- Klipsta Pty Ltd v. Lindsay AlbaneseSome claims unpatentablePTAB · Jul 10, 2026 · IPR2025-00346 · APJ Annette R Reimers · IPR · Final written decision
Claim 16 is unpatentable as obvious over the asserted grounds; claims 1–15, 17, and 18 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would be a regular consumer/shopper with a rudimentary knowledge of the use of magnetic clips and a basic understanding of clip construction.” Pet. 13. We find that the ’047 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’047 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- BurdenMixed
“Petitioner’s mapping of the components of KR ’458’s fastening device is insufficient. Although Petitioner maps the center line of fastening member 115 to the recited second end, Petitioner fails to adequately map the recited first end of the second strap or explain why one of skill in the art would consider the second ferromagnetic member (convex member 117) to be disposed at the first end of the second strap as required by claim 1. that the first end is “upward to connector 117.” Pet. 24. This is not the end of the second strap. As discussed above, the end of the second strap wraps around rectangular ring 210 and is then secured to itself.7 Connector 117 is positioned below the true end of the strap, more in the middle of this segment of the strap. In other words, Petitioner arbitrarily defines the strap as only the portion of hat holder 110 between the center line and connector 117, in contradiction to what KR ’458 actually discloses. Nowhere does Petitioner explain why connector 117 is disposed at the first end of the second strap. Neither does Petitioner explain why we should disregard the true end of the strap, nor why one of skill in the art would consider only a middle portion of the strap to be the second strap. Thus, Petitioner has not satisfied its burden in this regard. Therefore, Petitioner has not shown that KR ’458 discloses “a second strap having a first end and a second end, the second strap joined to the first strap,” with “a second ferromagnetic member disposed at the first end of the second strap.” For the foregoing reasons, we determine that a preponderance of the evidence does not support that claim 1 is anticipated by KR ’458.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The ’047 patent discloses that in addition to being separate straps, the rear strap and the front strap “can be formed from a single piece of material.” Ex. 1001, 3:40–44, 5:24–32, 10:18–25. In particular, Figures 5A–5B of the ’047 patent illustrate rear strap 510 and front strap 520 as being “formed from a single piece of material that is folded approximately in half where a first half can be the rear strap 510 and a second half can be the front strap 520.” Id. at 10:18–21, Figs. 5A–5B. Indeed, Patent Owner acknowledges “[i]t should be noted that forming the first and second straps from a single piece of material is well within the scope of the claimed invention.” Ex. 1007, 5 (citing the ’047 patent at 3:37–44). Moreover, we note the positions taken by the parties are consistent with the fact that claim second strap are formed from a single folded strap.” Ex. 1001, 14:47–48. We, therefore, adopt Petitioner’s construction of “the second strap joined to the first strap” to include “a single piece of material.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Petitioner’s construction of a “hook” to include a “structure that serves to attach the hat holder to another object” is based on function, rather embodiments in the Specification of the ’047 patent. Although strap-style hook 340 of Figures 3A–3C is a flexible component rather than a more rigid component like hook 140 shown in Figures 1A–1C , both can be considered types of hooks. All of the embodiments, whether rigid or flexible, can be considered to have a hook-like structure when serving the function of attaching the hat holder to another object. Petitioner’s proposed construction would render the term “hook” meaningless, as various types of structures could be used to attach the hat holder to another object, that would not reasonably be considered to be a “hook.” For example, a snap, safety pin, ring, or button could be used to attach a hat holder to another object. Petitioner’s identification of different embodiments in the ’047 patent of hook-like structures does not show why one of skill in the art would consider almost any structure to be considered a “hook.” We, therefore, reject Petitioner’s construction of a “hook” as a “structure that serves to attach the hat holder to another object.” “wherein the first strap and the second strap are configured to retain a” slip op. at 12
Patent outcomesUS 10,413,047 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,413,047 - Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentablePTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision
Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22
Patent outcomesUS 11,333,007 mixedClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,333,007 - Tesla, Inc. v. Iqar Inc.All claims unpatentablePTAB · Sep 18, 2025 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–16 are unpatentable as anticipated by Koebler and obvious over Koebler alone and in combination with other references.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995) (citing 35 U.S.C. § 120). Section 112 requires, inter alia, that the specification contain a written description of the claimed invention. 35 U.S.C. § 112(a). In determining whether the written description requirement is met, we consider “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This analysis requires “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. Thus, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. For example, the analysis must consider “the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue.” Id. (alteration in original) (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir. 2005)). “While a prior application need not contain precisely the same words as are found in the asserted claims, the prior application must indicate to a person skilled in the art that the inventor was ‘in possession’ of the invention as later claimed.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008) (citations omitted); see also Purdue Pharma LP v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (“In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.”). However, “it is the specification itself that must demonstrate possession. And while the description requirement does not demand any particular form of disclosure . . . , a description that merely renders the invention obvious does not satisfy the requirement.” Ariad, 598 F.3d at 1352 (citations omitted); see also Lockwood v. Am. Airlines, 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“While the meaning of terms, phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one skilled in the art, all the limitations must appear in the specification. The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought.”).” slip op. at 7
- Skill levelSkill level board ownDecided for petitioner
“The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including: “(1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field.” Best Med. Int’l, Inc. v. Elekta Inc., 46 F.4th 1346, 1353 (Fed. Cir. 2022) (quoting Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007)). “The patent’s purpose can also be informative.” Id.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Initially, we note that, although Petitioner presents a definition for “traction” in its Reply (see Pet. Reply 10), Dr. Morellas agreed with Patent Owner’s proposed interpretation during his deposition: Q. What would a person having ordinary skill in the art understand the word “traction” to mean? A. It would mean the grip that the -- that the tire has with the road. Q. So when the tire is gripping the road, the vehicle will have traction; correct? A. Correct. Q. But if the wheels are spinning freely and not gripping the road, the vehicle has no traction; correct? A.· Correct. Ex. 2031, 36:8–17. Accordingly, we adopt Patent Owner’s interpretation of “traction” to be a measure “of the friction between the vehicle’s drive wheels and the road surface” such that “a vehicle’s wheels have ‘traction’ when wheel rotation acts to propel the vehicle along the roadway” and “[t]he vehicle’s wheels lose ‘traction’ when they spin freely relative to the road and thus are no longer acting to propel the vehicle along the roadway.” See PO Resp. 27; see also Tr. 18:4–5 (Petitioner’s counsel stating that “the ultimate disposition doesn’t matter which definition [of ‘traction’ the Board] adopt[s]”).” slip op. at 24
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“2. Anticipation “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 28
Patent outcomesUS 10,850,616 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,850,616 - Klipsta Pty Ltd v. Lindsay AlbaneseInstitutedPTAB · Jul 10, 2025 · IPR2025-00346 · APJ Annette R Reimers · IPR · Institution
The Board instituted IPR on claims 1–18 and all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by KR ’458.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition and the evidence of record, we conclude that the information demonstrates a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review as to the challenged claims of the ’047 Patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would be a regular consumer/shopper with a rudimentary knowledge of the use of magnetic clips and a basic understanding of clip construction.” Pet. 13. We find, for purposes of this Decision, that the ’047 Patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’047 Patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’047 Patent discloses that in addition to being separate straps, the rear strap and the front strap “can be formed from a single piece of material.” Ex. 1001, 3:40–44, 5:24–32, 10: 18–25. In particular, Figures 5A–5B of the ’047 Patent illustrate rear strap 510 and front strap 520 as being “formed from a single piece of material that is folded approximately in half where a first half can be the rear strap 510 and a second half can be the front strap 520.” Id. at 10:18–21, Figs. 5A–5B. Indeed, Patent Owner acknowledges “[i]t should be noted that forming the first and second straps from a single piece of material is well within the scope of the claimed invention.” Ex. 1007, 5 (citing the ’047 Patent at 3:37–44). Moreover, we note the positions taken by the parties are consistent with the fact that claim 13, which depends from claim 1, recites “wherein the first strap and the second strap are formed from a single folded strap.” Ex. 1001, 14:47–48. We, therefore, adopt Petitioner’s construction of “the second strap joined to the first strap” to include “a single piece of material.”” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The ’047 Patent discloses that the hook is used to attach the hat holder to another object. Ex. 1001, 8:31–33. In reference to Figures 3A–3C, the ’047 Patent discloses that “the hook 340 is formed from a strap of flexible material. The flexible material can be, for example, nylon, leather or leatherette. The hook 340 can be formed from the same material as the front or rear straps 310 and 320, respectively.” Id. at 8:26–31, Figs. 3A–3C; see also id. at 6:58–7:3. This disclosure is indicative that the term “hook” can be a strap in contrast to a structure that is typically regarded as being a hook, as shown in Figures 1A–1C, 2A–2C, 4A–4B, 6A–6B, 7, 8 of the ’047 Patent. Additionally, we note that consistent with the above disclosure, claim 10, which depends from claim 1, recites “wherein the hook is [a] flexible strap having a closure.” Ex. 1001, 14:41–42. We, therefore, adopt Petitioner’s construction of a “hook” to include “structure that serves to attach the hat holder to another object.”” slip op. at 13
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 10,413,047 - Sram, LLC v. Fox Factory, Inc.All claims unpatentablePTAB · Jun 6, 2025 · IPR2024-00216 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–9, 11–15, and 19 are unpatentable, including by anticipation over Gartner and Nakaya and obviousness over Gartner and Kodama and Nakaya and Kodama.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’223 patent “would have a degree in Mechanical Engineering and at least three years’ experience in vehicle suspension technology, or a Master’s degree in Mechanical Engineering with a concentration in design of vehicle suspension technology and/or shock absorbers.” Pet. 5–6, n.1. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. Based on the complete record, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As Petitioner discerns, claim 1 does not recite “dampening only at the end portion of a compression stroke.” Rather, claim 1 expressly requires “a fluid flow path formed in the bottom out cup for providing fluid communication from the cup to the compression portion of the chamber during a compression stroke of the damper[.]” Ex. 1001, 7:44–47 (emphasis added). In this way, claim 1 contemplates that the bottom out cup operates “during a compression stroke of the damper,” rather than only at the end portion of a compression stroke or only near an end of a compression stroke. Similarly, independent claims 11 and 19 do not require that the bottom out cup provide damping only at the end or near the end of a compression stroke. See Ex. 1001, 8:8–23, 8:61–9:5. Claim 11 recites “a bottom out cup in fluid communication with the damper chamber” and “an adjustable fluid flow path formed in the cup, the flow path providing fluid communication between the cup and the primary compression chamber in a compression stroke of the damper.” Id. (emphasis added). Claim 19 also recites “in a compression stroke of the damper” and does not limit damping to the end, or near the end of a compression stroke. See id. at 8:61–9:5 (“in to the compression chamber at a first rate with the valve in a first position and at a second rate with the valve in a second position where the first rate is greater than the second rate and the valve includes an adjuster accessible from an exterior of the shock absorber.”) (emphasis added). The ’223 patent as a whole also does not describe the bottom out cup as damping or providing dampening only at the end or near the end of the compression stroke, but more broadly as during the compression stroke. With reference to Figure 3A, the ’223 patent discloses that bottom out piston 250 enters “the bottom out cup 275 during a compression stroke of the shock absorber.” Ex. 1001, 3:38–50 (emphasis added). Additionally, we observe that the ’223 patent discloses “[a]s the piston completely engages the cup 275, dampening is increased.” Id. at 3:64–65 (emphasis added). We understand this to mean that bottom out dampening occurs at the end of the compression stroke, but may also occur “during” the compression stroke and “increase” as the piston completely engages the bottom out cup.” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. code (57) (emphases added). Though Gartner does not explicitly employ the term “bottom out cup,” it is not lost upon us that the internal shock absorber, e.g., shock absorber 400, functions during/in a compression stroke (e.g., after the initial portion of the compression stroke), to provide dampening while protecting from bottoming out. Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
Patent outcomesUS 8,550,223 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 8,550,223 - Mastercard Incorporated And Mastercard International Incorporated v. Ov Loop, Inc.All claims unpatentablePTAB · Mar 19, 2025 · IPR2023-01289 · APJ James A Tartal · IPR · Final written decision
Claims 1–33 are unpatentable as obvious over Collinge; the Board did not reach the anticipation grounds based on Collinge or the grounds based on Fiske.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner asserts that a person of ordinary skill in the art would have had “the equivalent of an undergraduate degree in electrical and computer engineering (or a related field) and approximately two years of work experience in the field of secure payment system,” and that “[a]dditional education in the field could be substituted for industry experience, and vice versa.” PO Resp. 4. Patent Owner does not suggest that its proposed level of ordinary skill materially differs from the level of skill proposed by Petitioner. See id. We find, on the current record, that the ’171 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’171 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. Accordingly, we adopt Petitioner’s proposed level of ordinary skill. We would have reached the same conclusions in this Decision had we adopted Patent Owner’s proposed level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In light of the lack of any dispute over the Second Construction, a construction we find consistent with the ordinary and customary meaning of the claim language, we need not resolve whether the claim language also encompasses Petitioner’s First Construction. Moreover, as explained below, we find Collinge renders obvious the subject matter of the limitation under either construction. See infra Section III.D.5. For the foregoing reasons, we find that an express construction of any claim term is not necessary for purposes of this Decision. 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 16
- Obviousness (§103) › Analogous artNot reached
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We disagree with Patent Owner’s arguments because here Petitioner is not relying on some other disclosure to fill a missing limitation absent from Collinge, but is instead relying only on Collinge and the knowledge a person of ordinary skill in the art would possess when appreciating the teachings of Collinge. Petitioner is not suggesting Collinge needed to be modified to add the use of an APDU, but, rather, that Collinge’s disclosure already contemplated it based on the well-known background of the art. Petitioner shows by a preponderance of the evidence that “the Collinge Provisionals state the disclosures therein are intended to be used in a ‘standard’ PayPass transaction,” and that a person of ordinary skill in the art would have considered “the PayPass Specification (and EMV Specifications, with which the PayPass Specification complies) when reading Collinge.” Pet. Reply 8 (citing Ex. 1009, 8, 14–15, 22–23; Ex. 1050 ¶ 22). in a “standard” PayPass transaction and that a person of ordinary skill in the art would have known, at a minimum, that it would have been obvious from Collinge that the “first set of data” (i.e., the encrypted payload in Collinge) would have been “usable” by the application of Collinge “to formulate an application protocol data unit response,” as required by limitation [1.C]. Petitioner further demonstrates how Collinge discloses that the “first set of data” was “useable by the application to formulate” an APDU response in addressing limitation [1.E–3], which specifically requires “generating a response.” See Pet. Reply 11 (explaining that “[d]etails of how [the encrypted payload] is used to formulate an APDU response are explained where that is separately claimed”); see also id. (citing Pet. 48–50 (addressing limitation [1.E-3])).” slip op. at 36
Patent outcomesUS 10,032,171 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,032,171 - Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCAll claims unpatentablePTAB · Feb 26, 2025 · IPR2023-01236 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–18 are unpatentable as obvious; the Board did not reach the alternative Van Vliet, Shoap, and Hosecraft ground for claims 12–13.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Permian submits that one skilled in the art would have had either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production, or (2) at least four years of industry experience in the oil and gas industry including well drilling, completion, or production. Pet. 16–17 (citing Ex. 1003 ¶¶ 75–78). FAS responds that it “does not dispute Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 11. Permian’s proposed definition appears consistent with the 1 US 2011/0197988 A1, published Aug. 18, 2011 (Ex. 1004, “Van Vliet”). 2 COXREELS, INC., Coxreels 1125 Series “Competitor” Hand Crank and Motorized Hose Reels, https://web.archive.org/web/20140408035634/ http://www.coxreels.com/products/hand-crank/1125-series, published Apr. 08, 2014 (Ex. 1005, “Coxreels”). 3 US 7,819,345 B2, issued Oct. 26, 2010 (Ex. 1006, “Shoap”). 4 HOSECRAFT USA, Clamps Accessories, https://web.archive.org/web/ 20130702084457/http:/www.hosecraftusa.com/accessory-category/ Hose_Clamps, published July 2, 2013 (Ex. 1007, “Hosecraft”). problems and solutions described in the challenged patent and the prior art of record. As such, we adopt the level of skill in the art as defined by Permian.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Here, the specification of the ’118 patent does not suggest that the tube and sleeve are anything but physically separate and distinct structures— [T]he tube 62 may be a flexible elastomeric tube and the sleeve 64 may be a flexible fabric sleeve. The sleeve 64 is generally loosely arranged around the tube 62, although the sleeve 64 may closely fit on the tube 62 to prevent substantial slipping of the sleeve 64 relative to the tube 62 during use and handling. * * * In this example, the [sensor communication] line 66 is routed 40 through the hose 40 between (radially) the tube 62 and the sleeve 64. The sleeve 64 thus serves to secure and protect the line 66, and the sleeve 64 may limit spill and spewing if there is a hose 40 rupture. Ex. 1001, 5:21–44. Those descriptions in the specification—(1) that the tube and sleeve are made of different materials, one being “elastomeric” and the other “fabric,” (2) that the sleeve is “arranged around” the tube, (3) that a sensor line is routed “between” the tube and sleeve, and (4) that the sleeve “limit[s]” spillage in the event a rupture in the tube—clearly support that the tube and sleeve are physically separate structures such that the sleeve serves as a protective cover for the tube. Nowhere do we discern, nor does Permian explain, where the specification indicates that the tube and sleeve might also be one and the same structure. Thus, in light of the specification, we maintain that the only reasonable construction is that the tube and sleeve, as recited in claims 5, 10, and 15, are separate and distinct structures.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with FAS. Although indisputably the schematic of Van Vliet’s fuel delivery system shows the flow passage running through manifolds 36, 38 and hoses 24, nowhere do we discern that Van Vliet definitively discloses or otherwise suggests that the flow passage runs through reels 30, as required by claim 1. Indeed, even Permian’s expert acknowledges that Van Vliet’s schematic “is a high-level representation and is not intended to depict the physical appearance or form” of the various components. Ex. 1003 ¶ 112 n.146. At best, Van Vliet discloses that “hoses 24 are preferably stored on reels 30,” but is otherwise silent insofar as any flow stream or passage running through the reels. Ex. 1004 ¶ 15 (emphasis added). Indeed, in order for the reel to be a part of the system’s fluid stream, there would need to be some disclosure or suggestion in Van Vliet that hose 24 is actually connected to the reel as opposed to being merely stored on the reel. But there is no such disclosure. To the contrary, Van Vliet explains that “each hose 24 is connected to a fuel outlet 22 by a dry connection 60 and to a cap 26 by a dry connection 62.” Id. ¶ 22 (emphases added). In other words, the flow stream through Van Vliet’s hose 24 cannot be connected to reel 30 if the ends of the hose are connected to dry connections 60 and 62, which indisputably are not part of the reel. Thus, we reject the notion that Van Vliet’s reel 30 is “part of a single fluid stream that includes manifolds 36/38, fluid outlet 22, and hose 24,” as Permian surmises from simply looking at Van Vliet’s schematic. See Pet. Reply 3–4. As such, we find that Permian fails to demonstrate that Van Vliet’s discloses or otherwise suggests a flow passage “running through a respective one of the reels” or being connected “via a respective one of the reels,” as required by claim elements 1(e) and 1(f).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We disagree that one skilled in the art would have deemed Coxreels’s teachings to be unsuitable or unacceptable for Van Vliet’s fuel delivery system. In our view, FAS’s unsuitability argument focuses improperly on the physical incorporation into Van Vliet’s system of every component and material described in Coxreels. But the test for obviousness is whether “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention,” not whether the physical features of one reference may be bodily incorporated into the structure of another reference. See Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Indeed, whether one reference can be incorporated in another is “basically irrelevant” since the test for obviousness asks only “whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Here, rather than relying on every feature of Coxreels, Permian makes clear that it is relying on Coxreels’s teaching of “a reel for storing hoses that has a built-in ‘fluid path.’” Pet. 36–38 (citing Ex. 1003 ¶¶ 149–152). More specifically, according to Permian, one skilled in the art “would have recognized advantages of the flow passage in Coxreels’ reels (e.g., ‘a non-crimping, flat smooth hose wrap’) to facilitate connection to the manifolds and hoses of Van Vliet’s system.” Pet. Reply 7. Thus, FAS’s argument of physical incorporation of an ancillary feature of Coxreels’s reel is irrelevant to Permian’s reliance on incorporating Coxreels’s teaching of a built-in flow passage running through a hose reel with Van Vliet’s system that already includes flow path connections suitable for diesel fuel. Moreover, “[a] person of ordinary skill is also a person of ordinary” slip op. at 14
Patent outcomesUS 10,815,118 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,815,118 - PTAB · Nov 12, 2024 · IPR2024-00854 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–13, finding a reasonable likelihood that claims 1 and 9 are obvious over Peter and Neroni.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.1” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention (“POSA”). Id. at 13, 17. Petitioner’s declarant asserts that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or a similar field and 2-3 years of experience in machine design, including machines that include fluid dynamics or fluid paths, such as vacuum cleaners. Additional education could offset less experience and vice versa, and a POSA could have also obtained similar knowledge and experience through other means. Ex. 1002 ¶ 36; see also Pet. 9 (making the same assertion without citation to declarant). Patent Owner does not contest the level of skill. Prelim. Resp. 3. We are persuaded, on the present record, that the proposal of Petitioner’s declarant is consistent with the problems and solutions in the ’030 patent and prior art of record. We adopt the above definition of the level of skill for the purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner, nor Patent Owner, provides any express claim constructions. See Pet. 9–10; Prelim. Resp. 3. We agree that no terms need to be construed. 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“On the current record, we find that the Petition provides sufficient rationale to modify Peter in view of Neroni. See Pet. 57–61 (citing Ex. 1002 ¶¶ 208–217). For example, Petitioner contends that one of ordinary skill in the art would have been motivated to incorporate Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool in order to “improve cleaning . . . by agitating the surface being cleaned.” Pet. 60 (citing Ex. 1007, 1–2; Ex. 1002 ¶ 215). Petitioner explains that Neroni establishes that “powered cleaning tools were common” in the prior art (id. (citing Ex. 1008, 1:17–49; Ex. 1002 ¶ 215)), and, relying on the declaration testimony of Dr. Giachetti, argues that one of ordinary skill in the art would have “understood the well-known benefits of a powered floor tool and would’ve been motivated to incorporate Neroni’s electrical system into Peter to achieve these benefits” (id. (citing Ex. 1002 ¶ 216). Patent Owner argues that one of ordinary skill in the art would not have been motivated to combine the vacuums taught by Peter and Neroni because they “are directed to different types of vacuum cleaners” and “each [is concerned with] solving different problems with their respective vacuum cleaners.” Prelim. Resp. 17. However, other than pointing out that the vacuum cleaners in Peter and Neroni are different, Patent Owner itself provides conclusory statements, and fails to adequately explain what these differences are, or why they would deter one of ordinary skill in the art from combining the two references with a reasonable expectation of success. Patent Owner does not argue, and we see no reason to believe, that incorporating Neroni’s teachings of a power cleaning tool adaptor into Peter’s cleaning tool is not within the ability of one of ordinary skill in the art. See KSR Int’l Co., 550 at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Accordingly, on the current record, we determine that Petitioner has provided sufficient arguments and evidence to support its assertion that one of ordinary skill in the art would have been motivated to combine Peter and Neroni. See 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.”). Based on the current record, we further determine that Petitioner has demonstrated a reasonable likelihood of showing that the combination of Peter and Neroni teaches the electrical connector limitations listed above.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,478,030 - PTAB · Oct 9, 2024 · IPR2024-00733 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood of success based on anticipation by Liddell and obviousness over Simpson and Liddell.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingTerm construed petitioner constructionDecided for petitioner
“preamble term “hand carriable” does not limit the claimed apparatuses. “[A] preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’” Catalina Marketing, 289 F.3d at 808 (quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)). This rule against giving effect to intended-use language in the preamble “reflects a longstanding substantive aspect of the patent statue—specifically, the ‘well settled’ fundamental principle ‘that the recitation of a new intended use for an old product does not make a claim to that old product patentable.’” Arctic Cat Inc. v. GEP Power Products, Inc., 919 F.3d 1320, 1328 (Fed. Cir. 2019) (quoting In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). In this case, we view the phrase “hand carriable,” as it appears in the preamble, to be indicative of an intended use of the claimed apparatuses, rather than a structural limitation, and as such, we do not see it to be limiting based on the current record. Patent Owner does not point to any particular structural limitation required by the preamble term “hand carriable.” See Prelim. Resp. 2–10. Although the independent claims each recite “a handle,” the claims do not explicitly tie this limitation to the “hand carriable” language in the preambles. In any case, to the extent the handle recited in the claims may be used for carrying the claimed apparatus, the claims need not rely on the preamble term “hand carriable” for antecedent basis, as the handle limitation is introduced in the body of the claims. In other words, with respect to the functionality of carrying the apparatus by hand, the claim bodies recite “a structurally complete invention.” Catalina Marketing, 289 F.3d at 808.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. In our view, Petitioner’s analysis, on this record, adequately identifies where all the elements of claim 1 are found in Liddell.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On the current record, we find that the Petition provides sufficient rationale to modify Simpson in view of Liddell. See Pet. 57–61 (citing Ex. 1002 ¶¶ 250–267). For example, Petitioner contends that one of ordinary skill in the art would have been motivated to incorporate Liddell’s cyclonic separating apparatus into Simpson’s vacuum cleaner in order to reap “the benefits of cyclonic separation, including maintaining steady suction as the separator fills with dirt.” Id. at 59 (citing Ex. 1002 ¶¶ 256– 259). Petitioner explains that Organ establishes that “bagless vacuums like ‘cyclonic’ vacuums were ‘becoming increasingly popular’” in the prior art because they are able “to maintain a consistently high level of suction, even as the collecting chamber fills with dirt” (id. (citing Ex. 1006, 1:8–13)), and relying on the declaration testimony of Dr. Giachetti, argues that one of ordinary skill in the art would have “would have been motivated to substitute Simpson’s dust separation system with a bagless cyclonic separator for the same reason” (id. (citing Ex. 1002 ¶ 281)).” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,327,607 - Tesla, Inc. v. Iqar Inc.InstitutedPTAB · Sep 26, 2024 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–16 under all asserted grounds, finding a reasonable likelihood that Koebler anticipates claims 1, 15, and 16 and that the asserted obviousness grounds succeed for at least some claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only when “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 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“require the Enumerated Current Conditions to be determined by analyzing data from the Enumerated Sensors, and it is this claimed invention for which the specification must provide written description support. 35 U.S.C. §§ 112(a), 120. Although, as discussed above, the claim requires only one Enumerated Sensor and one Enumerated Current Condition, it additionally requires that data from the sensor be analyzed to determine the current condition. Thus, to support the full scope of the claims, Koebler must disclose that each of the Enumerated Current Conditions is determined by analyzing data from one of the Enumerated Sensors. Although Petitioner asserts that Koebler does not provide written description support for ten of the Enumerated Sensors (see Pet. 10–11), Petitioner focuses its arguments on three of the current conditions (moisture, an amount of vibration, and traction) (see id. at 15–20), and we likewise focus our analysis on these three current conditions. Petitioner’s arguments for these three current conditions are substantially identical, including that Koebler does not teach or suggest using data from an Enumerated Sensor to determine each of the three current conditions. See id. at 15–19.” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artOther
“Thus, at this preliminary stage of the proceeding and based on the present record, we determine that Petitioner has established a reasonable likelihood that Koebler does not provide written description support for the claims of the ’616 patent. For completeness, we note that we find Petitioner’s arguments that Koebler does not provide verbatim or synonymous disclosure of the words “moisture,” “vibration,” or “traction” (see, e.g., Pet. 15–16) unavailing, as there is no requirement for verbatim or synonymous disclosure in the prior application. PowerOasis, 522 F.3d at 1306; Purdue Pharma, 230 F.3d at 1323. Similarly, there is no requirement for “inherent disclosure” of the recited current conditions. See, e.g., Pet. 16–17. Rather, as explained above, the relevant inquiry is whether the application relied upon (here, Koebler) reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., 598 F.3d at 1351.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,850,616
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.