- Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Aug 18, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision
Claims 22, 23, 28, and 30 are unpatentable over Choi, Labaziewicz, and Yu; claims 1–3, 10–12, 24, 25, 32, and 33 were not shown unpatentable.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“We decline Patent Owner’s invitation to construe “during a frame” of “independently controlling simultaneous data acquisition with each of the first and second channels during a frame” by importing the extraneous limitations “at some point between the beginning and the end of the exposure interval during which the image sensors capture a single image.” As pointed out by Petitioner, Patent Owner’s proposed construction is unsupported by the language of claim 22 and the ’180 Specification because Specification does not disclose an exposure interval nor suggest “during a frame” is limited to an exposure interval. Patent Owner and its expert Dr. Saber cite only extrinsic evidence (Exs. 2006, 2009) to support its argument that claim 22 should be limited to an “exposure interval during which the image sensors capture a single image.” See PO Resp. 16–17; Ex. 2020 ¶ 64. Similarly, Patent Owner relies only on extrinsic evidence (e.g., Ex. 2011, 1; Ex. 2022, 1; Ex. 2020 ¶ 66) to limit “during” to “at some point between the beginning and the end.” See id. at 18. When considered in the context of claim 22 and the ’180 Patent Specification which do not limit “during a frame” to an exposure interval, we find that we cannot rely on Patent Owner’s citations to extrinsic evidence to yield a reliable construction for “during a frame.” As demonstrated in the analysis below, we need not provide an explicit construction for “during a frame” to resolve the parties’ disputes regarding the merits of the patentability challenges. See Realtime, 912 F.3d at 1375. We apply the ordinary and customary meaning for “during a frame.” To the extent that an explicit identification of the ordinary and customary meaning may aid the understanding of our analysis, consistent with the language of claim 22 and the ’180 Patent Specification, we find that the ordinary and customary meaning for “during a frame” is “during the period of time that data for an image frame is acquired.” See Ex. 1001, code (57), 20:6–24, 25:23–35.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the prior art of record.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “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.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”). Patent Owner’s arguments fail to meet this burden of production because, aside from addressing deficiencies of written description support the ’854 Provisional Application provides written description support for all of the limitations of the claimed invention. See PO Resp. 60–64; PO Sur-reply 25–28. Specifically, Patent Owner does not address written description support in the ’854 Provisional Application for “independently controlling simultaneous data acquisition with each of the first and second channels during a frame”––limitation [22.3]––the heart of the parties’ claim construction disputes addressed above in Section II.A. See PO Resp. 60–64; PO Sur-reply 25–27. Accordingly, Patent Owner has not met its burden of production in coming forward with evidence or argument to show possession of the claimed invention in the ’854 Provisional Application. As a result, the burden of production does not shift back to Petitioner, and, therefore, the ’180 Patent is not entitled to the benefit of the August 25, 2004, filing date of the ’854 Provisional Application.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner does not present arguments that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the teachings of Matsushima to acquire data for images 62A and 62B at the argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).10 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Id.” slip op. at 32
Patent outcomesUS 7,916,180 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,916,180 - Tesla, Inc. v. Intellectual Ventures II LLCSome claims unpatentablePTAB · Jul 21, 2026 · IPR2025-00339 · APJ Kristen L Droesch · IPR · Final written decision
Claims 22, 23, 28, 30, and 33 are unpatentable over Choi, Labaziewicz, and Yu under § 103; claims 1–3, 10–12, 24, 25, and 32 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field and 2-3 years of experience in digital imaging systems,” and that “[l]ess experience may be necessary with additional education, and likewise, less education may be necessary with additional work experience.” Pet. 6 (citing Ex. 1003 ¶¶ 16–19). Patent Owner does not dispute Petitioner’s definition. See generally PO Resp. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’180 Patent Specification and the prior art of record.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Owner to show that Labaziewicz is not prior art because the ’180 Patent is entitled to the earliest August 25, 2004, filing date of the ’854 Provisional Application. See Dynamic Drinkware, 800 F.3d at 1379–1380. For a claim in a later-filed application to be entitled to the filing date of an earlier application, the earlier application must provide written description support for the claimed subject matter. Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1337 (Fed. Cir. 2010). To satisfy the written description requirement, “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.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also VasCath v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“[T]he applicant must . . . convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention . . . now claimed.” (emphasis omitted)), Ariad Pharm. Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[I]t is the specification itself that must demonstrate possession.”).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We do not agree with Petitioner’s arguments based on retrieval of data from CCD 18A and CCD 18B. Although Matsushima’s CCD drive circuits 20A and 20B are driven synchronously by timing generator 28 (see Ex. 1007 ¶ 27), Matsushima discloses that “accumulated signal charges are retrieved by CCD drive pulses applied by CCD drive circuits 20A and 20B, and are sequentially output from CCD 18A and CCD 18B as voltage signals (analog image signals) corresponding to each signal charge” (see Ex. 1007 ¶ 23) (emphasis added). In other words, regardless of whether CCD drive circuits 20A and 20B are driven synchronously by timing generator 28, Matsushima discloses that voltage signals corresponding to the accumulated 8 Petitioner’s citation erroneously includes ¶¶ 34–36 of Exhibit 1069. CCD 18A and CCD 18B sequentially––not output at the same time or simultaneously.” slip op. at 30
- Strike new argumentNew argument disregardedDecided for patent owner
“argues that Matsushima renders obvious this limitation. See id. at 21, 23, 30; PO Resp. 33–34 (“[T]he Petition provides no further explanation why Matsushima renders this limitation obvious.”). In the Reply for the first time, Petitioner asserts that “a POSITA would understand that Matsushima’s disclosure, including its multi-channel architecture, synchronous control of channels, and capturing two images that are scaled versions of the same scene, renders obvious simultaneous acquisition during a frame. Pet. Reply 13 (citing Ex. 1069 ¶ 49). We do not consider Petitioner’s belated argument because it exceeds the proper scope of a reply. A reply may only respond to arguments raised in the corresponding patent owner response. See 37 C.F.R. § 42.23. As explained in the Trial Practice Guide, “respond” “does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Trial Practice Guide at II.I. (December 2025)(citing 37 C.F.R. § 42.23).9 A reply that raises a new issue or belatedly presents evidence may not be considered. See id. For example, a “[p]etitioner may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability.” Id. Petitioner clarifies that the Petition does not argue inherency. See Pet.” slip op. at 33
Patent outcomesUS 7,916,180 mixed§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,916,180 - Therabody, Inc. v. Datafeel Inc.Institution deniedPTAB · Aug 21, 2025 · PGR2025-00026 · APJ Lisa L Tsang · PGR · Institution
The Board denied institution because Petitioner did not show claim 4 more likely than not unpatentable on either obviousness or § 112 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 324(a), a post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Post-grant review is available for patents that issue from applications that at one point contained at least one claim with an effective filing date on or after March 16, 2013. See Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), §§ 3(n)(1), 6(f)(2)(A). Upon considering the arguments and evidence, we conclude that the information presented shows it is not more likely than not that at least one challenged claim of the ’174 patent is unpatentable.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner because, based on the current record, it is consistent with our review and understanding of the technology and descriptions in the ’174 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our analysis below would be the same regardless of whether we adopt Petitioner’s or Patent Owner’s proffered level of skill in the art.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner and Patent Owner agree that no claim terms need construction. Pet. 14; Prelim. Resp. 6. After reviewing the evidence and arguments presented by the parties, we determine that it is not necessary to expressly construe any claim terms because doing so would not change the outcome of our analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“of Choi to support its argument that an ordinarily skilled artisan would have understood Choi’s infrared lamp housing to define a concave shape as claimed. See Pet. 61–62. With only this explanation and evidence from Petitioner and Dr. Jenson, however, we cannot not discern how these portions of Choi would have so apprised an ordinarily skilled artisan. For example, the side view of the infrared lamp housing, illustrated in Figure 5 reproduced below, shows the housing having a convex, rather than concave, shape. See Ex. 1008, Fig. 5. Furthermore, paragraphs 20 and 48 refer to the housing’s “circular” shape and outer periphery and also “tubular” shape. See id. ¶¶ 20, 48. But these descriptions, either alone or together with Figure 5, also do not support adequately a finding that Choi’s housing is concave. Choi’s teachings in paragraphs 20 and 46 regarding the lamp housing guiding or directing infrared light from the lamp to irradiate the skin of a user, without more, are similarly deficient. See id. ¶¶ 20, 46. And although Dr. Jensen appears to equate “concave” with “inner circular,” he does not provide the basis for his testimony or explain what “inner circular” means, particularly in the context of distinguishing a convex shape from a concave shape. See Ex. 1002 ¶ 197. Accordingly, we determine there is insufficient evidence to support Petitioner’s conclusory statements that an ordinarily skilled artisan would have understood Choi’s infrared lamp housing to define a concave shape as claimed.” slip op. at 23
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 12,036,174 - PTAB · Apr 21, 2025 · IPR2024-01489 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–30 on all asserted grounds, finding a reasonable likelihood that Cohen anticipates the challenged claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008); Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Identity of terminology is not required for a claim element to be met directly by the prior art. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009); In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (citations omitted) (“[T]his is not an ‘ipsissimis verbis’ test.”). For anticipation, we take into account not only the specific teachings of the reference, but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). B. Level of Ordinary Skill in the Art” slip op. at 13
- Parallel petitionsDecided for petitioner
“Wrinkl, Inc. v. Slack Technologies, LLC, No. 1:24-cv-00620 (D. Del. May 23, 2024). Pet. 1; Paper 4, 1. Patent Owner also states that a “second IPR was filed against the same patent in proceeding IPR2024-01490.” Paper 4, 1. Patent Owner does not argue that we should exercise discretion under 35 U.S.C. § 314(a) because Petitioner uses more than one petition to challenge the ’731 patent. challenges the alleged priority date of the ’731 patent (IPR2024-01489) (‘First Petition’) and the second petition assumes that the Patent Owner’s claimed priority date is valid, and addresses prior art references predating that priority date (IPR2024-01490) (‘Second Petition’).” Ex. 1019, 1. In accordance with the Consolidated Trial Practice Guide1 (“CTPG”), issued in November 2019, “there may be circumstances in which more than one petition may be necessary” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG 59. Such is the case here. Patent Owner does not file any Preliminary Response or other paper disputing Petitioner’s use of two petitions to challenge the claims of the ’731 patent. Based on the record before us, we consider the merits of both petitions because Petitioner’s stated reasons for filing two petitions are consistent with the CTPG. See generally Ex. 1019 (citing CTPG, 59 (“the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references)). C. The ’731 Patent” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)) (“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.”). Petitioner first must raise the issue of entitlement to a claimed priority date by “identifying, specifically, the features, claims, and ancestral application or applications allegedly lacking § 112 support for the claims based on the identified features.” Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 8 at 9–10 (PTAB Apr. 22, 2014); Mission Integrated Techs., LLC v. Joshua Clemente, IPR2023-01285, Paper 16 at 18 (PTAB Feb. 23, 2024). Then, Patent Owner must make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner. See id.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“two years of experience in the graphical user interface field” or, alternatively “a master’s degree in computer science (or similar discipline) and at least two years of similar experience.” Pet. 16 (citing Ex. 1003 ¶ 40). We find that “at least” in Petitioner’s formulation of the level of skill in the art is vague and open-ended. Otherwise, we preliminarily adopt Petitioner’s formulation of the level of skill in the art, which appears consistent with the specification and prior art presented. C. Claim Construction” slip op. at 14
Claim construction§ 102 anticipation§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 11,973,731 - Catalyst Orthoscience Inc. v. Shoulder Innovations, Inc.Institution deniedPTAB · Dec 19, 2024 · PGR2024-00042 · APJ Lisa L Tsang · PGR · Institution
The Board denied institution of PGR challenging claims 1–16, finding the first five Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“during the conference and in the Minute Entry, and in the court’s subsequent Order Regarding Schedule. We also note that the evidence shows the district court may intend to reschedule the trial to a date substantially earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1029, 10−11. However, given that the Order does not unambiguously set a trial date for December 1, 2025, or even sometime in December 2025 or January 2026 (see Ex. 1028), we decline to speculate as to what date the court may ultimately select for trial. Moreover, the record shows that Petitioner has consistently opposed moving the trial to a date earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1026, 2−4; Ex. 1029, 11. We view Petitioner’s opposition as creating yet more ambiguity as to the trial date in the co-pending litigation. Therefore, we find that factor 2 is neutral because the exact trial date in district court is uncertain.” slip op. at 14
- BurdenNot reached
“if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. This standard is only met “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (Vidal Oct. 4, 2022) (precedential) (citing Guidance Memo 4). We have reviewed Petitioner’s challenges and Patent Owner’s arguments. For the reasons explained below, we determine that Petitioner’s challenges have not risen to the threshold of compelling merits. Before addressing the parties’ arguments regarding the asserted grounds, we address: (a) the level of ordinary skill in the art, (b) claim construction, and (c) relevant principles of law; and we provide (d) overviews of the asserted art.” slip op. at 18
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that its proffered additional level of ordinary skill in the art appears consistent with the experience Petitioner describes. See Pet. 16. For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner and supplemented by Patent Owner, because, based on the current record, it is consistent with our review and understanding of the technology and descriptions in the ’561 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In this regard, Mr. Fallin testifies that I have decades of experience working directly with joint replacement systems, including hip joint replacement systems, knee replacement systems, and facet joint replacement systems. My work on these joint replacement systems included my direct engagement or supervision of and professionals in the inventing, designing, fabricating, testing, obtaining regulatory approvals, ensuring regulatory compliance, commercializing, and patenting of these systems. Ex. 1002 ¶ 10. Mr. Fallin also testifies that his experience “includes working directly with supervising professionals whose responsibilities included designing, developing, and commercializing joint replacement systems and similar device[s].” Id. ¶ 67 As such, Mr. Fallin identifies “decades” of experience with joint replacement systems. Ex. 1002 ¶ 10. Moreover, Patent Owner does not persuasively explain why Mr. Fallin’s “direct engagement” and “working directly with,” as well as “supervision” of, other individuals designing joint replacement systems, does not at least imply personal design experience. See Prelim. Resp. 10–11. Therefore, we determine that the current record reflects that Mr. Fallin is qualified to testify as to the knowledge of a person of ordinary skill in the art.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,771,561 - PTAB · Aug 16, 2024 · IPR2023-00658 · APJ Scott A Daniels · IPR · Final written decision
The Board canceled original claim 1, denied the proposed substitute claim as indefinite under § 112, and did not reach the asserted obviousness grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We have, on the complete record now before us, mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that the designer of ordinary skill in the art would be a person who has a bachelor’s degree in furniture design or an equivalent field or alternatively two years of practical experience designing furniture . . . [which] is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop. Ex. 1002 ¶¶ 34–35. Based on the complete record, we adopt Petitioner’s articulation of a designer of ordinary skill as it is supported by the testimony of Mr. Hatch. Id. ¶¶ 33–38. We also note that, based on the complete trial record, our” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In contrast, Patent Owner’s declarant, Mr. Williams, testifies based on his “experience[,] that tenons are generally included in the larger portion of two table top portions.” Ex. 2006 ¶ 55. However, Mr. Williams’ experience does not explain why an ordinary observer would understand such functional and ornamental characteristics of tenon and hole arrangements. Id. Nor does this testimony proclaim that tenons must be in the larger of two table top potions. Indeed, even considering an ordinary observer imbued with Mr. Williams’ level of expertise and experience, and understanding for instance that it may be more likely that the wider portion includes tenons, this does not resolve the glaring inconsistency that Figure 1 illustrates holes and Figure 8 illustrates tenons. In other words, Mr. Williams’ “experience” does not resolve the visible tension that, on one hand, Figure 1 illustrates holes as part of the claimed ornamental design in the wider portion of the table top, and on the other hand, Figure 8 illustrates tenons as part of the same wider portion of the table top. The problem here may be more eloquently explained as “Two roads diverged in a yellow wood[,] And sorry I could not travel both.” Robert Frost, The Road Not Taken, The Poetry of Robert Frost—The Collected Poems, 105, Henry Holt and Co. (1969). Considering the entire record before us in this case we credit Mr. Hatch’s testimony. The issue is not, as Patent Owner has framed it, whether “[o]ne of ordinary skill in the art would understand how the tenons and holes should be positioned on each of the table top portions.” Reply Opp. 7. The question is whether a person of ordinary skill in the art viewing the design for a table top in the proposed substitute claim as would an ordinary observer, understand whether or not the wider portion of the table top as Figures 1 and 6, holes. As Mr. Hatch persuasively explains, in the proposed substitute claim a majority of the drawings for the wider portion, i.e., Figures 1–6, omit the tenons added in Figure 8. Ex. 1011 ¶ 37 (Mr. Hatch testifying that “Figure 8 is the only amended figure that adds tenons/dowels.”) Indeed, Figures 1 and 6 not only fail to illustrate tenons, but actually are amended to include holes rather than tenons, as described in the Motion to Amend. See, e.g., Motion to Amend 6 (Patent Owner describing, “Figure 1: Removal of disclaimer of a total of four holes by amending the outline of the four holes from broken lines to solid lines.”). On the complete record in this proceeding, we determine that a” slip op. at 28
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“On the complete record in this proceeding, we determine that a designer of skill in the art considering the claim from either their own, or the perspective of an ordinary observer, would be uncertain whether the wider portion of the claimed table top depicted in Figures 1–8 includes tenons, or holes. It is reasonable that anyone observing two distinct ornamental designs for the same wider portion of the table top would be unclear as to the claimed ornamental design where holes are shown in one figure but tenons are shown in another figure illustrating the same wider portion of the table top. Observing as a whole, the figures illustrating the table top in the proposed substitute claim, the question remains, does the wider portion of the table top include tenons, or holes? See Maatita, 900 F.3d at 1376 (“Ultimately, a patent is indefinite for § 112 purposes whenever its claim, read in light of the visual disclosure (whether it be a single drawing or multiple drawings), ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’”) (quoting Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014)). proposed substitute claim fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” See Nautilus, 572 U.S. at 910. Thus, Petitioner has shown, by a preponderance of the evidence, that the proposed substitute claim is indefinite and we accordingly deny Patent Owner’s Noncontingent Motion to Amend.” slip op. at 29
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteUnpatentable
“Federal Circuit recently explained that “a design patent is indefinite under § 112 if one skilled in the art, viewing the design as would an ordinary observer, would not understand the scope of the design with reasonable certainty based on the claim and visual disclosure.” In re Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018). In Maatita, the Federal Circuit reversed the Board’s finding of indefiniteness of a design for a shoe bottom, i.e., a shoe sole, finding that Maatita’s two-dimensional drawing clearly demonstrates the perspective from which the shoe bottom should be viewed. A potential infringer is not left in doubt as to how to determine infringement. In this case, Maatita’s decision not to disclose all possible depth choices would not preclude an ordinary observer from understanding the claimed design, since the design is capable of being understood from the two-dimensional, plan- or planar-view perspective [] shown in the drawing. Id. at F.3d 1378–79. Different from Maatita, the issue in this proceeding is not whether an ordinary observer would sufficiently understand a three-dimensional ornamental design from a two-dimensional figure, but whether inconsistencies between figures of the proposed substitute claim render the scope of the claimed table top uncertain. See Maatita, 900 F.3d at 1376 (The Federal Circuit specifically distinguishing Maatita’s single two-dimensional drawing from indefiniteness issues raised by inconsistent drawings: “[h]ere, we are not dealing with inconsistencies in the drawings, or inconsistencies between the drawings and the verbal description, but” slip op. at 24
§ 103 obviousness§ 112 disclosurecites Nautilus - PTAB · Apr 10, 2024 · PGR2024-00004 · APJ Scott A Daniels · PGR · Institution
The Board instituted PGR on claims 1–24 and all petition grounds, finding it more likely than not that claims 1–3, 5–6, 8–11, 13–17, and 20–24 are obvious over Emma, Butt, and Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable based on the grounds presented. Therefore, we institute a post-grant review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or computer engineering . . . [a]lternatively, a POSITA could have had a bachelor’s degree in mechanical engineering, industrial engineering, physics, or a related engineering or discipline, plus at least two years of experience working with control circuits, sensors, kitchen appliances, or similar fields. ordinary skill in the art and states that “[t]he differences do not matter for purposes of this Petition.” Prelim. Resp. 4–5. On this record, Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’746 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary 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 petitioner
“level of smoke” Neither Patent Owner nor Petitioner expressly indicate that any claim terms require express construction. See Petition 13–14; Prelim. Resp 5. However, Petitioner contends that for the phrase “level of smoke,” recited in claims 1, 15, and 22, “Patent Owner interprets ‘level of smoke’ as merely detecting smoke.” Pet. 14 (citing Ex. 1009, 6). Patent Owner argues that it “does not offer a special definition” and “asked the [district] court to give these terms their plain and ordinary meaning.” Prelim. Resp. 5, n 2. Patent Owner explains that a person of ordinary skill in the art “would similarly understand ‘level of smoke’ when read in the full context of the intrinsic record.” Id. in light of the specification, we understand “level of smoke” as a predetermined level of smoke “indicative of a dangerous condition” as the specification of the ’746 patent explains. Ex. 1001, 15:43–44, see also id. at 15:63–65 (The ’746 patent describing “[t]he determination of a level of smoke corresponding to a dangerous condition.”). To the extent the parties disagree, they may address this issue more directly in subsequent briefing. slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“POSITA to reasonably combine Emma with a smoke sensor reference.” Prelim. Resp. 44. We agree that Emma does not disclose a smoke sensor, but Petitioner has provided other prior art references, namely Butt and Smith, and presented several reasons, namely safety reasons, that a person of ordinary skill in the art would consider adding a smoke detector from Butt and Smith to Emma’s microwave oven. Pet. 24, 74–75. Obviousness is not determined from the perspective of the inventors or authors of a single prior art reference. Rather, obviousness is determined from the perspective of a hypothetical person having ordinary skill in the art. It is only that hypothetical person who is presumed to be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Petitioner argues, for instance, that Butt teaches the fire safety aspects of “a controller for interrupting a supply of electricity to an appliance upon detection of a trigger, such as [s]moke.” Pet. 24 (quoting Ex. 1015, 1:16– 18). Dr. Horenstein testifies that from a safety perspective, a person of ordinary skill in the art would have “combine[d] the additional kitchen-safety appliance features of Butt with the Emma microwave/refrigerator so as to enable the Emma microwave to shut down upon the detection of smoke, and to reenable the Emma microwave for a further cooking session when the smoke had cleared.” Ex. 1023 ¶ 124. Where Butt arguably discloses a smoke detector external to an appliance, Dr. Horenstein testifies that a person of ordinary skill in the art would have looked to “Smith to include the smoke sensor in operative connection with the microwave oven with the reset functionality disclosed by Butt for the added benefit of reusing the microwave oven.” Id. ¶ 127 (emphasis added). each directed towards shutting down a component of the device in response to a sensor output indicative of an unwanted condition.” Id. ¶ 127. Dr. Horenstein testifies further that a person of ordinary skill in the art “would have combined the elements as disclosed by known methods for the purposes of modifying Emma’s microwave / refrigerator combination to include Smith’s smoke sensor to be operatively connected with its cooking area and to include Butt’s smoke sensor and reset functionality.” Id. ¶ 126. Dr. Horenstein explains that inclusion of Butt’s reset functionality with Smith’s smoke sensor operatively connected with the cooking area into Emma would result in such elements merely performing the same function as they do separately, i.e., sensing smoke to withdraw electrical power from an electrical cooking appliance and then re-enabling the electrical cooking appliance. Id. Moreover, Dr. Horenstein testifies that the prior art, for example, Butt, specifically recognized the need to solve the problem of fires in the home started by cooking appliances. Id. ¶ 128 (citing Ex. 1015, 1:22–44). Butt explains, that “[h]ome fires are a serious problem in the United States. The National Fire Protection Association reports that between the years 1999- 2002, for example, there were 114,000 reported home fires associated with cooking alone.” Ex. 1015, 122–25. Similarly, Smith expressly teaches “[a] method and apparatus for anticipating the occurrence of a fire in the cooking cavity of a microwave oven.” Ex. 1014, Abstract.” slip op. at 36
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,674,746 - PTAB · Apr 10, 2024 · PGR2024-00003 · APJ Scott A Daniels · PGR · Institution
Instituted PGR on claims 1–28 and all petition grounds; the Board found a reasonable likelihood that claims 1, 13, 15, 20, 22, and 24–25 are obvious over Emma, Butt, and Smith.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). A post-grant review may be instituted only if “the information presented in the petition . . . demonstrate[s] that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine, for the reasons set forth below, that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable based on the grounds presented. Therefore, we institute a post-grant review of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or computer engineering . . . [a]lternatively, a POSITA could have had a bachelor’s degree in mechanical engineering, industrial engineering, physics, or a related engineering or discipline, plus at least two years of experience working with control circuits, sensors, kitchen appliances, or similar fields. Pet. 14 (citing Ex. 1002 ¶ 50; Ex. 1023 ¶ 6). Patent Owner provides a similar level of ordinary skill in the art and states that “[t]he differences do not matter for purposes of this Petition.” Prelim. Resp. 4. On this record, Petitioner’s proposed level of ordinary skill in the art is consistent with our review and understanding of the technology and descriptions in the ’745 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther
“level of smoke” Neither Patent Owner nor Petitioner indicate that any claim terms require express construction. See Petition 13–14; Prelim. Resp 5. However, Petitioner contends that for the phrases “level of smoke” and “amount of smoke,” recited in claims 1, 15, and 24, it has “applie[d] what it understands Patent Owner contends is the meaning of this term in this Petition[,] and shows below the claims are invalid under Patent Owner’s construction.” Pet. 13–14 (citing Ex. 1009, 6). Patent Owner argues that it has “does not offer a special definition” and “asked the [district] court to give these terms their plain and ordinary meaning.” Prelim. Resp. 5, n 2. Patent Owner explains that a person of ordinary skill in the art “would similarly understand ‘level of smoke’ when read in the full context of the intrinsic record.” Id. For purposes of this Decision, reading the plain language of the claims in light of the specification, we understand “level of smoke,” or amount of smoke, in the claims generally as a predetermined level of smoke “indicative of a dangerous condition” as the specification of the ’745 patent explains. Ex. 1001, 15:48–49, see also id. at 16:1–2 (The ’745 patent describing “[t]he determination of a level of smoke corresponding to a dangerous condition.”). To the extent the parties disagree, they may expressly address this issue more directly in subsequent briefing. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“from Butt and Smith to Emma’s microwave oven. Pet. 24. Obviousness is not determined from the perspective of the inventors or authors of a single prior art reference. Rather, obviousness is determined from the perspective of a hypothetical person having ordinary skill in the art. It is only that hypothetical person who is presumed to be aware of all pertinent prior art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985). Petitioner argues, for instance, that Butt teaches the fire safety aspects of “a controller for interrupting a supply of electricity to an appliance upon detection of a trigger, such as [s]moke.” Pet. 24 (quoting Ex. 1015,1:16– 18). Dr. Horenstein testifies that from a safety perspective, a person of ordinary skill in the art would have “combine[d] the additional kitchen-safety appliance features of Butt with the Emma microwave/refrigerator so as to enable the Emma microwave to shut down upon the detection of smoke, and to reenable the Emma microwave for a further cooking session when the smoke had cleared.” Ex. 1023 ¶ 124. Where Butt arguably discloses a smoke detector external to an appliance, Dr. Horenstein testifies that a person of ordinary skill in the art would have looked to “Smith to include the smoke sensor in operative connection with the microwave oven with the reset functionality disclosed by Butt for the added benefit of reusing the microwave oven.” Id. ¶ 127 (emphasis added).” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 11,674,745 - Simpson Strong-Tie Company Inc. v. Columbia Insurance CompanySome claims unpatentablePTAB · Mar 15, 2023 · PGR2021-00109 · APJ Stephen E Belisle · PGR · Final written decision
Claims 1–12, 15–17, and 21–23 are unpatentable; the revised contingent motion to amend is granted for claim 32 and denied for claims 24–31, 33–35, 38–40, and 44–46.
RulingsFinal written decision- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art Petitioner contends that a person of ordinary skill in the art, at the time” slip op. at 22
- BurdenNot shown unpatentable
“Accordingly, based on the foregoing and the complete record before” slip op. at 38
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“C. Claim Construction We apply the claim construction standard articulated in Phillips v.” slip op. at 23
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteMixed
“persuaded by Petitioner that the limitations “a channel-shaped portion configured to receive the structural component” and “a base configured to receive an end portion of the structural component thereon to support the structural component” would not have informed the skilled artisan, with reasonable certainty, about the scope of the claimed invention. See Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370 (Fed. Cir. 2006) (“When the meaning of the claim would reasonably be understood by persons of ordinary skill when read in light of the specification, the claim is not subject to invalidity upon departure from the protocol of ‘antecedent basis.’”). Accordingly, we conclude that Petitioner” slip op. at 40
Patent outcomesUS 11,021,867 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 11,021,867 - PTAB · Jan 26, 2023 · IPR2022-01172 · APJ Jon M Jurgovan · IPR · Institution
Instituted IPR on claims 1–4, 6, and 9 on both grounds: anticipation by Chen359 and obviousness over Tanaka and Bareau.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Turning to the first part of the framework, there is no dispute that, although Chen359 is an ancestor to the ʼ397 patent, it was not previously presented to the Office in the context of determining patentability of the claims of the ʼ397 patent. Instead, Patent Owner argues that the Examiner issued the challenged claims without finding that they lack written description support from the Specification of the ’397 patent, and therefore, implicitly, also from the 2011 application. Prelim. Resp. 16 (citing Ex. 1002, 1213–17). A review of the prosecution history of the ’397 patent, however, shows that there were no arguments raised regarding written description support or whether any of the prior applications in the chain constituted prior art to the ʼ397 patent. Nor were there any arguments otherwise calling into question the priority date of the ʼ397 patent. And there certainly were no arguments made that Chen359 was prior art to the ʼ397 patent. The Examiner, therefore, did not analyze written description support in relation to these prior applications. We therefore conclude that, as to the first ground, the same or substantially the same art or arguments were not previously presented to the Office. Because we determine that the facts do not satisfy the first part of the Advanced Bionics framework, we need not address the second part of the framework.” slip op. at 10
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Notably, Petitioner argues that “Sunny is not time-barred” from filing a Petition challenging the ʼ397 patent (Prelim. Reply 1) and Patent Owner does not dispute this contention. We thus find that for purposes of institution, we need not address whether Sunny is an unnamed real party-ininterest “because, even if it were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential); see also Intel Corp. v. Alacritech, Inc., IPR2017-01391, Paper 8 at 3–6 (PTAB Nov. 28, 2017) (holding that the Board will not address the argument for purposes of institution that a litigation co-defendant should be a named a real party-ininterest in the absence of an allegation that the co-defendant would be time barred under section 315(b)). We find that this “approach better serves the interest of cost and efficiency.” SharkNinja, Paper 11 at 20; 37 C.F.R. § 42.1(b). Accordingly, we find that Patent Owner’s arguments concerning Sunny not being named as a real party-in-interest do not form a basis to deny institution under our circumstances.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one challenged claim of the ’397 patent. At this stage of the proceeding, however, we have not made a final determination with respect to the patentability of the challenged claims. VI. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–4, 6, and 9 of the ’397 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4(b), inter partes review of the ’397 patent shall commence on the entry date of this Order, and notice is hereby given of the institution of a trial.” slip op. at 40
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In order to determine whether the 2011 application provides written description support for the claims of the ʼ397 patent, we look to see whether the specification of the 2011 application “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter [of the challenged claims] as of the filing date [of the 2011 application].” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he purpose of the written description requirement is to ‘ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.’” Id. at 1353–54 (quoting University of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 920 (Fed. Cir. 2004)). Thus, whether the specification complies with the written description requirement calls for the comparison of the scope of the claim with the scope of the description to determine whether the inventor has demonstrated possession of the claimed invention. First, we look to the claims to determine their scope. Here we agree with Petitioner that independent claim 1 of the ʼ397 patent does not limit the first lens element to having a particular refractive power. The plain language of claim 1 recites “a first lens element” without specifying the lens as having a specific refractive power or any other configuration or characteristic. Ex. 1001, 31:65. Thus, we determine that the scope of claim 1 encompasses a first lens having either a positive or negative refractive power. Next, we look at the written description of the 2011 application. The Summary of the Invention section of the 2011 application repeatedly describes the invention as having “a first lens element with positive refractive power.” Ex. 1005, 2:10–11; see 2:22–23 (“the first lens element with a positive refractive power”); 3:9–11 (“the first lens element with the positive power provides partial refractive power needed by the optical imaging system and reduces the total optical length.”). The Detailed Description of the Preferred Embodiments likewise describes a “first lens element 110 with a positive refractive power.” Id. at 7:13. Each of the eight embodiments and associated figures show the first lens as having a positive refractive power. Id. at 18:2, 21:2, 24:2, 27:2, 30:2, 33:2, 36:2, Tables 1-2, 2-2, 3-2, 4-2, 5-2, 6-2, 7-2, 8-2, Figs. 1A, 2A, 3A, 4A, 5A, 6A, 7A, 8A.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,564,397
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.