based on the foregoing disclosures in the ’930 patent, and contrary to Patent Owner’s arguments, we preliminarily find that a “first athletic movement” does not exclude multiple “movements,” exercises, or drills, performed in response to “multiple” instructions (or a set of instructions directed to such multiple movements, exercises, or drills). See Ex. 1001, 26:57–60 (Dependent Claim 6: “[W]herein the first instructions and the second instructions include a plurality of drills configured to test a plurality of fitness attributes of the user and a plurality of athleticism attributes of the user.” (emphases added)). In other words, we preliminarily find that multiple “movements,” exercises, or drills may constitute a “first athletic movement,” and that activity data representing such multiple movements, exercises, or drills collectively may constitute “first activity data.” See Ex. 1005 ¶ 106 (“It should be noted that there is nothing in the ’930 patent limiting the athletic activity or athletic movement to a single drill or test.”), ¶ 65 (“The ’930 patent makes it clear that it is NOT necessary to generate a single combined number or score, and that ‘In certain embodiments, the combinatory score may be represented by the two individual sub-scores.’” (quoting Ex. 1001, 22:34–36) (emphasis altered)).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,188,930 - PTAB · May 17, 2023 · IPR2023-00146 · APJ Josiah C Cocks · IPR · Institution
The Board instituted review of claims 1–7 and 24–31 on all petition grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the record before us, and having not yet heard from Patent Owner, we determine that Petitioner, for purposes of instituting an inter partes review, has adequately accounted for all the features required by claims 1–7 and 24–31. See Pet. 27–73. III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[7] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15 (citing (Ex. 1002 ¶¶ 101–103); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima, 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“and 24. Petitioner contends that, to the extent “smartlink module” is limiting, a person of ordinary skill in the art would understand that it means “a device that includes (1) a processor, (2) a wireless data channel to wirelessly communicate transaction data between said processor and a third party terminal, and (3) a second data channel electronically coupled to a mobile communication device.” Pet. 12 (citing Ex. 1002 ¶¶ 69–70).8 Petitioner also contends that such meaning is consistent with the disclosure of the ’792 patent. Id. at 12–13. For purposes of this Decision, we adopt Petitioner’s proposal as to the meaning of “smartlink module.” Petition also contends that a person of ordinary skill in the art “would understand the ‘module’ [in dependent claims 2–7 and 25–31] to be referring to the ‘smartlink module’ [in their respective independent claims].” Pet. 13 (citing Ex. 1002 ¶¶ 68, 78). We also accept that understanding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“3. Remaining claim terms We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any other claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs, Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792 - PTAB · Mar 14, 2023 · IPR2022-01442 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–30 on all grounds in the Petition, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“incorporates by reference Miltenberger’s teachings (see Prelim. Resp. 16; Ex. 1004, 23:35–37), the record before us simply does not convey that it is the entirety, or even the majority, of any incorporated content that forms the basis of the Petition’s proposed grounds of unpatentability based on Bryson.13 We agree with Petitioner that Miltenberger seemingly does not describe content associated with the development of “player communities,” or, in connection with those communities, the presentation of only legal gaming options to a player based on device location. See, e.g., Pet. 88 n.13. It is Petitioner’s view that such disclosure is distinctly present in Bryson and is offered to account for limitations of the claims that Patent Owner expressly represented were absent from Miltenberger’s disclosure. See, e.g., Ex. 1002, 242–243, 132. It is clear, in our view, that Petitioner relies on content in Bryson that goes beyond Miltenberger’s teachings, and that such content is offered to present new prior art teachings and new argument that previously were not presented to the Office. That Bryson and Miltenberger may share some other content, as emphasized by Patent Owner (see, e.g., Prelim. Resp. 19–21), simply does not give rise to a determination that 13 There is no indication in the record that Bryson previously was before the Examiner during prosecution of the application that matured as the ’220 patent. Bryson’s additional disclosure should not now be considered on its own merit in evaluating the patentability of claims of the ’220 patent.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 14
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“constituting an “algorithm” that delineates the particular structure of the claimed “gaming option creation module,” it is difficult, on this record, to agree with that determination. Indeed, although the Specification of the ’220 patent provides description of the operation and configuration of “gaming option creation module 150” (see, e.g., Ex. 1001, Figs. 1, 2; 7:46– 49; 10:13–17), the entirety of the content of the ’220 patent identified by Patent Owner omits any reference to gaming option creation module 150. Furthermore, the ’220 patent specifically links the gaming option creation module to components readily identified as structural, such as “special-purpose hardware (e.g., one or more ASICS, PLDs, FPGAs, or the like)” and “programmable circuitry (e.g., one or more microprocessors, microcontrollers, or the like)” (see, e.g., Ex. 1001, 8:61–9:5) that form no part of Patent Owner’s assertion as to the corresponding structure of the claimed gaming option creation module. The omission of any assessment of the description of any gaming option creation module (e.g., component 150) in the ’220 patent, or the readily identifiable structural components attributed to such a module, casts doubt on the correctness of Patent Owner’s claim construction position. On the record before us, we are not satisfied that Patent Owner has established the corresponding structure of the claimed gaming option creation module. We are mindful of Patent Owner’s argument that Petitioner’s proffered constructions of the Module Terms are deficient on the merits, because Petitioner “fails to properly address the algorithms” per Federal Circuit and PTAB case law concerning means-plus-function limitations, “and instead merely identifies structure and generic functions.” Prelim. Resp. 60 (emphasis added) (citing Pet. 32–35). We, however, also do not agree with Patent Owner, at this time, that Petitioner’s constructions are offered entirely “absent any explanation” and provide “no clarity.” See Prelim. Resp. 56–60. Nevertheless, we do not need to address these arguments at the present time. They might lead to a subset of the claims of the ’220 patent surviving the present proceeding, but do not affect the patentability of several other claims at issue in the present proceeding, including independent claims 1, 8, 15, and 30. See 35 U.S.C. § 314(a) (authorizing institution of inter partes review if there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims). Thus, we leave resolution of these issues raised by Patent Owner to a full trial on the merits, which will afford Petitioner the opportunity to defend the Petition against Patent Owner’s arguments, if Patent Owner opts to maintain them in its post-institution Papers.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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. § 42.100(b). When applying that standard, we interpret the claim language as it would have been understood by one of ordinary skill in the art in light of the specification. Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1279–80 (Fed. Cir. 2017). Thus, we give claim terms their ordinary and customary meaning as understood by an ordinarily skilled artisan. See Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,497,220
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.