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

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

  RulingsFinal written decision

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

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

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

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

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

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

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

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

  Patent outcomesUS 11,998,854 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 11,998,854
• ROKU, Inc. v. Videolabs, Inc.Instituted
  PTAB · Dec 9, 2024 · IPR2024-01025 · APJ Karl D Easthom · IPR · Institution

  The Board instituted IPR on claims 100–109 and 111 on all petitioned grounds, finding a reasonable likelihood of success on anticipation by Russ and obviousness over Russ with Robert or Eskicioglu.

  RulingsInstitution decision

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

    “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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 100–109 and 111 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “someone having “a bachelor’s degree in computer science, electrical engineering, or a related field, and approximately two or more years of experience in multi-media content distribution and management. Additional education could substitute for professional experience, and vice versa.” Pet. 13. Patent Owner applies Petitioner’s proposed definition for purposes of its Preliminary Response. Prelim. Resp. 5 (citing Malek Dec. Ex. 2001 ¶ 38).7” slip op. at 7

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

    “on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation.” slip op. at 9

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 8,291,236
• Aylo Freesites Ltd v. Wellcomemat, LLCInstituted
  PTAB · Dec 6, 2024 · IPR2024-01101 · APJ Brian P Murphy · IPR · Institution

  The Board instituted IPR of claim 17 on all five grounds, finding a reasonable likelihood of prevailing based on Gupta and Vasilevsky with Logan.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314, which provides that 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to challenged claim 17 in the ’286 patent. Accordingly, we institute an inter partes review of claim 17 of the ’286 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

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

    “The USPTO Director has issued “binding agency guidance” for application of the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post- Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”), 3.12 Pursuant to the Guidance Memo, “the PTAB will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Id. (citing Sotera). Petitioner has filed a Sotera stipulation providing that: Petitioner and its real parties-in-interest will not pursue in the related district court proceeding where Petitioner is a defendant (WellcomeMat, LLC v. Aylo Holdings Sarl et al., No. 2:23-cv-00483-JRG (E.D. Tex.)) an invalidity challenge of claim 17 based on “any ground that [Petitioner] raised or” slip op. at 12

  • Skill levelSkill level board ownOther

    “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) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record.” slip op. at 10

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

    “B. Claim Construction For purposes of this proceeding, Petitioner and Patent Owner both advocate for the “plain and ordinary meaning” of the claim terms without further analysis. Pet. 15 (citing Ex. 1002 ¶¶ 72–73); Prelim. Resp. 14–15. On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are invited to address claim construction in their briefs. III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) - FINTIV Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a)” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,307,286
• Aylo Freesites Ltd v. Wellcomemat, LLCInstituted
  PTAB · Sep 5, 2024 · IPR2024-00710 · APJ Brian P Murphy · IPR · Institution

  The Board instituted review of claims 13–15 and 18–20 on all five asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 314, which provides that 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’286 patent. Accordingly, we institute an inter partes review of claims 13–15 and 18–20 of the ’286 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2

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

    “demonstrated so-called “compelling merits” in its Grounds of challenge. Pet. 5; Prelim. Resp. 47; Reply 5; Sur-Reply 4–5. The Director has clarified her Guidance Memo, such that “in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” CommScope Techns. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23, 4–5 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Because we determine that Fintiv factors 1–5 collectively weigh against exercising our discretion to deny institution, we do not reach the question of whether Petitioner has demonstrated “compelling merits” in support of its unpatentability challenges. Conclusion Regarding Discretionary Denial On balance, we determine that Fintiv factors 1–5 collectively weigh against exercising our discretion to deny institution. Therefore, we decline to exercise our discretion to deny institution of inter partes review under Section 314(a).” slip op. at 19

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

    “On the present record, we determine Petitioner’s argument and evidence show a reasonable likelihood it would prevail in showing the unpatentability of independent claim 13 as anticipated by Gupta.” slip op. at 29

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

    “On the present record, Patent Owner’s arguments do not address Dr. Houh’s detailed testimony or Petitioner’s proposed substitution of the Internet as taught by Logan, in place of the HAN in Vasilevsky’s system. For example, the substitution of the Internet for the HAN in Vasilevsky would appear to provide the centralized media server as a server-side “video editing environment” recited in claim Limitation 13.1. See Ex. 1002 ¶¶ 318 (“processor and memory [] at the server-side such that the centralized media server executes software for serving clients”), 319 (“computer-readable media of Vasilevsky comprises a video editing environment in the form of software for both editing bookmarks and streaming video, executed by the centralized media server and storages”), 321 (“Logan . . . teaches implementing a television program bookmarking system using a public network, i.e., the Internet”), 322 (“Logan discloses the desirability of implementing its bookmarking system over a public network such as the Internet”), 323 (proposed “modification would have beneficially allowed more users access via a wider public network to participate in the system to add, modify and playback video bookmarks”). On the present record, Dr. Houh’s declaration testimony stands unrebutted and provides a motivation for a POSITA to combine references with a reasonable likelihood of success.” slip op. at 38

  § 102 anticipation§ 103 obviousnessDiscretionary denial
  Patents in suitUS 8,307,286
• Logan Outdoor Products, LLC, D/B/A Camp Chef v. Lifetime Products, Inc.Institution denied
  PTAB · Mar 22, 2023 · IPR2022-01467 · APJ Robert L Kinder · IPR · Institution

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

  RulingsInstitution decision

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

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

  • Skill levelSkill level petitioner adoptedDecided for petitioner

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

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

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

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

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

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,292,531
• Glux Visual Effects Tech (Shenzhen) Co. / Leyard Optoelectronic Co. et al. v. Ultravision Technologies, LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-01050 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1, 2, 9, 13, and 20 are unpatentable as anticipated by Guoshi; claims 7, 18, 22–24, 26–28, and 30 are unpatentable as obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not set forth an ordinary artisan’s skill level. See generally PO Resp. Rather, Mr. Credelle, Patent Owner’s expert, states that he “do[es] not disagree with Mr. Flasck’s proposed level of ordinary skill in the art.” Ex. 2002 ¶ 29. In our Institution Decision, we preliminarily adopted Petitioner’s explanation and assessment of the ordinary skill level, determining the position was consistent with the ’294 patent and the asserted prior art. Inst. Dec. 12–13. As neither party challenges our preliminary finding regarding Accordingly, we reaffirm that one of ordinary skill in the art at the time of the invention would have: (i) a bachelor’s degree in mechanical engineering, electrical engineering, or physics, or undergraduate training in an equivalent field, and (ii) at least two years of experience in the design and/or implementation of LED panels. Additional graduate education could substitute for professional experience, and significant work experience could substitute for formal education. See id. at 12 (setting forth and adopting Petitioner’s unopposed position as to the level of ordinary skill in the art) (citing Ex. 1005 ¶¶ 43–49).” slip op. at 11

  • Prior constructionPrior construction adoptedDecided for patent owner

    “be construed so as to not include a cabinet. PO Resp. 18. Patent Owner points out that “[t]he District Court construed the term ‘modular display panel’ to mean ‘interchangeable display panel for a multi-panel modular display configured for use without a cabinet.’” Id. (citing Ex. 1019, 18). And, that “[t]he District Court further construed ‘cabinet’ to mean ‘enclosure separate from the LED panel(s) to protect the LED panel(s) from the environment, including water.’” Id. at 18 (citing Ex. 1021). Patent Owner further contends that Petitioner has agreed to this construction in the District Court proceeding. Id. at 18 n.1 (citing Exs. 2007, 2008). Petitioner does not dispute this construction. During oral hearing Petitioner’s Counsel stated “I think that the parties agree that the display module of the challenged claims do not employ a cabinet.” Tr. 13:33–23. Based on the parties’ apparent agreement, and considering the record before us and the District Court’s Claim Construction Memorandum (Ex. 1019), we see no reason not to apply the District Court’s claim construction. See 37 CFR § 42.100(b) (Providing that any claim construction determination in a related civil action must be considered by the Board.). Accordingly, “modular display panel” means “interchangeable display panel for a multi-panel modular display configured for use without a cabinet.” Ex. 1019, 18.” slip op. at 13

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

    “relevant to the claim construction analysis” and “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (citation omitted). The ’294 patent Specification reveals that the electronic display panels are intended to be used in interior and also exterior weather dependent environments, and without a cabinet. See Ex. 1001, 5:36–43, 58– 60 (The detailed description explaining that “[t]hese displays are designed to protect against weather, without a heavy cabinet,” and that, “weather is the number one culprit for damage to LED displays.”). The ’294 patent further describes LED panels where “the display is IP 67 rated and therefore waterproof and corrosion resistant, . . . in other embodiments, equipment can be designed with an IP 68 rating to operate completely underwater.” Id at 5:48–55. The ’294 patent describes further that, “where weatherproofing is not as significant, the panels can have an IP 65 or IP 66 rating.” Id. at 5:56– 57. 7 Exhibit 2010 replaces Exhibit 2004 which was a “rough draft transcript” that was uncertified. Ex. 2004, 1:9. During the hearing, the panel requested a certified transcript of the deposition record. See Tr. 5:22–6:16. We refer to the certified transcript, Ex. 2010, in this opinion. See Ex. 2010, 161. waterproofing where the higher the IP rating the more waterproof the device becomes. Id. at 5:48–57. Thus, the term “waterproof,” on its face, can cover a range of environmental conditions and IP ratings including “normal weather,” such as snow, rain, and fog as Mr. Flask confirmed during his deposition. Ex. 2010, 31:24–25, 33:10–13. In his Declaration, Mr. Flask also testifies that there are a range of waterproof enclosures, “IP 65 indicates a dust tight enclosure that is waterproof against jets of water[,] and IP 68 indicates a dust tight enclosure that is waterproof against continuous immersion in water.” Ex. 1005 ¶ 58 (citing Ex. 1016, 3). Considered as a whole, Mr. Flask’s testimony is consistent with the ’294 patent Specification—namely that a “waterproof” display can include protection from normal weather conditions as well as when “operat[ing] completely underwater.” Ex. 1001, 5:55.” slip op. at 15

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

    “Guoshi fairly explains that the LEDs are attached on one side, and the power and control modules are attached on the other, i.e. first and second, sides of the printed circuit board. Ex. 1008 ¶ 27. Guoshi states that “[t]he LED light emitting units (21) and the power module (22) are separately situated on the two opposite surfaces of the circuit board (20).” Id. Guoshi describes further that “[t]he LED light emitting units (21) are situated on the first surface (28), and the power module (22) and control module are both situated above this second surface (29) and fit with the main body (12).” Reading this description as a whole, we find Guoshi’s description straightforward. Given a plain and ordinary reading of this description we understand that Guoshi’s LEDs are “attached to a first side of the printed circuit board,” and on the opposite side that the power and control module are also “attached to the printed circuit board,” and within “a recess” of the casing as recited in claim 1. Also, there is no dispute that Guoshi teaches the” slip op. at 38

  Patent outcomesUS 9,978,294 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,978,294
• Machinex Industries, Inc. v. JJG IP Holdings, LLCAll claims unpatentable
  PTAB · Oct 4, 2021 · IPR2020-00899 · APJ Michael L Woods · IPR · Final written decision

  Claims 1–16 are unpatentable under the asserted §103 grounds, including combinations based on Carlsohn and Arleth.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “B. Level of Ordinary Skill in the Art In determining whether an invention would have been obvious at the time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966). citations will be to the exhibits’ page numbers, rather than the native page numbers. 4 By e-mail communication from the Board on June 25, 2020, we authorized Petitioner to file a corrected Exhibit 1008. Our reference to Exhibit 1008 is to the corrected, second-filed exhibit, filed on July 7, 2020. Factors pertinent to a determination of the level of ordinary skill in the art include: (1) educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of workers active in the field. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be present in every case, and one or more of these or other factors may predominate in a particular case. Id. Moreover, these factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. Ltd, Inc. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). In determining a level of ordinary skill, we also may look to the prior art, which may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In the Institution Decision, we determined that a person having” slip op. at 9

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

    “plain and ordinary meaning, and determined that the plain and ordinary meaning of “proximate” is “nearby. Inst. Dec. 18. Accordingly, we construed “disposed proximate to a visible or infrared source,” as recited in Limitation 1(c), to mean “disposed nearby” the visible or infrared source. See id. We further note that during prosecution of the ’346 patent, the applicant acknowledged that the term “‘proximate’ is broad in its scope.” See Ex. 1020, 70 (emphasis added).” slip op. at 20

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “1. Relevant Law Petitioner bears the burden of establishing by a preponderance of the” slip op. at 27

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

    “3. Independent Claim 1 We address the claim limitations using Petitioner’s nomenclature as” slip op. at 41

  Patent outcomesUS 9,950,346 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 9,950,346
• Intel Corporation v. Hera Wireless S.A.All claims unpatentable
  PTAB · Mar 12, 2020 · IPR2018-01543 · APJ John A Hudalla · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over both instituted grounds; the motion to amend with substitute claims 3 and 4 is denied.

  RulingsFinal written decision

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

    “an inter partes review of claims 1 and 2 of U.S. Patent No. 8,295,400 B2 (Ex. 1001, “the ’400 patent”). Paper 2 (“Pet.”). Patent Owner, Hera Wireless S.A. (“Patent Owner”), filed a Preliminary Response. Papers 6, 7 (“Prelim. Resp.”). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on March 14, 2019, as to all challenged claims and all grounds of unpatentability. Paper 12 (“Dec. on Inst.”).” slip op. at 1

  • Skill levelDecided for petitioner

    “Level of Ordinary Skill in the Art In the Decision on Institution, we determined that a person of ordinary skill in the art would have had a Master’s degree in Electrical Engineering, at least 2–4 years of academic or industry experience designing and implementing digital wireless communication systems, and familiarity with the family of IEEE 802.11 standards. Dec. on Inst. 13–14 (citing Ex. 1002 ¶ 53). Neither party disputes our determination. We discern no reason to change our determination and apply it for purposes of this Decision.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “TGn-Sync.” Id. (citing Ex. 1002 ¶¶ 212–216). Given TGn-Sync’s express reliance on earlier 802.11 standards (see, e.g., Ex. 1003, 3, 16, 17) and Dr. Wicker’s unrebutted testimony about how TGn-Sync is an extension of 802.11a (see Ex. 1002 ¶¶ 212–216), we are persuaded that an ordinarily skilled artisan would have had reasons to combine the references to make the claimed subject matter.” slip op. at 26

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “We are persuaded that 802.11a qualifies as prior art under § 102(b) based on Mr. Grenier’s unrebutted testimony. 802.11a’s initial publication date of December 30, 1999, is more than one year before the U.S. filing date of the application that led to the ’400 patent, which is September 9, 2005. Ex. 1001, code (22); Ex. 1032 ¶ 11.” slip op. at 15

  Patent outcomesUS 8,295,400 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,295,400
• Yamaha Golf Car Company v. Club Car, LLCNo claims unpatentable
  PTAB · Apr 2, 2019 · IPR2017-02144 · APJ Robert L Kinder · IPR · Final written decision

  The Board found claims 11 and 17–19 not shown unpatentable: claim 11 was entitled to priority over the ’918 Publication, and the obviousness challenge to claims 17–19 was unsupported.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedReference not prior artDecided for patent owner

    “slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17

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

    “slows the speed of the golf car until it returns to the course—“[Y]our cart has been slowed down because you are outside the boundaries of the course. Your car will continue to slow down until you return to the course.” Ex. 1004, 30 (emphases added) (also showing that “Reduce Maximum Speed” may be adjusted to a select speed as similarly set forth in Figure 3 of the ’569 patent). The ’894 Provisional specifies that the Curtis 1510 controller includes a configuration setting for “REVERSE SPEED,” and we find persuasive Mr. Andrews’ testimony that this control setting is separate from the maximum forward speed settings, “M1 MAX SPEED,” “M2 MAX SPEED,” “M3 MAX SPEED,” and “M4 (HIGH) MAX SPEED.” Ex. 1004, 12; Ex. 2009 ¶ 58 (“‘REVERSE SPEED’ is a separate configuration setting that the controller can configure based on GPS location.”). We find that these disclosures in the ’894 Provisional—slowing or stopping the car until it reverses course and separate configurable settings for reverse speed in the motor controller—establish affirmative support for a configuration as claimed where the car’s forward movement is disabled, but the car may still move in a reverse direction, as required by claim 11. Because the maximum forward speed can be set to zero to stop the vehicle from further movement towards the restricted area, but setting the maximum speed to zero leaves the separate “REVERSE SPEED” configuration setting in the motor controller unchanged, Patent Owner has shown how the vehicle is capable of operation only in a reverse direction. See Ex. 1004, 10, 12, 16, 30. From a functional capability, there is simply no difference between the descriptions found in the ’894 Provisional and the claimed limitations. See Ex. 2009 ¶¶ 49–60. Thus, Patent Owner has met its burden of showing adequate written description support for claim 11 in the earlier ’894 Provisional. Accordingly, the ’918 Publication does not qualify as prior art against claim 11. Based on the final trial record before us, Petitioner does not present sufficient arguments and credible evidence to support a finding that claim 11 is anticipated by the ’918 Publication.” slip op. at 17

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

    “sufficiently how the ’918 Publication’s disclosure of a “signal . . . of the violation” (Ex. 1003 ¶ 68) also teaches or suggests the additional claim requirements of “the driver interface unit . . . operable to communicate an alarm to the base station of a controller limiting the performance of a driver command” as required by claim 17. Petitioner recognizes the distinction by arguing “that the system could also provide a message to the course personnel . . . of any remedial corrective measures taken in response.” Pet. 25 (emphasis added). Based on the evidence cited, the ’918 Publication does not provide any such notification. Petitioner cannot suggest that a reference could have a feature that it does not have without some rational basis as to why such a feature would have been suggested by the reference. Mr. Breen’s explanation mirrors Petitioner’s contention (Ex. 1001 ¶ 277) and likewise states “that the system could also provide a message to the course personnel” (emphasis added) but no further explanation is provided as to how this unsupported conclusion was reached. Petitioner has also failed to lay the necessary foundation to establish that “common sense” could fill the gap for the missing limitation, or provide a basis for modifying the ’918 Publication to teach the claim 17 limitation. We recognize that in certain instances “common sense” can be used to supply the missing claim limitation, but only if the art is “unusually simple and the [patented] technology particularly straightforward.” Arendi Sarl v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016). In this proceeding, we have no testimony or evidence to establish either condition is met. Neither Petitioner nor Mr. Breen explain adequately why the limitations of claim 17” slip op. at 24

  Patent outcomesUS 7,480,569 not shown unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,480,569
• Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentable
  PTAB · Dec 28, 2018 · IPR2017-00440 · APJ Robert L Kinder · IPR · Final written decision

  Claims 1–4, 6–7, 10–16, 18, and 20 are unpatentable; claims 5 and 8 are not shown unpatentable. Substitute claims 21, 30, and 38 are unpatentable as obvious over Sackier and Kirsch.

  RulingsFinal written decision

  • Expert testimonyOther

    “3. Dr. Nicosia’s Declaration in support of its Opposition to Patent” slip op. at 7

  • Skill levelOther

    “B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the” slip op. at 16

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

    “B. “clip” The Parties now agree that “clip,” as the term is generally understood,” slip op. at 14

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

    “as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We conclude that Petitioner has not met its burden of showing this element to be present in Sackier because Petitioner combines features from distinct embodiments in Sackier without establishing persuasively that those embodiments are so directly related to each other such that one of ordinary skill in the art, looking at the reference as a whole, would recognize a disclosure of the invention as claimed. Accordingly, although a very close call, we conclude that Petitioner has failed to demonstrate anticipation of claims 1, 12, and 20 by Sackier for this reason.” slip op. at 21

  Patent outcomesUS 9,271,731 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,271,731

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.