- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Ouraring, Inc.No claims unpatentablePTAB · Jul 10, 2026 · IPR2025-00147 · APJ Linda E Horner · IPR · Final written decision
The Board found claims 1–6 and 8–20 not shown unpatentable under three obviousness grounds, principally because the proposed combinations did not establish a feasible curved battery or transparent potting encapsulating the components.
RulingsFinal written decision- Skill levelSkill level board ownOther
“at least a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, or equivalent experience, and at least two years’ experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. Pet. 8 (citing Ex. 1002 ¶ 29). Petitioner also contends that a person of ordinary skill would have been “familiar with, e.g., sensor system design, including inertial and other motion sensor system design, and signal processing” and that “[a] higher level of education or skill might make up for less experience, and vice versa.” Id. Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 25. We adopt this uncontested definition of the level of ordinary skill in the art. This definition is supported by the record and consistent with the disclosure in the ’124 patent and the references cited in the Petition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need not reach the issue of whether the preamble is limiting for purposes of determining patentability of the challenged claims. Even were we to agree with Patent Owner that the preamble is limiting and the claims are limited to a finger-worn ring wearable computer device, Petitioner has relied on Schröder in each ground to disclose a “wearable computing device configured to be worn around a finger of a wearer.” Pet. 22 (Ground 1), 45 (Ground 2, relying on Yuen for adding the functionality of light sources with a photodetector, temperature sensors, and varying the sampling frequency of sensor data acquisition), 56 (Ground 3). We agree with Petitioner that Schröder discloses such a device. Thus, no explicit claim construction is necessary for this decision.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successReasonable expectation not foundNot shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s arguments and find that Patent Owner has the better position for several reasons. First, the record supports Patent Owner’s argument that Mestas’s batteries are much too large to fit within a ring form factor, and “would have to be reduced in size on the 6 There is no Exhibit 2022 in the record of this case. magnitude of 5-10x from its current size to fit in a ring of Schröder.” Resp. 38 (citing Dr. Anthony’s cross-examination testimony at Ex. 2021, 313:12). Second, Petitioner relies on evidence in the Reply that Petitioner failed to specifically identify in the Petition. Compare Reply 3–5 (citing Ex. 1369 ¶¶ 7–14; Ex. 1079 ¶¶ 47, 71; Ex. 2022, 138:7–143:1; Ex. 1002 ¶¶ 96, 337; Ex. 2021, 12–13, 307:7–17; Ex. 2020, 212:6–214:13; Ex. 1081, 130:18–131:14; Ex. 1010 ¶ 168), 9 (referring back to Section § II.B.2) with Pet. 25–26 (citing Ex. 1002 ¶¶ 193–99; Ex. 1010 ¶¶ 157, 163, 168, 201, Fig. 6). More specifically, while the portion of Dr. Anthony’s Declaration cited in the Petition (see Pet. 25–26 (citing Ex. 1002 ¶¶ 193–99)) mentions the Technology Background Section V of his Declaration (Ex. 1002 ¶¶ 42–147), neither Petitioner nor Dr. Anthony sufficiently explains what evidence supports his opinion that it was feasible to incorporate batteries or battery-like devices into finger-rings, or how a person of ordinary skill in the art would have miniaturized a curved battery for incorporation into Schröder’s ring. Ex. 1002 ¶ 196 (describing that rechargeable batteries powering wearable electronic devices were “well-known by 2013” and “had also undergone significant advances in terms of miniaturization and energy density [that] made it feasible to incorporate batteries or battery-like devices such as supercapacitors into smaller form factors, such as finger rings, without sacrificing functionality” such as “lithium-polymer (Li-Po) batteries and solid-state batteries.”). Moreover, some of Petitioner’s citations in the Reply appear to be incorrect as there is no Exhibit 2022 of record in this case, as noted above. These issues undermine the strength of Petitioner’s showing by making it difficult to follow its reasoning, much less identify where in the record that reasoning finds support. See DeSilva v. DiLeonardi, 181 F.3d 865, 866–67 (7th Cir. 1999) (“A brief must make all arguments accessible to the judges, rather than ask them to play archaeologist with the record.”); United States v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”). Third, even considering Petitioner’s new Reply arguments and” slip op. at 27
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“We credit Dr. Mercier’s testimony over Dr. Anthony’s and agree that Dr. Anthony’s testimony fails to account for the constraints of a substantially smaller form factor in Schröder’s finger-ring as compared to Mestas’s wrist device. Ex. 2018 ¶ 140. Although large curved batteries suitable for use in a wrist band or other larger wearable device, such as shown in Mestas, were known at the time of the ’124 patent, we also have evidence that prior art “finger ring wearables up to the ’124 patent had used ‘coin’ type batteries.” Resp. 40 (citing Ex. 2018 ¶ 140). We credit Dr. Mercier’s testimony that a person having ordinary skill in the art would have looked to a coin type battery for the necessary power requirements of Schröder’s device. Ex. 2018 ¶ 141. Indeed, this testimony is consistent with the other art of record that consistently shows the use of flat batteries in finger-ring devices, often stacked above and protruding from the general ring shape of the device. See, e.g., Ex. 1005 (Niwa), Figs. 22, 28; Ex. 2025 (Asada ’701 patent), Fig. 4; Ex. 1035 (Rhee), Figs. 7-1, 8-1, 8-2; Ex. 1037 (Asada article), Fig. 9; Ex. 1034 (Asada ’199 patent), Fig. 2; Ex. 1028 (Kimura patent), Fig. 24; Ex. 2018 ¶¶ 74–84. In fact, Oura’s first-generation ring design, released in 2015, used a Superbowl ring type design, with the battery and other components mounted on top of the ring. Ex. 2034; Ex. 2018 ¶ 85. We also agree with Dr. Mercier that Dr. Anthony’s testimony lacks evidence or a technical analysis of the power requirements for the various sensors he suggests including in a wearable device and the capacity of the proposed GMBPow battery. See, e.g., Ex. 1002 ¶¶ 94, 210, 214–17; Ex. 2018 ¶ 97. Moreover, Dr. Anthony does not address the issues with the batteries that are identified in the references he discusses. For example, Dr. Anthony does not address Lee’s disclosure that “direct coating of electrode slurry onto plain paper led to the occasional internal-shorting of the device due to the leakage of the electrode material through a large-sized hole in the paper.” Ex. 1019, 2415. In contrast, Dr. Mercier discusses the pitfalls the skilled artisan faced in developing finger-ring devices. See, e.g., Ex. 2018 ¶¶ 77–79 (discussing the issues Rhee’s and Asada’s large rings), 83 (identifying power requirements as a design constraint). For example, Dr. Mercier explains that “flexible or curved batteries include flexible packaging materials such as aluminum laminated films that house the electrodes and electrolyte” such that “once the battery packaging is added to a battery such as GMBPow and then placed within a housing (e.g., external housing shell and internal potting), the resulting device would have dimensions that are not suitable for a finger-worn ring.” Id. ¶ 96 (citing Ex. 2026).” slip op. at 34
Patent outcomesUS 11,188,124 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,188,124 - Resmed Corp. v. Cleveland Medical Devices, Inc.No claims unpatentablePTAB · Jun 29, 2026 · IPR2025-00247 · APJ Cynthia M Hardman · IPR · Final written decision
Claims 1–19 were not shown unpatentable under any of six obviousness grounds because Truitt did not teach or suggest the claimed severity calculation and index, and the Mumford combinations lacked the required sensor disclosures.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner filed an authorized Motion to Terminate, alleging that Petitioner failed to name its corporate parent, Resmed Inc., as a real party in interest. Paper 29. Petitioner filed an opposition. Paper 31. Patent Owner filed a reply. Paper 32. We denied the Motion to Terminate. Paper 40.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“disorder symptoms” require a “quantitative” calculation or use of an algorithm, we also disagree. See PO Resp. 14–16. First, nothing in the language of the claims themselves describes or requires a “quantitative” calculation or an algorithm. See generally Ex. 1001, 23:6–26:59. To be sure, the ’029 patent discloses embodiments that use known algorithms to “quantify the level of severity of the subject’s sleeping disorder or symptoms.” See, e.g., id. at 20:16–19. But the Specification does not require an algorithm. The Specification also indicates that quantification is merely “preferable” (i.e., not required), and is merely one embodiment. See, e.g., id. at 19:8–12 (“The signals from the one or more sensors used in various embodiments of the present invention are preferably analyzed using a processor and software that can quantitatively estimate or determine the severity of the subject’s sleeping disorder or symptoms.”) (emphasis added), 4:51–59 (“Finally, in still another embodiment, the present invention includes a sleeping disorder treatment system comprising a device for diagnosing and creating a quantitative output of a level of severity of a subject’s sleeping disorder or symptoms . . . .”) (emphasis added); see also Reply 5–6 (citing Ex. 1001, 4:3–59 and 19:8–12 and stating that the ’029 patent lists “numerous embodiments where only one of seven include a quantitative assessment”). Elsewhere, the Specification more generally states that signals from sensors are “analyzed to determine the level of severity of the symptoms,” without specifying that such analysis must be “quantitative” or performed by an algorithm. See Ex. 1001, 3:41–44. In view of these disclosures, Patent Owner does not persuade us to adopt its narrowing claim construction. Indeed, our reviewing court has “repeatedly warned against confining the claims” to specific embodiments disclosed in the Specification. Phillips, 415 F.3d at 1323. Patent Owner’s reliance on a prior Board decision in PGR2024- 00012, which related to the parent of the ’029 patent, is unavailing. See PO Resp. 15–16. We agree with Petitioner that in the cited case, “[t]he Board made no findings about the meaning of the term calculating ‘the data of a severity of the sleep disorder symptoms of the subject’ for claim construction.” Reply 8. Indeed, neither party offered any claim construction, and the Board determined that no claim construction was necessary for purposes of that decision. See ResMed Corp., PGR2024- 00012, Paper 7 at 8. The page of the decision Patent Owner cites addresses written description support in the specification for the claims challenged in that PGR, not claim construction. See id. at 16. In any event, the cited decision is a decision on institution. The Board’s statements there are, by nature, preliminary findings and conclusions based on a preliminary record, and are not binding here. For at least the above reasons, Patent Owner does not persuade us to adopt its narrowing claim construction and we find that the term “data of a severity” does not need construction because the words of the term are clear on their face.” slip op. at 31
- Strike new argumentNew argument disregardedDecided for patent owner
“skilled artisan would have incorporated only portions of Mumford’s algorithm into Truitt’s PAP (i.e., only those portions related to “the detection of sleep disordered events” and not the portions of the algorithm related to “determin[ing] sleep stage”) comes too late because this argument was not in the Petition. See, e.g., Wasica Fin. GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1286–87 (Fed. Cir. 2017) (rejecting petitioner’s “attempts to cure the petition’s deficiencies in its subsequent briefing to the Board”). The Petition does not discuss modifying Mumford’s sleep efficacy algorithm before incorporating it into Truitt’s PAP device or incorporating only certain features of the algorithm. Indeed, the Petition and Dr. Kirkness rely on Mumford’s ability to detect sleep arousals when mapping Mumford to the claimed “data of a severity” and “index.” See Pet. 69–70; Ex. 1003 (Kirkness Decl.) ¶¶ 323–325. Mumford discloses that the mask electrodes detect arousals. See Ex. 1009 (Mumford) 2:4–10, 11:39–48. The same lack of disclosure plagues Petitioner’s belated Reply argument that Truitt’s ports 74 and 76 can incorporate electric sensing elements that would have functioned similar to Mumford’s electrodes. See Reply 22. The Petition did not mention ports 74 and 76 or otherwise suggest that a skilled artisan would have added functionality similar to Mumford’s electrodes to Truitt’s PAP, and we find that it is too late on Reply for Petitioner to posit this modification.” slip op. at 40
- Expert testimonyPetitioner expert creditedPatent owner expert creditedMixed
“significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005). This is especially applicable to Dr. Jafari’s opinions. His declaration was not prepared for this proceeding and thus Dr. Jafari was not subject to cross examination in this proceeding. See Reply 6 n.3. Moreover, Dr. Jafari was not opining on claim construction; rather, he was addressing the alleged indefiniteness. See Ex. 2020 (Jafari Decl.) 12 (heading addressing definiteness), ¶¶ 41–42, 46. Additionally, paragraphs 41–42 of Dr. Jafari’s declaration discuss claim terms phrases in a different patent (US 11,375,921), which explicitly include the terms “quantified” and “quantitative.” See Reply 6–7; Ex. 2020 (Jafari Decl.) ¶ 34. For at least these reasons, Patent Owner has not persuaded us that Dr. Jafari’s testimony is applicable here. Further, regarding the portion of Patent Owner’s proposed construction reciting “the degree of deviation from the baseline characteristics of a patient without sleep disorder symptoms,” Dr. Borkholder does not do his own analysis, but instead simply states that he “agree[s] with the litigation claim construction opinions of Dr. Jafari.” Ex. 2019 (Borkholder Decl.) ¶ 53. This is insufficient, and thus we do not credit Dr. Borkholder’s testimony regarding claim construction. We instead credit Dr. Kirkness’s statement that “[s]everity data is frequently calculated as the deviation from baseline characteristics of the patient himself, not a generic person ‘without sleep disorder symptoms.’” Ex. 1071 (Kirkness Reply Decl.) ¶ 13; Reply 9. As Dr. Kirkness explains, and Patent Owner does not dispute (see generally Sur-reply), “[t]he ‘baseline characteristics of a [generic] patient without sleep disorder symptoms’ would be irrelevant to any particular patient with their own unique breathing patterns and sleep disorder symptoms.” Ex. 1071 (Kirkness Reply Decl.) ¶ 13 (second alteration in original). For at least these reasons, we reject Patent Owner’s proposed claim construction.” slip op. at 30
Patent outcomesUS 11,872,029 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,872,029 - Resmed Corp. v. Cleveland Medical Devices, Inc.No claims unpatentablePTAB · Jun 5, 2026 · IPR2025-00160 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 1–5, 7, 8, 10–13, 15–18, and 20–31 were not shown unpatentable because the proposed Toge-Kumar combination did not establish the claimed remote internet site hosted on a server.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner filed a Response. Paper 23 (“PO Resp.”). Petitioner filed a Reply. Paper 27 (“Reply”). Patent Owner filed a Sur-reply. Paper 35 (“Sur-reply”). Additionally, during trial, Patent Owner filed an authorized Motion to Terminate, alleging that Petitioner failed to name a real party in interest (namely, Petitioner’s corporate parent, Resmed Inc.). Paper 37. Petitioner filed an opposition. Paper 38. Patent Owner filed a reply. Paper 39. We denied the Motion to Terminate. Paper 44.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that no express construction of any claim term is necessary to resolve the dispute between the parties. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability. C. Level of Ordinary Skill in the Art” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We adopt Petitioner’s proposed level of ordinary skill in the art because it appears to be consistent with the cited prior art and is undisputed on this record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level). D. Summary of the Asserted Prior Art” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“summarized above, we determine that a person of ordinary skill in the art would not have implemented Toge’s physician-side computer as a web server using a “localhost” architecture as proposed by Petitioner because such a configuration cannot communicate with external devices over the public internet, a deficiency that directly contradicts Petitioner’s stated motivations for the combination of permitting broad data access. Petitioner’s expert, Dr. Chatterjee, expressly acknowledged in his Reply Declaration that when a client and server reside on the same machine, the communications between them do not traverse the internet. Ex. 1069 ¶ 8. Specifically, Dr. Chatterjee cited the Microsoft Computer Dictionary’s definition of “localhost” as “[t]he name that is used to represent the same computer on which a TCP/IP message originates,” noting that “[a]n IP packet sent to localhost has the IP address 127.0.0.1 and does not actually go out to the Internet.” Id. (citing Ex. 1070, 316). Accordingly, Petitioner’s proposed configuration of placing both the client and web server on Toge’s physician-side computer would create a closed loop of communication that does not reach the broader network. Id. As noted by Patent Owner, “[i]f ‘the physician-side computer and the web server are on one machine,’ the local web server would not communicate with other devices via the Internet.” Sur-Reply, 3–4 (comparing Ex. 1069 ¶ 19 with id. at ¶ 8). Thus, the consequence of Petitioner’s proposed Toge-Kumar configuration is that other devices in the system, such as the PAP device that generates the treatment data and any remote client devices that might need to access that data, would be unable to send data to or retrieve data from the localhost web server. Patent Owner persuasively argues, supported by evidence of record, that under Petitioner’s proposed configuration, “the PAP device could not send data thereto nor could other clients receive data therefrom, as only the local client browser can exchange data.” Id. (citing Ex. 1069 ¶ 8); see Ex. 2003, 4 (one-tier architecture “is not suitable for a web application” because “it can only access data available in a single computer or server” and therefore “is not suitable for a web application.”); Ex. 2022, 3 (Unlike more advanced multi-tier systems, a one-tier architecture “cannot transmit information from one client machine to another.”); Ex. 2020, 4 (While “the client process and server process can be on the same computer,” this architecture “is rarely used today” precisely because it cannot “take advantage of the distributed computing environment.”).” slip op. at 29
Patent outcomesUS 11,786,680 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,786,680 - 3d Diagnostix, Inc. v. Watson Guide IP, LLCAll claims unpatentablePTAB · Jan 27, 2026 · PGR2024-00040 · APJ James A Tartal · PGR · Final written decision
Claims 1–3, 5–7, 10, 12, 14, 16, and 17 are unpatentable under § 103, including over Llop ’126 and Sichuan, and over Llop ’126, Sichuan, and Scherer for claims 5, 6, and 12.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art as of the earliest priority date of the ’209 patent “would at least have had a doctoral degree in dentistry and at least three to four years of experience working with guided dental surgery for installing dental implants and prostheses.” Pet. 13 (citing Ex. 1003 ¶ 49). Patent Owner agrees with Petitioner’s proposed definition of a person of ordinary skill in the art. Resp. 4. Based on our review of the record before us, we adopt Petitioner’s uncontested definition of a person of ordinary skill in the art, because it is supported by the evidence of record and consistent with the disclosure in the ’209 patent and in the asserted prior art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“1. “drill guide” and “fixation base” Petitioner contends that the claim terms “drill guide” and “fixation base” require construction “to resolve certain of the unpatentability grounds presented.” Pet. 13–14. In particular, Petitioner proposes that “drill guide” means “drill guide made from metal or metallic alloy without traditional plastic or acrylic,” and that “fixation base” means “fixation base made from metal, metallic alloy or other strong material without traditional plastic or acrylic.” Id. According to Petitioner, the Specification “teaches that the composition of the drill guide is ‘a metal or metallic alloy,’” and provides no other alternatives. Id. at 14 (citing Ex. 1001, 5:35–36). Petitioner similarly alleges that “fixation base” is described as “being fabricated from a metal, metal alloy, or other strong material,” and that “traditional plastic or acrylic” is excluded in light of disclosures in a provisional application. Id. at 21–24. According to Petitioner, its proposed constructions should be adopted “based on disclaimer of claim scope in the provisional application incorporated into the [’209] patent specification.” Id. at 14–24. Patent Owner contends that we need not address the constructions proposed by Petitioner because the issues addressed by Petitioner’s proposed constructions only concern allegations of unpatentability directed to claims 11 and 13, which Patent Owner disclaimed. Resp. 4–5; Disclaimer 1. In Reply, Petitioner argues that its proposed constructions are relevant to Patent Owner’s evidence of objective indicia of non-obviousness, including the alleged nexus. Reply 18–19 n.3. In light of our analysis below, because no determination in this Decision turns on whether we adopt Petitioner’s proposed constructions of “drill guide” and “fixation base,” we find that no express construction of these terms is required. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“substitution of the word ‘enclose’ for the term ‘surround.’” Sur-reply 6. We noted in the Institution Decision that “construing the claim term ‘surround’ to mean ‘enclose’ does not further inform or clarify to a person of ordinary skill in the art what is encompassed by the claim limitation.” Dec. 15. We reach the same conclusion here on the full record and find no basis to rewrite the Challenged Claims to replace “surround” with “enclose.” To the extent Patent Owner can be understood to suggest that we import additional limitations into the claims based on the exemplary figures in the ’209 patent, we decline to do so. Regardless, given the recognition by the Parties that “surround” and “enclose” are synonymous, our determinations in this Decision would have been the same had we adopted Patent Owner’s proposed definition of “surround” to mean “enclose.” Further, with regard to the claim language “configured and dimensioned to surround at least a portion of the teeth of the patient,” Patent Owner proposes construing “a portion of the teeth” as “at least some teeth.” Resp. 9 (citing Ex. 2007 ¶ 44). Patent Owner, however, offers no sufficient explanation in its Response to explain how why a “portion of the teeth” means “at least some teeth.” The Specification does not provide an explicit definition of “a portion of the teeth” and does not suggest an intention to use a meaning of the term “a portion of the teeth” that is particular to the ’209 patent. To the extent Patent Owner can be understood to imply that we should import additional limitations into the Challenged Claims based on the exemplary figures in the ’209 patent, we decline to do so. For that reason, alone, we decline to adopt Patent Owner’s proposed construction.” slip op. at 17
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“38; Sur-reply 9–10. First, Patent Owner argues that Sichuan is non-analogous art. Resp. 34–38. “To be considered within the prior art for purposes of the obviousness analysis, a reference must be analogous.” Circuit Check Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir. 2015) (citing Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed. Cir. 1993)). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Sanofi-Aventis Deutschland GmbH v. Mylan Pharms. Inc., 66 F.4th 1373, 1377 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)).” slip op. at 36
Patent outcomesUS 11,806,209 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,806,209 - PTAB · Dec 16, 2025 · IPR2025-01046 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 2–15, finding a reasonable likelihood that the 1946 Cyclopedia, Lindström, and Wong render at least claim 2 obvious; claim 1 was disclaimed.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner responds that Petitioner’s proposed level of ordinary skill in the art is incorrect, “because design or analysis experience with other industrial wheeled vehicles would not necessarily be applicable to the art of the ’892 Patent.” Prelim. Resp. 12 (citing Ex. 2035 ¶¶ 38–39). According to Patent Owner, a person of ordinary skill in the art “would have at least a bachelor’s degree in a discipline related to mechanical engineering, physics, structural design, or an equivalent discipline, and at least two years of experience designing or analyzing rail cars.” Id. (citing Ex. 2035 ¶¶ 34, 38). The parties agree that one of ordinary skill in the art “would have had at least a bachelor’s degree in a discipline related to mechanical engineering, physics, structural design, or an equivalent discipline, and at least two years 5 Because Patent Owner statutorily disclaimed claim 1, this ground is moot. Patent Owner, however, disagrees that the experience should include designing or analyzing “similar vehicles.” Prelim. Resp. 12. At this stage, for the reasons below, limiting the ordinary skill in the art to “at least two years of experience designing or analyzing rail cars” does not affect our analysis of the parties’ dispute or our determination that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Thus, based on the preliminary record, we adopt Petitioner’s proposed level of ordinary skill to determine whether review should be instituted.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that Petitioner’s declarant does not have “actual industry experience with railcar structures” and, thus, “makes the wrong conclusions and conflates various concepts that a [person of ordinary skill in the art] with practical industry experience and knowledge would not.” Prelim. Resp. 12–13 (citing Ex. 2035 ¶ 39). For the reasons discussed below, in our preliminary analysis, we give credit to the cited testimony of Petitioner’s declarant, because it finds support in the relied-upon portions of the record.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we need not construe expressly any claim term to resolve the parties’ dispute regarding whether Petitioner has demonstrated a reasonable likelihood of prevailing on at least one challenged claim. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))” slip op. at 14
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“been obvious over the 1946 Cyclopedia and Wong. Weighing the parties’ arguments and evidence, we find Petitioner provides sufficient rational underpinning for its assertion that it would have been obvious in view of Wong to implement a cross-wise extending beam to reinforce the 1946 Cyclopedia’s NSC ore car’s end slope sheet. Pet. 52–53; Prelim. Resp. 28– 30. In response to Petitioner’s assertion that “[t]he upper, outboard end of [Wong’s slope sheet 26] is reinforced by a cross-wise, L-shaped beam positioned under the slope sheet,” Patent Owner argues that “Wong does not provide reinforcement, but simply shows two sheets being connected for lading containment and load transfer.” Pet. 52; Prelim. Resp. 29. At this stage, we find Petitioner has the better position. Although we agree with Patent Owner that Wong shows two sheets connected to one another, that does not negate Petitioner’s correct observation that Wong shows an upper end of its end slope sheet 26 resting on an L-shaped structure, which apparently would reinforce end slope sheet. Pet. 52; Ex. 1003 ¶ 56. reason to look to Wong in the first place,” we again find that Petitioner has the better position at this stage. Prelim. Resp. 29. For example, Wong’s disclosure of “hopper railcar 10” (Ex. 1006, 3:6–9) and the 1946 Cyclopedia’s disclosure of “Freight Cars: Hopper Ore” (Ex. 1004, 27–28; Ex. 1054, 27–28) support Petitioner’s position that “Wong and the 1946 Cyclopedia are in the same field.” Pet. 52; see also id. at 76 (“Wong discloses a rail road hopper car (‘hopper railcar’ 10)”), 18–19 (“The ore-car section of the 1946 Cyclopedia—entitled ‘Freight Cars: Hopper Ore’— contains drawings and a photograph of an ore car manufactured by Patent Owner NSC.”); Ex. 1003 ¶ 56 (“Wong and the 1946 Cyclopedia are in the same field of hopper railcars”) (citing Ex. 1004, 27–28; Ex. 1006, code [57]). This position is not persuasively rebutted by Patent Owner’s argument that Wong’s hopper railcar 10 uses aluminum and steel together for certain reasons. Prelim. Resp. 28–29.” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 8,166,892 - Google LLC v. Eyesmatch Ltd.Some claims unpatentablePTAB · Nov 21, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Final written decision
Claims 1–18 are unpatentable: claims 1–6 and 10–12 over Rosenberg and Park, and claims 3, 4, 7–9, and 11–18 over Rosenberg, Park, and Geisner.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard.” Id. According to Petitioner, [t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Response.” PO Resp. 9 (citing Forsyth Decl. ¶¶ 53–54). For this Decision, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.10” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“Turning to the substantive issues, we find the District Court’s “mirror tracking mode” construction to be well-reasoned and supported by the record, and we therefore adopt that construction and its reasoning. As the District Court points out, both the “double the distance” and “same size” aspects of its construction are expressly discussed in the ’109 patent, which is incorporated in the ’110 patent. See Ex. 2008, 16 (citing Ex. 1021, 2:5–27, Figs. 5A, 5B), 40 (citing “same reasons set forth regarding the term ‘it appears to mimic a reflection of a mirror’” in support of construction of “mirror tracking mode”). So, too, is “flipping” or reversing of the image disclosed. Id. at 17 (citing Ex. 1021, 14:46–51, 15:41–47), 40.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Post-institution, Patent Owner invites us to construe limitation 1[f]’s recitation of “mirror tracking mode” and limitation 1[c]’s recitation of “adaptive transformation mapping.” PO Resp. 9–14. Regarding the latter, Patent Owner explains that “[i]n the District Court Litigation, ‘adaptive transformation mapping’ was construed as ‘continuously variable transformation mapping’ and ‘transformation mapping’ was construed as a ‘selected set of image transformations.’” Id. at 14 (citing Ex. 2008, 14, 37; Ex. 2013 ¶¶ 25, 27). Patent Owner does not, however, identify any way that those claim constructions affect our analysis of the parties’ patentability disputes. We find it unnecessary in resolving the parties’ patentability disputes to construe expressly limitation 1[c]’s recitation of “adaptive transformation mapping.”” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“persuasively address limitation 1[f]’s “mirror tracking mode.” In particular, Petitioner does not address persuasively the requirement, as explained in Section II.B above, that mirror tracking mode involves processing camera-captured images in a way that “maintains roughly the same size regardless of the user movement.” At odds with this requirement, Petitioner founds its case on an assertion that “Haan teaches the claimed mirror tracking mode” because “if the viewer is within 35 cm of the camera, a tracking mode is entered, applying resizing transformation.” Pet. 44 (emphasis added) (citing Ex. 1005 ¶¶ 75–76, 80–82, 90–94, 97; Ex. 1003 ¶¶ 205–210). The resizing transformation Petitioner references actually involves magnifying the user’s image by an amount that changes based on the user’s position relative to the camera, quite the opposite of maintaining image size regardless of the user movement. Ex. 1005 ¶¶ 75–76, Fig. 8. Thus, Petitioner’s initial position is unpersuasive. Petitioner’s shift to Haan’s “reflective mirror mode and conventional mirror period in the dual mode” is also unavailing. Reply 8. Consistent with Patent Owner’s arguments, Petitioner does not provide persuasive evidence that these operating states of Haan’s device involve any processing of camera-captured images. Sur-reply 13–14. To the contrary, Haan suggests that anytime its device provides an unmagnified image, it comes from a reflection off a physical reflective surface. See, e.g., Ex.1005 ¶ 76 (“This can be done for instance by using the device as a simple mirror, i.e. not displaying an image on the display device, but using the device in the reflective mode.”) (emphasis added), ¶ 92 (“a simple reflective mode, to act as a mirror”), ¶ 29 (“for a first range of positions, no image is displayed, whereby the reflective layer acts as a mirror, and for a second range of positions, the recorded image is displayed.”) (emphasis added). We also find unpersuasive Petitioner’s Reply arguments based on Haan’s disclosure of smoothly transitioning from “using the device as a simple mirror” (i.e., using a physical reflecting surface) to displaying a magnified image. Reply 11 (citing Ex. 1005 ¶¶ 76, 80). To the extent this may establish a point around the transition at which Haan’s system displays an image with relatively little magnification, it does not establish that Haan teaches, suggests, or renders obvious holding the displayed size roughly constant, “regardless of the user movement.” Indeed, given Haan’s focus on helping the user see things more clearly with image magnification, Petitioner’s argument that it would have been obvious to hold the size of the image constant is not persuasive. See, e.g., Ex. 1005 ¶ 4.” slip op. at 23
Patent outcomesUS 8,982,110 mixedClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,982,110 - PTAB · Nov 6, 2025 · IPR2025-00820 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–11 on all petition grounds, finding a reasonable likelihood that claim 1 would have been obvious over Tadros, Porter, Kalili, and Texin 990R.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–11 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 17–18 (citing Ex. 1007 ¶¶ 13–15). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’090 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Both parties indicate that no claim terms need to be expressly construed. Pet. 29–30; Prelim. Resp. 5. Consistent with that, we determine that we need not construe any claim terms expressly in order to resolve the parties’ dispute regarding whether Petitioner has demonstrated a reasonable likelihood of prevailing.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“Weighing the parties’ arguments and evidence, we find Petitioner’s arguments and evidence sufficient at this stage to demonstrate a reasonable likelihood of prevailing. Pet. 8–17, 30–49. For example, regarding whether of Porter’s disclosure to the problem faced by inventor of the ’090 patent. Pet. 8; Ex. 1007 ¶¶ 98–108, 125–127, 144–164. The ’090 patent illustrates that its inventor faced the problem of selecting desirable materials for an aligner, including selecting a desirable material for an aligner’s hard layer. Ex. 1001, 5:44–59. Petitioner and Dr. Osswald provide significant evidence and reasoning tending to show that Porter’s discussion of Tritan logically would have commended itself to the attention of an inventor facing the problem of selecting an aligner hard layer. Pet. 8 (citing Ex. 1007 ¶¶ 98–108, 125–127, 144–164). For example, Dr. Osswald explains that “because Tritan copolyesters are BPA-free, Rafih specifically discloses Tritan EX401 as an exemplary material” for its oral appliance. Id. ¶ 99 (citing Ex. 1104, 5:4–64, claims 2, 9, 10). In view of this, Dr. Osswald testifies that “Rafih would inform a [person of ordinary skill in the art] that Porter’s guidance regarding replacing polycarbonate with Tritan applies to dental appliances.” Ex. 1007 ¶ 146. At this stage, weighing Petitioner’s evidence against Patent Owner’s contrary attorney argument that Porter focuses on dishware, we determine Petitioner has shown sufficiently that Porter is analogous art. Pet. 8; Ex. 1007 ¶¶ 98–108, 125–127, 144–164; Prelim. Resp. 1, 9–10, 18–21.” slip op. at 11
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,648,090 - PTAB · Nov 6, 2025 · IPR2025-00821 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–23, 25, and 26 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Tadros, Porter, Kalili, and Texin 990R.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–23, 25, and 26 based on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 17 (citing Ex. 1007 ¶¶ 13–15). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’090 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party indicates that we need to construe expressly any claim terms. Pet. 27–28; Prelim. Resp. 5. Consistent with that, we determine that we need not construe any claim terms expressly in order to resolve the parties’ dispute regarding whether Petitioner has demonstrated a reasonable likelihood of prevailing.” slip op. at 8
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“arguments and evidence sufficient at this stage to demonstrate a reasonable likelihood of prevailing. Pet. 8–17, 53–71. For example, regarding whether Porter is analogous art, Petitioner sufficiently shows reasonable pertinence of Porter’s disclosure to the problem faced by inventor of the ’091 patent. Pet. 8; Ex. 1007 ¶¶ 98–108, 125–127, 146–165. The ’091 patent illustrates that its inventor faced the problem of selecting desirable materials for an aligner, including selecting a desirable material for an aligner’s hard layer. Ex. 1001, 5:44–59. Petitioner and Dr. Osswald provide significant evidence and reasoning tending to show that Porter’s discussion of Tritan logically would have commended itself to the attention of an inventor facing the problem of selecting an aligner hard layer. Pet. 8 (citing Ex. 1007 “because Tritan copolyesters are BPA-free, Rafih specifically discloses Tritan EX401 as an exemplary material” for its oral appliance. Id. ¶ 99 (citing Ex. 1104, 5:4–64, claims 2, 9, 10). In view of this, Dr. Osswald testifies that “Rafih would inform a [person of ordinary skill in the art] that Porter’s guidance regarding replacing polycarbonate with Tritan applies to dental appliances.” Ex. 1007 ¶ 147. At this stage, weighing Petitioner’s evidence against Patent Owner’s countervailing attorney argument that Porter focuses on dishware, we determine Petitioner has shown sufficiently that Porter is analogous art. Pet. 8; Ex. 1007 ¶¶ 98–108, 125–127, 146–165; Prelim. Resp. 1–2, 9–10, 34–36.” slip op. at 13
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 11,648,091 - PTAB · Nov 6, 2025 · IPR2025-00819 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims based on both obviousness grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“that Petitioner has demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine the teachings of Tadros, Kalili, and Texin 990R to meet the limitations of the claims challenged under this ground.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a four-year undergraduate degree in materials science, mechanical engineering, chemical engineering, or a related field and at least two years of experience in the field of polymer science, combined with at least two years of experience in the field of design, manufacture, and processing of thermoformable polymer sheets for use in various applications, such as in orthodontic and dental appliances. Additional education could substitute for professional experience and vice versa. Pet. 18–19 (citing Ex. 1007 ¶¶ 13–15). At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only claim terms in controversy need be construed. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). For purposes of this Decision, we determine that no claim term requires express construction.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“that Petitioner has demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine the teachings of Tadros, Kalili, and Texin 990R to meet the limitations of the claims challenged under this ground. We disagree that Petitioner fails to meet its burden as to the motivation to combine arguments. Petitioner persuasively maps the limitations of the challenged claims to portions of the references relied upon. Pet. 28–38 (claim 1), 38–51. Petitioner also, on this record, provides adequate statements of motivation to combine with a reasonable expectation of success. See, e.g., id. at 34–36 (citing Ex. 1007 ¶¶ 31, 39–42, 147–151, 174–176). The Petition’s reliance on supporting testimony and related corroborating evidence to support the combination does not amount to impermissible hindsight, as that testimony takes into account “knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Without further clarification or support from Patent Owner, and in the absence of testimony to support the assertion that a POSITA would not have combined the cited references in the manner proposed with a reasonable expectation of success, we are unpersuaded by Patent Owner’s arguments in this regard.” slip op. at 14
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 11,154,384 - PTAB · Nov 6, 2025 · IPR2025-00818 · APJ Kristina M Kalan · IPR · Institution
The Board instituted IPR on all challenged claims 1–22 based on all three asserted obviousness grounds.
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 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.” After considering the briefing and cited evidence of record, we institute inter partes review because we find that Petitioner establishes a reasonable likelihood that it will 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
“understanding of a person of ordinary skill in the art at the time the invention was made. See Graham, 383 U.S. at 17–18. Petitioner proposes that a person of ordinary skill in the art (sometimes referred to herein as a “POSITA”) would have had at least a four-year undergraduate degree in materials science, mechanical engineering, chemical engineering, or a related field and at least two years of experience in the field of polymer science, combined with at least two years of experience in the field of design, manufacture, and processing of thermoformable polymer sheets for use in various applications, such as in orthodontic and dental appliances. Additional education could substitute for professional experience and vice versa. Pet. 18 (citing Ex. 1007 ¶¶ 13–15). At this stage, Patent Owner does not dispute Petitioner’s proposal or offer an alternative proposal. See generally Prelim. Resp. Because Petitioner’s proposed level of ordinary skill in the art appears to be consistent with the cited prior art and is undisputed on this record, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (indicating that the prior art itself may reflect an appropriate skill level).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that no terms require construction, but that “Petitioner applies the prior art consistent with Patent Owner’s assertions in its Infringement Contentions (EX1014, 6-20.).” Pet. 26. Patent Owner does not propose any express claim constructions. Prelim. Resp. 5. Nor does Patent Owner allege that any of Petitioner’s claim interpretations contradict Petitioner’s position in the related district court litigation. Id. Only claim terms in controversy need be construed. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”). For purposes of this Decision, we determine that no claim term requires express construction.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“that Petitioner has demonstrated a reasonable likelihood of showing that a person of ordinary skill in the art would have been motivated to combine the teachings of Tadros, Kalili, and Texin 990R to meet the limitations of the claims challenged under this ground. We disagree that Petitioner fails to meet its burden as to the motivation to combine arguments. Petitioner persuasively maps the limitations of the challenged claims to portions of the references relied upon. Pet. 27–36 (claim 1), 36–46. Petitioner also, on this record, provides adequate statements of motivation to combine with a reasonable expectation of success. See, e.g., id. at 32–35 (citing Ex. 1007 ¶¶ 31, 39–41, 57–87, 146–150, 171–172). The Petition’s reliance on supporting testimony and related corroborating evidence to support the combination does not amount to impermissible hindsight, as that testimony takes into account “knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Without further clarification or support from Patent Owner, and in the absence of testimony to support the assertion that a POSITA would not have combined the cited references in the manner proposed with a reasonable expectation of success, we are unpersuaded by Patent Owner’s arguments in this regard. We also disagree with Patent Owner’s arguments about “adhesive lamination” using “tie layers” at this point in the proceeding. Prelim. Resp. 15–18. On this record, we are persuaded that Petitioner has adequately supported its arguments that one of ordinary skill in the art would have been motivated to use adhesive lamination to achieve the proposed combination. See, e.g., Pet. 33–35; Ex. 1007 ¶¶ 39–42, 120, 45, 51, 116, 120. Petitioner relies on Kalili as disclosing a hard layer suitable for combination with Tadros’s soft layers (Pet. 32), and more particularly, doing so in the context of a laminated multilayer aligner (Reply 4). To create the laminated multilayer aligner proposed, Petitioner’s suggested use of a particular type of well-known lamination, i.e. adhesive lamination, is sufficiently developed and supported in the Petition. Pet. 32–35. Here, Patent Owner recognizes that Kalili teaches lamination, but suggests that it does not specifically teach using adhesive lamination. Prelim. Sur-reply 5. We note, however, that the parties have identified limited types of known lamination for aligners: coextrusion, extrusion lamination, and adhesive lamination. Prelim Sur-reply 4; Pet. 14–15 n.3, 33. In KSR, the Supreme Court explained that when “there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR, 550 U.S. at 421. “If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” Id. Having reviewed Petitioner’s proffered arguments as to Tadros, Kalili, and Texin 990R, including motivation to combine the references asserted in this ground, with a reasonable expectation of success, we are persuaded on this record that Petitioner has met its burden for institution with respect to Ground 1.” slip op. at 14
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 10,973,613
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.