• Charles River Laboratories, Inc. v. Seikagaku CorporationInstituted
  PTAB · Sep 9, 2025 · PGR2025-00023 · APJ Michael J Fitzpatrick · PGR · Institution

  Instituted PGR on claims 1–9 because the Board found it more likely than not that at least one challenged claim is unpatentable over the ’629 publication.

  RulingsInstitution decision

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

    “Institution of a post-grant review requires that “the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable” or that “the petition raises a novel or unsettled legal question that is important to other patents or patent applications.” 35 U.S.C. § 324(a)–(b). Determining whether to institute has been delegated to the Board. See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). Upon consideration of the Petition and the Preliminary Response, and for the reasons explained below, we determine that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable. Accordingly, we grant the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “III. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends a person of ordinary skill in the art (“POSITA”) would have a Ph.D. degree in biological, chemical or biochemical engineering, molecular biology, or biochemistry and at least two years of experience in the field of utilizing or assessing horseshoe crab zymogen proteins (lysate, purified native and/or recombinantly produced) for endotoxin detection and quantitation. More education could substitute for experience to a certain extent, and vice versa. Pet. 22 (citing Ex. 1003 ¶¶48–49). Patent Owner does not dispute Petitioner’s description of a POSITA in its Preliminary Response. Prelim. Resp. 10. 1 In addition to other changes to Title 35, the AIA introduced amendments to 35 U.S.C. § 102. Because Patent Owner concedes that the ’725 application “contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013” (Ex. 1022), the AIA version of § 102 applies to the ’109 patent. AIA § 3(n)(1)(B); Ex. 1001, 1:11–14 (claiming priority to the ’725 application). 2 US 2019/0241629 A1, published August 8, 2019 (“the ’629 publication” (Ex. 1015)). At this stage, we find Petitioner’s description of the level of ordinary skill in the art sufficiently supported by the record and apply it for purposes of this decision.” slip op. at 9

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

    “Neither party proposes an express construction of any claim term. See Pet. 22–23; Prelim. Resp. 10. We determine that no express claim construction is necessary based on the present record.” slip op. at 10

  • Disclosure Requirements (§112) › Written description (Ariad)Not shown unpatentable

    “To show that the claims of the ’109 patent are unpatentable for lack of written description, Petitioner would have needed to show that the specification as filed (i.e., the ’420 application) fails to reasonably convey to those skilled in the art that Patent Owner had possession of the claimed subject matter as of the July 3, 2023, filing date. Petitioner did not. Pet. 23– 24. Nor does Petitioner’s declarant offer testimony that could support such a showing. See Ex. 1003 ¶50 (“I have been asked to provide my opinions as to the state of the art in this field for purposes of determining what the inventors disclosed as their invention as of December 10, 2013.”), ¶51 (“Whenever I offer an opinion in this declaration about the knowledge of a POSA, the manner in which a POSA would have understood the claims of the ’109 patent or its description, the manner in which a POSA would have understood the prior art, or what a POSA would have been led to do based on the prior art, I am referencing the December 10, 2013 timeframe.”). Although the ’420 application is essentially identical to the ’767 application, the person of ordinary skill in 2013 is not the same as in 2023. See Ariad, 598 F.3d at 1351 (“[T]he [written description] test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” (emphasis added)). Thus, the information presented in the Petition, which is limited to the perspective of a 2013 POSITA, does not demonstrate that it is more likely than not that at least 1 of the claims challenged in the Petition is unpatentable for lack of written description.” slip op. at 12

  Claim construction§ 102 anticipation§ 112 disclosure
  Patents in suitUS 11,959,109
• Charles River Laboratories, Inc. v. Seikagaku CorporationInstituted
  PTAB · Sep 9, 2025 · IPR2025-00440 · APJ Tawen Chang · IPR · Institution

  The Board instituted IPR of claim 21 on both asserted § 103 grounds, finding a reasonable likelihood that claim 21 is obvious over Mizumura with the ’498 PCT and over Mizumura with McClymont.

  RulingsInstitution decision

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

    “We have authority under 35 U.S.C. § 314(a), 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.” For the reasons discussed below, we determine Petitioner has demonstrated a reasonable likelihood that the challenged claim of the ’318 patent is unpatentable. Accordingly, we institute an inter partes review of the challenged claim on each of the Grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2

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

    “Nevertheless, we determine that the contrary evidence Petitioner has cited suffices to establish a reasonable likelihood of success at this preliminary stage of the proceeding. In this regard, we also note Dr. Jain’s testimony — currently unrebutted — that an ordinarily skilled artisan would have known, based on Tokunaga’s sequence comparisons of Factor C proteins, that “certain sequence differences between [Limulus polyphemus] and Tachypleus tridentatus were non-conservative (i.e., potentially giving rise to changes in function in terms of enzymatic activity of Factor C).” Ex. 1002 ¶ 94 (citing Ex. 1022, 157). We likewise note Dr. Jain’s testimony that such artisan would have recognized Tokunaga’s conclusion, regarding “immunological and biochemical properties” of Factor C proteins of the two different horseshoe crab species, to be “based on only gross biophysical-biochemical properties” that are not “granular enough” to predict functional properties such as residual activity in presence of specific ions. Ex. 1002 ¶ 100.” slip op. at 22

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledOther

    “submitted in a different proceeding and in a different forum, and our rules contemplate objections to admissibility only after institution. See 37 C.F.R. § 42.64(b)(1) (“Any objection to evidence submitted during a preliminary proceeding must be filed within ten business days of the institution of the trial.”); also compare Fed. R. Evid. 801(c) (defining hearsay as a statement, not made at the current trial or hearing, “offer[ed] in evidence to prove the truth of the matter asserted”), with Fed. R. Evid. 801(d)(2) (excluding from hearsay statement offered against an opposing party where statement was made by “a person whom the party authorized to make a statement on the subject” or by a “party’s agent or employee on a matter within the scope of that relationship and while it existed”). Nevertheless, as discussed above, Petitioner has provided contrary evidence, including statements from Patent Owner’s patent application, suggesting that, “due to the various differences and diversity of biomolecules depending on the genus and species of the horseshoe crab,” it had not been possible “to accurately determine the full-length sequence structure, expression, and function of [Limulus] proteins and genes using conventional methods” more than 20 years after complete gene and amino sequences from two Tachypleus horseshoe crab species had been reported. Pet. 35 (citing, e.g., Ex. 1005 ¶¶ 12–17). Thus, even if we were to take the Frohman Declaration into account, we find that Petitioner has established a reasonable likelihood 28 of success that the ’767 application disclosures did not enable an ordinarily skilled artisan to make and use the invention of the challenged claim without undue experimentation. Furthermore, assuming that the disclosures in ’767 application would have enabled an ordinarily skilled artisan to express recombinant Limulus polyphemus Factor C protein in HEK293, we find Petitioner has established, sufficient for purposes of institution, that the disclosures do not enable an ordinarily skilled artisan to make such a protein exhibiting the “full scope” of the claimed residual activity, without undue experimentation. Patent Owner cites to disclosures in the ’767 application that (1) describe how to produce recombinant Factor C in HEK293 cells and measure residual activity, (2) suggest “Factor C expressed in mammalian cells can have low susceptibility to activity inhibition by ions,” and (3) provide examples where residual activity met the required minimum. Prelim. Resp. 26–27, 32–34. Nevertheless, whether an ordinarily skilled artisan would have been able to make, based on these disclosures and without undue experimentation, a recombinant Factor C protein having residual activity encompassed by claim 21 but higher — even significantly higher — than that achieved in the example, is a fact intensive issue that would benefit from further development during trial.15 See, e.g., In re” slip op. at 28

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedOther

    “the proceeding, and for the reasons set forth below, we are persuaded that Petitioner has shown sufficiently, for purposes of institution, that the ’767 application does not provide adequate written description support for claim 21 of the ’318 patent and that, accordingly, Mizumura, the ’498 PCT, and McClymont qualify as prior art to the challenged claim.” slip op. at 19

  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,236,318
• Lululemon USA Inc. v. Nike, Inc.All claims unpatentable
  PTAB · Aug 6, 2025 · IPR2024-00460 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–21 are unpatentable: claims 1–21 under Nishida grounds and claims 11 and 21 also over Nishida with Zuckerman; Zuckerman-only grounds fail for lack of a surrounding structure.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that: A hypothetical person of ordinary skill in the art (“POSA”) would have had at least a bachelor’s degree in textile engineering, mechanical engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear. Ex.1003, ¶¶34-37. For individuals with different educational backgrounds, a person could still be of ordinary skill in the art provided that person’s additional experience compensates for any differences in that person’s education as stated above. Id., ¶37. Pet. 14–15. Patent Owner states that, “[f]or purposes of this proceeding, Nike applies lululemon’s proposed level of skill in the art.” PO Resp. 13. Petitioner’s definition is consistent with 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.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Id. at 99:12–25. Dr. Brookstein stated during his deposition that he has “49 years of experience of teaching textile engineering.” Id. at 97:6–8. We credit Dr. Brookstein’s testimony over that of Dr. Pastore’s because it is consistent with the reference and based on decades of experience in the textile field. Nishida’s claim 1 states that, “during the production of the material web (1), [shoe patterns] . . . are produced by . . . a textile production method within the material web.” Ex. 1005, 9. We find that Nishida’s claim language discloses the recited, “simultaneously knitting a textile element with a surrounding textile structure.”” slip op. at 22

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

    “We find the District Court’s reasoning persuasive, and we, like the District Court, decline to adopt Petitioner’s overly broad proposed construction. However, for purposes of deciding the dispositive fact issue before us, we need not determine the precise boundaries of “surrounding textile structure,” for example whether it completely or mostly encircles the textile element, and if “mostly,” what percentage of encircling is required. See Pet. Reply 2 (Petitioner characterizing Patent Owner’s position as “mostly” means over 50%); id. at 4 (Petitioner impliedly arguing that the “surrounding” need not be complete, i.e., 100%); PO Sur-reply 3–4 (Patent Owner arguing that “Zuckerman’s textile structures . . . each abut only about 25% of the periphery of Zuckerman’s blank.”). We find that a person of ordinary skill in the art would not understand the portion of Zuckerman’s strip 13 in purple to surround the green blank 11 (textile element) under any reasonable construction of “surrounding textile structure.” Dr. Pastore testifies that “Zuckerman discloses two separate textile structures adjacent the blank—one on each side . . . they abut only two sides of Zuckerman’s blank, with each structure abutting only about a quarter of the blank’s periphery,” and opines that “a POSITA would not have understood these two separate structures, designated by purple in the figure above, to be a textile structure ‘surrounding’ the blank [shown in green].” Ex. 2003 ¶ 54. We find Dr. Pastore’s tesimony credible as it is consistent with Zuckerman’s Figure and with the plain and ordinary meaning of “surrounding” and with the Specification of the ’749 patent (particularly Figure 9). Dr. Brookstein’s testimony, on the other hand, is based on Petitioner’s overly broad proposed construction—that any part of a textile area that is not a textile element is “surrounding textile structure”—” slip op. at 44

  Patent outcomesUS 8,266,749 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,266,749
• Neurent Medical Inc. / Neurent Medical Ltd. v. Aerin Medical Inc.All claims unpatentable
  PTAB · Jul 11, 2025 · IPR2024-00282 · APJ Zhenyu Yang · IPR · Final written decision

  Claims 1–4 and 7–9 are unpatentable as obvious, principally over Edwards-’535 and Stern for claims 1–3 and 7–9, and Makower, Edwards-’535, and Stern for claims 1, 2, and 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “To the extent Petitioner’s definition could be interpreted to encompass someone who only has experience using or testing unrelated medical devices, we tend to agree with Patent Owner. But it does not follow that experience with the clinical use and testing of medical devices, including those that deliver energy to tissue, would not be relevant background for one of ordinary skill. See Reply 27–28 (identifying evidence that clinical experience is relevant). The devices and methods in the challenged patent and asserted prior art are designed to be used by clinicians. Accordingly, clinical experience using and testing them would inform their design and therefore be relevant experience for one of ordinary skill in the art. For these reasons, we do not adopt Patent Owner’s proposed modification of Petitioner’s definition, which would remove clinical use and testing from the list of activities in Petitioner’s POSITA definition. See PO Resp. 7 (proposing redlines). Instead, after reviewing the record, we adopt Petitioner’s definition as it is consistent with the prior art’s demonstration of the level of ordinary skill in the art at the time of the invention. Regardless, Petitioner’s declarant, Dr. Martin, is qualified to offer opinions under either definition. Moreover, the parties do not argue that their respective position would be different under either POSITA definition. See PO Resp. 8 (Patent Owner arguing that the challenges fail “[r]egardless of how a POSITA is defined”); Ex. 1083 ¶ 88 (Dr. Martin testifying that his opinions “remain the same regardless of which definition applies”). Accordingly, all of the findings and conclusions herein would be the same under either side’s definition of a POSITA.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “Petitioner argues that the part of claim 1’s preamble “to treat rhinitis” is not limiting. Pet. 18. According to Petitioner, the body of claim 1 recites a structurally complete apparatus, and the preamble only states an intended use for the device without limiting the claimed structure. Id. at 18–19. Patent Owner neither addresses this issue, nor proposes any other claim construction. PO Resp. 13 (“Patent Owner believes that no claim constructions are required to resolve the issues raised [in this IPR].”). On this record, we find Petitioner’s argument persuasive and determine that the part of claim 1’s preamble “to treat rhinitis” is not limiting.” slip op. at 9

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

    “techniques of delivering bipolar RF ablation energy through expandable devices to the mucosal tissue of different body cavities.” Id. at 39. According to Petitioner, “combining Edwards-’535 and Stern involves applying Stern’s known bipolar pairing technique to Edwards-’535’s known device that was ready for improvement (because Edwards-’535 omits electrode wiring details) to yield predictable results.” Id. Thus, Petitioner concludes that an ordinarily skilled artisan would have had a reasonable expectation of success when modifying Edwards-’535 in view of Stern. Id. at 38–40. Patent Owner does not dispute Petitioner’s mapping for claim limitations 1[a]-1[c] and 1[f] above, nor does Patent Owner challenge Petitioner’s reasoning for combining Edwards-’535 with Stern. See PO Resp. 14. Patent Owner, however, argues that Petitioner has failed to show Stern teaches limitations 1[d] and 1[e] “because Stern teaches a device comprising only a single pair of bipolar radiofrequency electrodes and a single radiofrequency output channel.” Id. We find that a POSITA would have been motivated to combine the teachings of Edwards-’535 and Stern and would have had a reasonable expectation of success in doing so for the reasons set forth in the Petition. We also find that the articulated combination of Edwards-’535 and Stern teaches all of the limitations of claim 1. We adopt Petitioner’s undisputed analysis of claim limitations 1[a]-1[c] and [f] and reasoning for combining the references, and credit its supporting evidence. See Pet. 26–33, 43–46; Ex. 1002 ¶¶ 84–102, 159–165. Below we address the parties’ arguments regarding the disputed limitations 1[d] and 1[e].” slip op. at 17

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

    “In our view, nothing is missing. Stern teaches that the circuitry in Figure 15 is configured to form multiple pairs of bipolar RF electrodes. Ex. 1033, 12:61–13:2 (explaining “[a]s an example” the closing of certain switches in Figure 15 to activate a bipolar pair between electrodes 220 and 224 and a second bipolar pair between electrodes 222 and 226 and further noting that “[c]learly bipolar operation is not limited to these . . . pair couplings” because other switches could be operated to activate a bipolar pair between electrodes 220 and 222); Ex. 1002 ¶¶ 108–111, 135–138. Indeed, Stern consistently uses the word “pairs,” i.e., the plural not the singular, to describe the bipolar operation of its device. See, e.g., Ex. 1033, 2:36–40, 3:38–40, 12:20–25, 12:29–30, 13:27–44, 20:9–10 (describing the bipolar operation of “pairs” nine times). Accordingly, we disagree with Patent Owner’s argument that Stern teaches a device configured to have at most only a single pair of bipolar RF electrodes. Second, Stern teaches that the “embodiment of FIG. 15 . . . provides flexibility within the bipolar operation so that any pair or any combination of pairs may be utilized together.” Ex. 1033, 13:39–43 (emphasis added). Thus, even if claim 1 did require simultaneous activation of multiple bipolar pairs, we agree with Petitioner that such functionality is also taught by Stern. See Reply 5–6.” slip op. at 20

  Patent outcomesUS 11,766,286 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,766,286
• Neurent Medical Inc. / Neurent Medical Ltd. v. Aerin Medical Inc.All claims unpatentable
  PTAB · Jul 11, 2025 · IPR2024-00278 · APJ Michael A Valek · IPR · Final written decision

  Claims 1, 4–6, 9, 10, 12, 13, and 15–17 are unpatentable as obvious over the asserted prior-art combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner disputes the second part of Petitioner’s definition “because the ‘and/or’ encompasses within the definition . . . persons who only have experience with the clinical use or testing of medical devices.” Resp. 6. According to Patent Owner, one of ordinary skill “would have had more experience than just clinically using medical devices or simply conducting tests with medical devices” Id. at 6–7. To the extent Petitioner’s definition could be interpreted to encompass someone who only has experience using or testing unrelated medical devices, we tend to agree with Patent Owner. But it does not follow that experience with the clinical use and testing of medical devices, including those that deliver energy to tissue, would not be relevant background for one of ordinary skill. See Reply 33–34 (identifying evidence that clinical experience is relevant). The devices and methods in the challenged patent and asserted prior art are designed to be used by clinicians. Accordingly, clinical experience using and testing them would inform their design and therefore be relevant experience for one of ordinary skill in the art. For these reasons, we do not adopt Patent Owner’s proposed modification of Petitioner’s definition, which would remove clinical use and testing from the list of activities in Petitioner’s POSITA definition. See Resp. 7 (proposing redlines). Instead, we apply Petitioner’s definition. Regardless, Petitioner’s declarant, Dr. Martin, is qualified to offer the opinions in his declarations under either definition. Moreover, Patent Owner does not identify any testimony it contends would be different under its POSITA definition. See Ex. 1083 ¶ 103 (Dr. Martin testifying that his opinions “remain the same regardless of which definition applies”). Accordingly, all of the findings and conclusions herein would be the same under either side’s definition of the level of ordinary skill in the art.” slip op. at 9

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

    “Neither side proposes any terms for express construction. Petitioner contends “the Board need not construe any terms because the Challenged Claims are invalid under any reasonable interpretation.” Pet. 20. “Patent Owner believes that no claim constructions are required to resolve the issues raised” in this IPR. Resp. 13. Nevertheless, in their arguments over whether the prior art teaches certain claim elements, each side accuses the other of misinterpreting or reading requirements beyond their ordinary meaning into those terms. See Reply 3–10 (urging that Patent Owner’s arguments read requirements into elements 1[d] and 1[e]); Sur-Reply 9–15 (arguing Petitioner applies an incorrect definition of “radio frequency output channel”). To the extent the parties’ arguments raise any implicit issues of claim construction, we address those issues within the context they are raised in our analysis below. No further express claim construction is necessary for this decision.” slip op. at 10

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

    “We find that one of ordinary skill in the art would have been motivated to combine Edwards-535 and Stern, and had a reasonable expectation of success in doing so for the reasons set forth in the Petition. We also find that the articulated combination of Edwards-535 and Stern teaches all of the limitations of claim 1. We adopt Petitioner’s undisputed analysis of claim elements 1[a]-[c] and [f] and reasoning for combining the references, and credit its supporting evidence. See Pet. 7–14, 17–20; Ex. 1002 ¶¶ 79–103, 113–21. Below we address the parties’ arguments regarding the disputed elements 1[d] and 1[e].” slip op. at 23

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

    “We find that Petitioner has the more persuasive position and has demonstrated that Stern teaches element 1[e]. Petitioner demonstrates Stern’s multiple RF output channels with the annotated version of Figure 15 shown below. Pet. 42–43. As shown by Petitioner’s annotations above, the channel (highlighted in orange) connecting the output received from voltage source 228 to the first bipolar pair (circled in green on the left) is distinct from the channel connecting the output to the second bipolar electrode pair (circled in purple on the right) because depending on which switches are closed, energy travels through a separate connection between those switches and the corresponding electrodes. We agree with Petitioner, and credit Dr. Martin’s testimony, that each of the output channels highlighted in orange in Stern’s Figure 15 above “are output channels as required by the claims because the channels are separately/individually connected to the electrodes” and “control individual pairs of bipolar RF electrodes.” Id. at 43–44; Ex. 1002 ¶¶ 124–128; see also Ex. 1083 ¶ 45 (“an ‘output channel’ connects electrodes and provides the ability to independently control pairs of electrodes”). This understanding of the term “output channel” is consistent with the claim language. Claim 1 recites “multiple radiofrequency output channels” wherein “each pair” of bipolar RF electrodes “is connected with a respective one of the multiple radio frequency output channels.” Ex. 1001, 52:27–33. The RF generator itself and its connection to the output channels is not recited in claim 1. Instead, the claim language focuses on the connection between the electrode pair and its respective output channel. The description in the specification also focuses on the connection to the electrodes and further explains that having a “separate, controlled electrical channel” for “each pair of electrodes” allows for “different regions of the treatment element to be activated separately.” Ex. 1001, 24:45–52, 48:63–65; see also Ex. 1083 ¶ 33 (“[e]very time the patent mentions ‘electrical channel’ or ‘output channel,’ it is referring to connections to electrodes”). This aligns with the depiction of the output channels in the ’318 patent’s figures. See Ex. 1001, Figs. 39–44 (showing RF output channel 961 connected to electrodes). Petitioner demonstrates this in the annotated version of Figure 39 shown below. Reply 8.” slip op. at 29

  Patent outcomesUS 11,033,318 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,033,318
• Neurent Medical Inc. / Neurent Medical Ltd. v. Aerin Medical Inc.All claims unpatentable
  PTAB · Jul 11, 2025 · IPR2024-00277 · APJ Michael A Valek · IPR · Final written decision

  Claims 1–4, 6–12, and 16 are unpatentable as obvious over the Edwards-535, Kong, and Stern combinations, with Edwards-886 added for claim 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “To the extent Petitioner’s definition could be interpreted to encompass someone who only has experience using or testing unrelated medical devices, we tend to agree with Patent Owner. But it does not follow that experience with the clinical use and testing of medical devices, including those that deliver energy to tissue, would not be relevant background for one of ordinary skill. See Reply 29–31 (identifying evidence that clinical use and testing experience is relevant). The devices and methods in the challenged patent and asserted prior art are designed to be used by clinicians. Ex. 1083 ¶¶ 5, 14–15 (explaining that clinicians who use such devices gain extensive experience regarding how they work); see also Ex. 1084, 82:13–83:20 (Dr. Bikson testifying that a physician would perform the claimed method steps). Accordingly, clinical experience using and testing them would inform their design and be relevant experience for one of ordinary skill in the art. For these reasons, we do not adopt Patent Owner’s proposed modification of Petitioner definition, which would remove clinical use and testing from the list of activities in Petitioner’s POSITA definition. See Resp. 7 (proposing redlines). Instead, we apply Petitioner’s definition. Regardless, Petitioner’s expert, Dr. Martin, is qualified to offer the opinions in his declarations under either definition and Patent Owner does not identify any testimony it contends would be different under its POSITA definition. See Ex. 1097 ¶ 49 (Dr. Martin testifying that his opinions “remain the same regardless of which definition applies”). Moreover, as explained below, we are not persuaded by Patent Owner’s challenge to Dr. DelGaudio’s qualifications and give his testimony appropriate weight in our analysis. For these reasons, our findings and conclusions would be the same under either side’s definition of the level of ordinary skill in the art.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Third, nothing suggests that Dr. DelGaudio is not qualified to offer opinions regarding the knowledge and skill of one of ordinary skill in the art. In addition, to his relevant clinical experience, Dr. DelGaudio has experience designing different types of medical devices and consulting with device manufacturers to provide feedback and improve devices used in nasal surgery. Ex. 1083 ¶¶ 9–11. Thus, even if we had adopted a POSITA definition requiring design and development experience, Dr. DelGaudio would qualify as one of ordinary skill in the art because he has such experience in addition to his extensive clinical background. Id. Nevertheless, Patent Owner argues he is “not an individual capable of designing and developing the medical device used in the claimed method” because “Dr. DelGaudio has no experience in designing medical devices that deliver energy to tissue.” Sur-reply 22–24 (emphasis added). That argument is unavailing because such devices and methods of using them such as those recited in the claims of the ’271 patent are often developed by a team of individuals with different backgrounds and expertise. That Dr. DelGaudio working alone may not be capable of designing and developing such a device does not disqualify him from offering testimony from the perspective of one of ordinary skill in the art, particularly as it relates to those claim elements that recite the use of the device as opposed to its technical details.8 Moreover, Dr. DelGaudio was careful not to overstep the bounds of his expertise, relying on testimony from Dr. Martin to confirm his understanding concerning some of the engineering details of the devices themselves. See Ex. 1002 ¶¶ 94, 124, 127, 130, 151; see also Ex. 1083 ¶ 12 (explaining he relied on Dr. Martin to confirm his understanding of teachings in Stern that disclose “implementation details about circuitry used to operate the bipolar electrodes, the physics of delivering energy to tissue, among other things”); Ex. 1004 ¶¶ 66–131 (Dr. Martin testifying regarding a POSITA’s understanding of the prior art as it relates to such elements). Fourth, even if Dr. DelGaudio did not himself qualify as one of ordinary skill, we could still consider his testimony on those matters on which he was qualified. See Consolidated Trial Practice Guide (Nov. 2019), 52, available at https://www.uspto.gov/sites/default/files/documents /tpgnov.pdf (“CTPG”) (“A person may not need to be a person of ordinary skill in the art in order to testify as an expert under Rule 702, but rather must be ‘qualified in the pertinent art.’”) (citing cases). We agree with Petitioner that this would include matters such as the use of the devices described in the cited references in a clinical setting. See Reply 28. 8 Indeed, by its logic, Patent Owner’s own expert would not be one of ordinary skill in the art because he is not himself capable of practicing the claimed method. See Ex. 1084, 24:13–22, 82:19–83:8 (testifying he has never used an RF device to treat a patient and would not himself perform the recited method).” slip op. at 12

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

    “Petitioner’s position is persuasive. Even without taking into account the reasoning based on Baker (which we address separately below), Petitioner has demonstrated a sufficient rationale for incorporating Stern’s arrangement of two rows of bipolar electrode pairs into Edwards-535’s device. Edwards-535 teaches that a plurality of electrodes may be positioned on the surface of its treatment element, but does not specify how those electrodes are arranged or controlled. Ex. 1010, 8:25–27; Ex. 1004 ¶¶ 68–69. Stern teaches a control system for selectively delivering power to bipolar electrode pairs arranged in two rows on the surface of its device that provides even heating and precise control. Ex. 1004 ¶¶ 80–85. As Dr. DelGaudio explains, one of ordinary skill in the art would have regarded these attributes to be particularly beneficial when delivering treatment to the “nasal passages . . . given the uneven morphology of nasal cavity tissue and the proximity of the RF energy delivery to a patient’s brain and other critical tissues within the head.” Ex. 1002 ¶ 94. We credit the testimony of Petitioner’s experts that one of ordinary skill would have been motivated to incorporate Stern’s teachings, including the complementary two-row surface electrode arrangement shown in Figure 19, for these reasons. See Ex. 1002 ¶¶ 93–94; Ex. 1004 ¶¶ 72–73, 75–88, 96–97 (explaining that Stern’s techniques would have been used to improve Edwards-535’s device in a similar way). Petitioner’s reasoning that “arranging electrodes in rows . . . facilitates simple spatial resolution of the applied energy” is also persuasive. See Pet. 47–48. As Dr. Martin explains, one of ordinary skill in the art would have understood that arranging bipolar electrodes in two or more rows was a “common way to arrange such electrodes” (Ex. 1004 ¶ 34) and a “simple way to direct energy to specific locations for treatment would have been to place pairs of electrodes in rows . . . along the device at the locations being treated.” Id. ¶ 95.” slip op. at 41

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

    “Petitioner’s position is persuasive. Stern’s Figure 15 shows bipolar electrodes 220 and 224 in a first horizontal row and electrodes 222 and 226 in a second horizontal row. Stern teaches that bipolar pairs can be formed between various combination of these electrodes resulting in both pairs within a row and pairs formed across two rows. See Ex. 1033, 12:61–13:2 (explaining that “bipolar operation is not limited to [electrode] 220-224 and 222-226 pair couplings” because pairs could also be formed across rows, e.g., between electrodes 220 and 222). Stern’s Figure 19 likewise depicts a plurality of electrodes arranged in two rows. See Ex. 1004 ¶¶ 71–74 (Dr. Martin explaining that the physical arrangement in Figure 19 is complementary to the control structure in Figure 15 and that there are two rows regardless of which electrodes are paired). In bipolar operation, each of these figures depicts “two rows of bipolar electrode pairs” as recited in element 1[a] because there are two rows comprising multiple pairs.15 Patent Owner’s narrower interpretation of the phrase “two rows of bipolar electrode pairs” is not consistent with the intrinsic record. According to Patent Owner and Dr. Bikson, it is not enough that there are two rows of electrodes comprising multiple pairs––rather each row must itself contain multiple pairs. See Resp. 23; Ex. 2001 ¶ 75 (“A row of only two electrodes is not a row of bipolar electrode pairs because a row of only two electrodes has at most a single pair (not multiple pairs).”). As Petitioner points out, Patent Owner’s interpretation assumes that the “s” in “pairs” modifies each row individually, rather than the recited “rows” collectively. But the claim 15 In reply to Patent Owner’s argument that there must be at least three electrodes in a row for that row to contain multiple pairs, Petitioner shows that Stern also discloses rows with three or more electrodes. Ex. 1083 ¶¶ 36– 40; Ex. 1097 ¶¶ 39–41 (identifying rows with three or more electrodes in Stern’s Figures 4a and 19). We need not address that showing in detail because, as explained below, element 1[a] does not require that there be more than one pair in each row. language does not specify that each row has pairs (plural). Rather, given its plain meaning, “two rows of bipolar electrode pairs” encompasses an arrangement like that shown in Stern’s Figure 15. Ex. 1097 ¶ 30 (Dr. Martin explaining that “what is required is (1) more than one bipolar electrode pair that are (2) spread across rows”). This broader understanding is confirmed by the specification of the” slip op. at 35

  Patent outcomesUS 11,241,271 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,241,271
• Dropbox, Inc. v. Motion Offense, LLCAll claims unpatentable
  PTAB · Jul 1, 2025 · IPR2024-00287 · APJ Norman H Beamer · IPR · Final written decision

  Claims 9–12, 14–16, and 22–24 are unpatentable under § 103 over Riepling and Meisels, or Riepling, Manzano, and Meisels; claim 13 was disclaimed.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. We apply Petitioner’s articulation.” slip op. at 20

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

    “construction of “representation of the at least one file.” Petitioner is correct that a representation of a file is not the file itself, but (in keeping with the ordinary meaning of “representation”) is rather some sign or symbol that stands for the folder. Reply 2. This is confirmed by the explicit example of a representation of a folder in the ʼ906 application, illustrated in the portion of Figure 6B reproduced below (highlighted here for purposes of explanation). This portion of Figure 6B depicts representations of two files: “FamilyHistory.docx” and “XmasLetter-2012.pdf.” The ’906 application specifically states: [A] located data resources dialog UI element 630b . . . includes a presentation space 632b for presenting a user detectable representation of some or all of the data objects identified in the received data object identification response from . . . second node 504. Ex. 2004 ¶ 147 (emphasis added). The entries in the above figure are representations of the files, not the files themselves. The actual files are stored in the file system storage associated with the user’s node, and only retrieved if the user selects the “Access” or “Access All” elements. Id. ¶ 148. Patent Owner misconstrues the claim 22 language, “a first representation of the at least one file, in a location among one or more folders, that is stored at the at least one server” and “a second representation of the at least one file, in a location among one or more folders, that is stored at the first node.” Patent Owner infers from this language that the representation is itself a file that is “in a location among one or more folders” and is stored on a server or at a node. PO Resp. 17. Not so — the representation of a file, such as “FamilyHistory.docx” in the above figure, is not stored at a server or node, but rather is simply displayed on a screen. As the ’906 application states: A representation of a program entity may be stored and/or otherwise maintained in a presentation space. As used in this document, the term “presentation space” refers to a storage region allocated and/or otherwise provided for storing presentation information . . . . A screen of a display, for example, is a presentation space.” slip op. at 22

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

    “because (i) Riepling and Meisels are from the same field of endeavor, directed to sharing files over a network; (ii) the combination would have yielded expected, predictable results, using known and routine computer programming principles, to modify Riepling’s system to generate an electronic message that includes a link pointing to an uploaded file; (iii) the combination would have been readily implemented given Meisels’ teachings of inserting, in an electronic message, a link to a shared location where a file is uploaded; and (iv) the combination was suggested because Meisels expressly disclosed a benefit of sending an email message with a link, to avoid multiple copies of a file from existing at multiple locations, and sending links to one file to multiple recipients and managing permissions on an individual recipient basis. Pet. 67–70 (citing Ex. 1107, Fig. 1, ¶¶ 2, 4, 19; Ex. 1108, Fig. 4, ¶¶ 1, 3, 41–45, 56; Mowry Decl. ¶¶ 194–198). In addition, for reasons similar to the motivation basis, Petitioner argues that a person of ordinary skill in the art would have had a reasonable expectation of success in making the combination. Id. at 70–71 (citing Mowry Decl. ¶¶ 199–200). Other than its arguments directed to ’520 claim requirement 9[l], discussed below in Section III.D.4.d), Patent Owner does not further address Petitioner’s arguments regarding the combination of Riepling and Meisels. As discussed in that section, we are persuaded by Petitioner’s expert’s testimony that one of ordinary skill would have applied the document link teachings of Meisels to modify Riepling. Accordingly, we determine that Petitioner has proved by a preponderance of the evidence that one of ordinary skill in the art would have been motivated to combine Riepling and Meisels in the manner argued by Petitioner.” slip op. at 32

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

    “We agree with Petitioner that set content field 325 of Riepling teaches or suggests claim requirement 9[b]. As Petitioner’s expert explains, the fact that field 325 has an appearance identical to that of fields 321–324 in Figure 3, which fields are specifically stated to be “text field[s],” strongly suggests that field 325 is also a text field. Mowry Decl. ¶ 70; see also Reply 10–11. Patent Owner’s suggestion that field 325 could be a dropdown list or other type of field is contradicted by the fact that it does not show the typical dropdown arrow associated with a dropdown box, or other typical non-textbox appearance such as the checkbox appearance of field 320. Moreover, in the example of Figure 3, the “Set Content” entry is “audio,” which is a file description. Reply 10. The fact that “JPEG” is checked in field 320 is not inconsistent with the “audio” entry in field 325, given that, as Riepling explains, “it may be possible for audio files such as MP3 files to contain non-MP3 data, such as JPEG data embedded within the MP3 files.” Id. at 11 (citing Ex. 1107 ¶ 32; Mowry 2nd Decl. ¶ ¶ 101–104). Also, there is no reason why the Figure 5 response that gives the uploader the ability to provide additional description of the file being uploaded is inconsistent with the ability of the requester first describing what type of file is being requested via field 325 in Figure 3. Id. at 11–12. Accordingly, for the reasons discussed above, we are persuaded that the record supports Petitioner’s arguments regarding claim requirement 9[b].” slip op. at 37

  Patent outcomesUS 11,611,520 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,611,520
• Dropbox, Inc. v. Motion Offense, LLCAll claims unpatentable
  PTAB · Jun 30, 2025 · IPR2024-00286 · APJ Norman H Beamer · IPR · Final written decision

  Claims 17–21 are unpatentable under § 103 over Houston and Garcia; the Board did not reach the alternative grounds.

  RulingsFinal written decision

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

    “We conclude that there is no basis for Patent Owner’s proposed construction of “representation of the at least one folder.” Petitioner is correct that a representation of a folder is not the folder itself, but (in keeping with the ordinary meaning of “representation”) is rather some sign or symbol that stands for the folder. Reply 2. This is confirmed by the explicit example of a representation of a folder in the ’635 application, illustrated in the portion of Figure 6D reproduced below (highlighted here for purposes of explanation). This portion of Figure 6D depicts representations of several folders, including the highlighted “Music” folder. The ’635 application specifically states: A folder content pane UI element 648d in navigation window UI element 646d is presented including representations of one or more data objects[11] at a location, identified in a path UI element 650d. A pointer UI element 652d illustrates a drag and drop operation of a “Music” folder represented in contents pane UI element 648d, dropped on edit window UI element 602d. Ex. 2004 ¶ 123 (emphasis added). The word “Music” in the above figure is a representation of a folder, not the folder itself. The actual folder is an entity in a file system that stores files (in the case of a “Music” folder, presumably MP3 or WAV files, or the like).” slip op. at 17

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

    “Patent Owner’s arguments are not pertinent to Petitioner’s proffered combination of Houston with Garcia as applied to the remaining challenged claims 17–21. As discussed further below, Petitioner relies on Garcia as supplementing Houston for details regarding the requirements of generating and sending an email with a link to a folder but without a file attachment, and for synchronizing folders and providing interfaces for display of shared folders. Pet. 26–27, 36–39, 57–60. For the challenged claims, Petitioner does not need to rely on the combination to modify Houston’s system such that, when an icon for a shared folder is created in Houston’s interface at an invited user’s client, the client does not store a file in the shared folder — 14 For this argument and others, Patent Owner cites for additional support portions of U.S. Provisional Patent Application No. 61/233,787. PO Resp. 18, 42, 46; Sur-Reply 9–12. This application is designated in Houston as a related application, and incorporated by reference therein. Ex. 1003, code (60), 1:6–10. We denied as untimely Patent Owner’s request to belatedly add this application to the record. Ex. 3002; Paper 39. Even accepting Patent Owner’s representations of the relied-on disclosures in that application, those disclosures are cumulative to Houston’s criticisms of systems that store documents remotely, and are irrelevant for the same reasons as discussed herein with respect to those Houston disclosures. that aspect of the Houston/Garcia combination is only relevant to claims 1–8, which have been disclaimed. Id. at 40–41; Ex. 2045.15 Thus, Patent Owner’s argument that Houston teaches away from combining with Garcia to delay storing a file when a folder is shared is not applicable to Petitioner’s challenges of claim 17–21, in light of our conclusion set forth above in Section III.C rejecting Patent Owner’s proposed construction of claim 17. The fact that the Houston system ensures the availability of synchronized local copies of files at each user’s local system and criticizes systems that store documents remotely, such as in Garcia, is irrelevant to those claims. On this record, there is nothing about that particular difference in the approaches of Houston and Garcia that would support a finding that one of ordinary skill in the art would have been discouraged from adopting Houston to take advantage of the teachings in Garcia regarding use of email and folder interfaces. In sum, Patent Owner focuses on a specific irrelevant detail of Houston regarding local storage of files, whereas Petitioner relies on other features of the combination of Houston and Garcia. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary” slip op. at 41

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

    “To give substantial weight to objective indicia of nonobviousness such as commercial success, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). Nexus is a legally and factually sufficient connection between the objective evidence and the claimed invention, such that the objective evidence should be considered in determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” ClassCo, 838 F.3d at 1220 (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)). A patentee is entitled to a presumption of nexus “when the patentee shows that the asserted objective evidence is tied to a specific product and that product ‘embodies the claimed features, and is coextensive with them.’” Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018)). “[T]he patentee retains the burden of proving the degree to which evidence of secondary considerations tied to a product is attributable to a particular claimed invention.” Fox Factory, 944 F.3d at 1378. The Federal Circuit has held that “if the marketed product embodies the claimed features, and is coextensive with them, then a nexus is presumed and the burden shifts to the party asserting obviousness to present evidence to rebut the presumed nexus.” Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000). “A finding that a presumption of nexus is inappropriate does not end the inquiry into secondary considerations”; rather, “the patent owner is still afforded an opportunity to prove nexus by showing that the evidence of secondary considerations is the ‘direct result of the unique characteristics of the claimed invention.’” Fox Factory, 994 F.3d at 1373–74 (quoting In re Huang, 100 F.3d 125, 140 (Fed. Cir. 1996)). “Ultimately, the fact finder must weigh the [objective indicia] evidence presented in the context of whether the claimed invention as a whole would have been obvious to a skilled artisan.” See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 33 (PTAB Jan. 24, 2020) (precedential) (citing WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1331–32 (Fed. Cir. 2016)).” slip op. at 23

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

    “However, as Petitioner argues above, Houston discloses that a client can provide an email to the server to invite others to share a folder, and Houston explains that “attaching files [to emails is] cumbersome for many computer users.” Pet. 25–26 (citing Ex. 1003, Fig. 4, 1:41–42, 3:40–43, 7:50–51). From this, Petitioner argues that it would have been obvious for the email invitation to notify how to access the folder, rather than sending the folder contents itself. Id. Petitioner further argues that the claim 17[d] requirement would have been obvious over the combination of Houston and Garcia given the disclosure in Garcia of sharing a folder by sending an email with a link to the folder, instead of an attachment. Id. at 27, 57 (citing Ex. 1004, Figs. 9, 11–12, 10:32–34, 10:38–40, 11:39–43, cl. 3). We are persuaded that the record supports Petitioner’s arguments regarding this claim requirement. Both Houston alone, and the combination of Houston and Garcia, teach or suggest sending an email with a link to a folder to be shared, rather than the folder contents. Only if the recipient clicks on the link are the contents of the folder shared. Ex. 1004, 11:29–31. The act of clicking on the link in the email after the email is received is the required “initiation of the communication” that must occur separately from the email itself, as required by claim 17[d]: “causing generation of at least one email [that] does not include a file attachment, for permitting avoidance of at least one file from being communicated to and stored at the second node until an initiation of the communication of the at least one file by a user of the second node is detected and the communication commences via at least one server that stores the at least one file” (emphasis added). It does not matter if Houston or Garcia automatically downloads local copies of files when a recipient clicks on the email link, because that is a separate step following the step of claim 17[d].” slip op. at 46

  Patent outcomesUS 11,611,520 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,611,520
• Skechers U.S.A., Inc. v. Nike, Inc.Institution denied
  PTAB · Jun 16, 2025 · IPR2025-00144 · APJ Michael J Fitzpatrick · IPR · Institution

  The Board denied institution because neither obviousness ground showed a reasonable likelihood of establishing claims 1–20 were unpatentable.

  RulingsInstitution decision

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

    “III. CONCLUSION The Petition fails to show there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. See 35 U.S.C. § 314(a); 37 C.F.R. § 42.108. Accordingly, we deny the Petition. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 23

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

    “claim 15). We agree that the Specification supports Patent Owner’s construction. Although Petitioner bases its construction on extrinsic evidence, Petitioner argues that its construction “is consistent with” the intrinsic evidence, which, according to Petitioner, “indicates a sole is optional.” Pet. 31. A sole is optional, Petitioner argues, because the Abstract of the ’511 patent states that “[t]he footwear may include an upper and a sole structure.” Pet. 31 (quoting Ex. 1001, Abstr. (Petitioner’s emphasis)). We are not persuaded. Petitioner reads too much into the sentence it quotes from the Abstract and its use of the word “may.” Indeed, by Petitioner’s logic, both the upper and the sole structure would be optional and footwear would lack any required structure. Petitioner also argues that “[o]ther intrinsic evidence” supports its construction. Pet. 31–32 (citing Ex. 1053, 4:55–58; Ex. 1002 ¶92). The alleged intrinsic evidence, however, is an unrelated patent, US 2,675,631, which purportedly was cited during the prosecution of the ’511 patent. Id. This argument is undeveloped by Petitioner. First, Petitioner fails to substantiate that US 2,675,631 is cited in the prosecution history, merely asserting it as fact without pointing to supporting evidence. See id. (no citation to the prosecution history provided). Further, even assuming US 2,675,631 is cited in the prosecution history of the ’511 patent and thus part of the intrinsic evidence,8 Petitioner fails to show that it is probative of 8 The Federal Circuit has held that “[t]he prosecution history, which we have designated as part of the ‘intrinsic evidence,’ consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent.” Phillips, 415 F.3d at 1317 (emphasis added). what the inventors of the ’511 patent meant by “article of footwear.” Petitioner points out that the inventor of US 2,675,631 considers “knitted footwear” as encompassing “hose, golf hose, three-quarter hose, half-hose and socks” but does not explain why such meaning should be incorporated into the ’511 patent. Ex. 1053, 4:55–58 (partly quoted at Pet. 31–32). US 2,675,631 is titled “Footwear Article of The Slipper-Sock Type.” Ex. 1053, Title. As is evidently clear from the specifications of both patents, the ’511 patent and US 2,675,631 are directed to different types of footwear within the broader (dictionary) definition cited by Petitioner. Ex. 1022, 67, 88. Patent Owner also proffers testimony from Dr. Pastore that a person” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner

    “We construe the preambles of claims 1 and 15 to be limiting, as guided by case law. It is clear that the preambles are being used to help define the invention, i.e., an upper for an article of footwear in the case of claim 1 and an article of footwear having an upper in the case of claim 15. See Bell Communications Research Inc. v. Vitalink Commcations Corp., 55 F.3d 615, 620 (Fed. Cir. 1995) (“[A] claim preamble has the import that the claim as a whole suggests for it. In other words, when the claim drafter chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the 9 Claim 15 is similar to claim 1, and, in challenging claim 1, Petitioner merely refers back to and relies exclusively on its analysis for claim 1. See Pet. 84 (Ground 1), 124–125 (Ground 2). Thus, although we may we discuss claim 1 alone at times, our analysis applies equally to claim 15. one the patent protects.”). Moreover, the bodies of both claims recite “the upper” which, in the case of claim 1, derives its antecedent basis directly from the preamble and, in the case of claim 15, relies on the preamble’s article of footwear which is recited as comprising an upper. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003) (“When limitations in the body of the claim rely upon and derive antecedent basis from the preamble, then the preamble may act as a necessary component of the claimed invention.”).” slip op. at 14

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

    “However, it is not enough that Clark discloses a sole. See KSR Int'l, 550 U.S. at 418 (“[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”). Petitioner must show that it would have been obvious to modify Cusinato to include a sole. Id. (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). On this aspect, Petitioner fails. The Petition summarily states that “a POSITA would consider it obvious to add a sole to Cusinato’s ‘boot-like’ form” but – as noted by Patent Owner – the Petition does not explain why. Pet. 51; see Prelim. Resp. 35 (“The Petition is silent with respect to any alleged motivation.”). Dr. Adanur’s testimony does not add much. He summarily opines that “it would be obvious to add a sole to Cusinato’s ‘boot-like’ form to provide cushioning and protection.” Ex. 1002 ¶160.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,918,511
• New Balance Athletics, Inc. v. Nike, Inc.Institution denied
  PTAB · Jun 9, 2025 · IPR2025-00020 · APJ Matthew S Meyers · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 11–15 were unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of the instant Decision, “Nike applies New Balance’s definition for a person of ordinary skill in the art.” Prelim. Resp. 11. Based on the record presented, we determine that Petitioner’s definition of a person of ordinary skill in the art is consistent with the scope and content of the ’932 patent and the asserted prior art, and, at this stage, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 9

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

    “Patent Owner acknowledges that it agreed to the constructions identified by Petitioner. Prelim. Resp. 12. Patent Owner also notes that it agreed to these proposed constructions in the Related Litigation. Id. at 13. However, Patent Owner argues that for purposes of this Preliminary Response, “no terms require construction.” Id. (citing Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019)). Based on the record before us, we need not expressly construe any claim terms.” slip op. at 10

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “limitation would have been obvious because one of ordinary skill in the art would have understood that Becker’s stiffer outer lining would have “restrict[ed] the mobility of the ankle, “not allow[ed] for tightening,” and known to “hav[e] the inner lining extend up above the outer lining.” Pet. 33 (citing Ex. 1003 ¶¶ 122–123). Petitioner relies on conclusory reasoning grounded in hindsight to assert that it would have been obvious for “the skin layer [to be] absent from the ankle part of the knitted component,” as required by limitation [11.d]. The difficulty with Petitioner’s position is that neither Becker nor the other cited references disclose, teach, suggest, or otherwise provide motivation for “the skin layer being absent from the ankle part of the knitted component,” as claimed.” slip op. at 25

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,898,932

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.