- Uatp IP LLC v. Slick Slide LLCSome claims unpatentablePTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision
Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20
Patent outcomesUS 11,998,854 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 11,998,854 - Uatp IP LLC v. Slick Slide LLCInstitutedPTAB · Apr 8, 2025 · PGR2024-00054 · APJ Julia Heaney · PGR · Institution
The Board instituted PGR on claims 1–17 and 22–28 and all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate 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). Upon consideration of the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one claim challenged in the Petition is unpatentable. Further, Patent Owner has not persuaded us that it is appropriate to exercise our discretion not to institute review. Accordingly, we institute a post-grant review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level patent owner adoptedOther
“On this record, we do not find Patent Owner’s proposed experience level of at least five years in measurement and analysis of coefficient of friction to be supported. As to the necessity of experience in textile engineering and fiber science, Patent Owner’s position, although not supported by declarant analysis of the factors listed above, is consistent with the disclosure of the ’854 patent, which describes features of a mesh layer in textile and fiber terms. See e.g., Ex. 1001, 10:17–11:14, 12:65–13:8, 14:20–24. On the whole, however, we do not discern on this record how specific experience in textile engineering and fiber science of a person of ordinary skill would materially alter the outcome at this stage of the proceeding. For purposes of this decision only, we apply Patent Owner’s proposed definition of a person of ordinary skill in the art, except for the requirement of five years of experience in measurement and analysis of coefficient of friction. The level of skill in the art remains an open issue in this proceeding. Further submissions by the parties may include argument and evidence that would assist in the resolution of this issue at the close of trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “no formal claim construction is necessary in this proceeding.” Pet. 10; Reply 1, 4. Patent Owner contends the terms “mesh layer” and “coefficient of friction” require construction. Prelim. Resp. 14–16; Sur-reply 2–5. We have considered the parties’ arguments and discuss them below with regard to each of the terms Patent Owner contends should be construed. Because our determination that Petitioner demonstrates at least one challenged claim meets the threshold for institution (see SAS Inst., 138 S. Ct. at 1359–60) is not based on construing the term “mesh layer” or “coefficient of friction,” we determine we need not construe either claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). As further discussed below, we invite the parties to address claim construction at trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We agree with Petitioner that the ’854 patent specification does not include clear and explicit lexicography or a disclaimer that would support requiring “coefficient of friction” to be determined by a specific ASTM test method. The portion of the specification Patent Owner asserts as a definition of “coefficient of friction” (see Ex. 1001, 11:31–42) is a description of an embodiment; we find it does not express patentee intent to redefine the term. Further, the statement that “the coefficient of friction … may be determined using the … ASTM D1894 standard test method” (id. at 11:32–35) indicates that use of that specific test method is optional. Accordingly, in the absence of patentee lexicography or disavowal, we do not limit the scope of the term “coefficient of friction” to require that it be measured by a specific ASTM standard. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). We note that the ’854 patent specification sets forth a definition for the coefficient of friction between the surfaces of the mesh material and the slide surface. Ex. 1001, 4:38–46. As stated above, however, we do not expressly construe any claim term at this stage of the proceeding. Should the parties address the construction of “coefficient of friction” at trial, we will make a determination after the close of evidence and any hearing.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,998,854 - PTAB · Jun 20, 2023 · PGR2023-00008 · APJ Kristina M Kalan · PGR · Institution
The Board instituted post-grant review of claims 1–13 on all petitioned grounds, finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute post-grant review, we must determine that the information presented in the Petition, “if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims of the ’624 patent is unpatentable. Thus, we institute post-grant review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“evaluated the subject matter of Riis during examination of the ’624 patent, we agree that Riis was before the Office, as discussed in connection with our analysis of the first part of the Advanced Bionics framework, above. Examiner T presumably was aware of Riis by virtue of having initialed an IDS containing Riis in the ’624 patent’s application and also by virtue of having initialed an IDS containing Riis in the ’067 Application, but Examiner T did not apply Riis in connection with the examination of the ’624 patent. On this record, Patent Owner also fails to show that the claims of the child application leading to the ’624 patent are substantially similar to those of the parent ’814 patent in which Examiner S considered Riis, and, thus, consideration of Riis during the prosecution of the ’814 patent does not equate to consideration of Riis during the prosecution of the ’624 patent. Regarding Patent Owner’s argument (2) that Petitioner fails to sufficiently show how the Examiner erred in evaluating the prior art, we find Petitioner’s arguments demonstrate that Examiner T, the examiner of the ’624 patent, did not apply Riis (or Wypych or Tatarka) during the examination of the’624 patent. As Petitioner argues, the error lies in that “the Examiner failed to consider the relevance of Riis as it applied to the pending method claims,” because although “Riis was considered during examination of the parent ’999 application, Riis was not similarly considered during examination of the ’018 application which led to the ’624 patent.” Pet. 76–77. We determine that the circumstances here demonstrate that the Examiner erred in evaluating the prior art.” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityNot reached
“35 U.S.C. § 322(a)(2) to deny institution, arguing that the Petition fails to identify every RPI. Prelim. Resp. 10–11, 56–60. Patent Owner argues that the Petition “should also have identified its parent corporation, Huhtamäki Oyj . . . as well as the related corporation Huhtamaki, Inc. . . . as RPIs to comply with the statutory requirements for a PGR.” Id. at 10. On this record, we determine that we need not address whether Huhtamäki Oyj and Huhtamaki, Inc. are unnamed RPIs because, even if they were, it would not create a time bar or estoppel under 35 U.S.C. § 325. See SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (precedential); Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (Board’s jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11 at 10 (PTAB July 18, 2017) (“evidence [of failure to identify all RPIs] is, at best, suggestive regarding an issue that is not jurisdictional”); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest . . . the Director can, and does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). Here, notwithstanding the arguments devoted to the RPI issue in the Preliminary Response, Preliminary Reply, and Preliminary Sur-Reply, we are not persuaded that Petitioner is barred or estopped from this proceeding, or that Petitioner purposefully omitted Huhtamäki Oyj or Huhtamaki, Inc. to gain some advantage. As Petitioner argues, the “RPI analysis is not necessary at institution, because Patent Owner has not alleged Petitioner would be time barred or otherwise estopped based on unnamed RPIs.” Prelim. Reply 5 (quoting SharkNinja, IPR2020-00734, Paper 11 at 18). As SharkNinja states, certain Board decisions go through extensive analysis to determine whether parties should have been named as RPIs, whereas other Board decisions determine that “such a lengthy exercise is unnecessary for the purposes of rendering a decision on institution of trial.” SharkNinja, IPR2020-00734, Paper 11 at 19. Here, as in SharkNinja, we find the latter approach better serves the interest of cost and efficiency. Thus, at this time and on this record, we will not consider whether Huhtamäki Oyj or Huhtamaki, Inc. must be named as RPIs.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention “would have had a relevant technical degree in Chemical Engineering, Polymer Science, Materials Science, or the like, and 2–3 years of experience in laminate or film manufacture or similar packaging manufacture and that less experience may be necessary with additional education and vice versa.” Pet. 17 (citing Ex. 1003 ¶¶ 66–72). In its 4 Neither Patent Owner nor Petitioner appear to present any evidence directed to secondary considerations. See generally Pet.; Prelim. Resp.; Prelim. Reply; Prelim. Sur-Reply. Preliminary Response, Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See generally Prelim. Resp. We adopt Petitioner’s definition, which is consistent with the level of skill in the art at the time of the invention as reflected by the prior art and the ’624 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,260,624 - Triller, Inc. v. Tiktok Pte. Ltd.InstitutedPTAB · May 16, 2022 · IPR2022-00180 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on all challenged claims and all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“framework, with the first part being 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. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 25 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine 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 of the ’322 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in computer science, electrical engineering, or an equivalent discipline, or equivalent experience, including familiarity with multitasking and multithreading, wireless communications and client/server computing, and, in addition, familiarity with digital music distribution and DRM.” Ex. 1025 ¶ 62; Pet. 35. Patent Owner submits that one of ordinary skill in the art would have had “a Bachelor’s degree in Computer Science, Computer Engineering, Human Factors, or an equivalent degree and at least two years of experience working in the fields of user interfaces, communications applications, networking applications, or media applications, or a person with equivalent education, work, or experience in such fields.” Prelim. Resp. 2. The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownOther
“Petitioner does not identify any specific claim term for construction. Pet. 5. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’322 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1002, 8:63–65). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions10 from the “Definitions” section of the Specification:” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,992,322 - Triller, Inc. v. Tiktok Pte. Ltd.InstitutedPTAB · May 16, 2022 · IPR2022-00179 · APJ John D Hamann · IPR · Institution
The Board instituted inter partes review of claims 1–3, 6, 22, 26, 27, and 31 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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) (2018); see 37 C.F.R. § 42.108 (2021). Upon consideration of the papers, we determine 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 of the ’132 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under § 325(d), we use a two-part framework, with the first part being whether the same or substantially the 4 US 2006/0008256 A1, published Jan. 12, 2006 (Ex. 1011, “Khedouri”). 5 US 8,572,169 B2, issued Oct. 29, 2013 (Ex. 1010, “Partovi”). 6 US 2010/0031366 A1, published Feb. 4, 2010 (Ex. 1012, “Knight”). substantially the same arguments previously were presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III(C)(5), first paragraph)). As we discuss below, we are not persuaded that the first part of the framework is met. Patent Owner does not argue that Abrams previously was presented to the Office. See Prelim. Resp. 7 n.3, 26 n.7. And we are not persuaded that Abrams is substantially the same art as Sittig or Reddick simply because Abrams may have one claimed feature in common with Sittig (i.e., “a generic browser”) and a different claimed feature in common with Reddick (i.e., allowing a user to edit, but not create, profiles). Id. Petitioner is relying on Abrams to teach multiple claimed features, and Patent Owner’s § 325(d) arguments address only a subset of those features. Id. Moreover, as we discuss below, we disagree with Patent Owner that Sittig employing a browser was a reason that particular rejection was overcome. See infra Section IV (addressing Applicant’s remarks to a rejection). Rather, the rejection was overcome for failing to teach a limitation (i.e., that a software application allowed a user, over a wireless connection, to create a user account) that Abrams teaches. See id.; infra Section VI(B)(3) (applying Abrams). Nor do we agree with Patent Owner that Abrams (unlike Reddick) fails to teach allowing a user to create an account. See infra Section VI(B)(3) (applying Abrams). substantially the same arguments previously were presented to the Office. See Prelim. Resp. 7 n.3, 26 n.7. In light of the above, we find that the first part of the Advanced Bionics framework is not met, and thus, we do not proceed to the second part. See Advanced Bionics, Paper 6 at 10. Accordingly, we decline to exercise discretion to deny institution under 35 U.S.C. § 325(d).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we find in applying either parties’ definition for what comprises the level of ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claims. At this stage of the proceeding, however, we adopt Petitioner’s proposed definition as it is supported by expert testimony, and Patent Owner’s is not. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claims.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Pet. 4. Patent Owner submits that the claim term “software application” is defined in the Specification of the ’132 patent. Prelim. Resp. 3. More specifically, Patent Owner submits that the “Definitions” section of the Specification provides the following: “Software Application: The Client software application which is to be delivered over-the-air to, or pre-installed on, the Wireless Computing Device.” See id. (quoting Ex. 1001, 8:61–63). We note that the definition for software application incorporates, based on the capitalization of defined words, the following additional definitions7 from the “Definitions” section of the Specification: (i) “Client: A computing device connected to a network delivering the features and functions of a network-centric application to the user or consumer of the application”; (ii) “Wireless Computing Device: A type of Client which connects to the network via a Wireless Network”; and (iii) “Wireless Network: A network which provides wireless” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,648,132 - Apple Inc. v. LBT IP I LLCAll claims unpatentablePTAB · Mar 2, 2022 · IPR2020-01190 · APJ John A Hudalla · IPR · Final written decision
Claims 1–20 are unpatentable as obvious over Sakamoto, Gotoh, and Levi; the revised motion to amend proposing claims 21–40 is denied as those claims are also unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“an inter partes review of claims 1–20 (“the challenged claims”) of U.S. Patent No. 8,542,113 B2 (Ex. 1001, “the ’113 patent”). LBT IP I LLC (“Patent Owner”) filed a Preliminary Response (Paper 8). Taking into account the arguments presented in Patent Owner’s Preliminary Response, we determined that the information presented in the Petition established that there was a reasonable likelihood that Petitioner would prevail with respect to its unpatentability challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on March 4, 2021, as to all challenged claims and all grounds of unpatentability. Paper 9 (“Dec. on Inst.”).” slip op. at 1
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art (or “POSITA”) “would have had a bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with at least two years of experience in GPS navigation, dead reckoning, portable tracking devices, or related technologies.” Pet. 5 (citing Ex. 1003 ¶ 30). For purposes of our Decision on Institution, we adopted Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least.” Dec. on Inst. 7. Patent Owner states that it adopts this definition. PO Resp. 3; MTA 17; RMTA 17–18. Thus, we discern no reason to change the level of ordinary skill in the art applied in this Final Written Decision. Accordingly, a person 4 The trial record does not include any evidence of secondary considerations of nonobviousness. of ordinary skill in the art would have had a bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, Computer Science, or an equivalent degree, with two years of experience in GPS navigation, dead reckoning, portable tracking devices, or related technologies. We determine that this definition comports with the level of skill necessary to understand and implement the teachings of the ’113 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither party puts forth any terms for construction. See Pet. 8. We determine that no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’ . . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“combination. We are persuaded that an ordinarily skilled artisan would have modified Sakamoto’s terminal to include Gotoh’s accelerometer, which is used to record acceleration data when the terminal is unable to receive GPS signals. See, e.g., Ex. 1003 ¶¶ 112–118; Ex. 1005 ¶ 81. We are further persuaded that an ordinarily skilled artisan would have implemented Levi’s dead reckoning techniques in the combined system to determine differential position coordinates based on accelerometer data. See, e.g., Ex. 1003 ¶¶ 201–202. We note that the secondary references themselves provide reasons for the combination insofar as Gotoh and Levi both teach the use of an accelerometer to supplement GPS positioning when a GPS signal is lost. See Ex. 1005 ¶ 66; Ex. 1006, 2:10–14. We are also persuaded by Mr. Andrews’s uncontested testimony that an ordinarily skilled artisan would have reasonably expected success in making the combination. See, e.g., Ex. 1003 ¶¶ 117, 202. For these reasons, Petitioner has established that an ordinarily skilled artisan would have had reasons to combine Gotoh and Levi with Sakamoto. c. Conclusion Regarding Claim 1 Petitioner has persuasively shown that the combination of Sakamoto, Gotoh, and Levi teaches all limitations of claim 1. Petitioner also has put forth persuasive reasons for combining these references and has established that an ordinarily skilled artisan would have expected success in making the combination. On the entire trial record, we determine Petitioner has shown by a preponderance of the evidence that the subject matter of claim 1 would have been obvious over the combination of Sakamoto, Gotoh, and Levi.” slip op. at 23
Patent outcomesUS 8,542,113 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,542,113
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.