• Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 11,333,007
• Tesla, Inc. v. Iqar Inc.All claims unpatentable
  PTAB · 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 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,850,616
• LG Electronics, Inc. v. Constellation Designs, LLCNo claims unpatentable
  PTAB · Jul 10, 2024 · IPR2023-00319 · APJ Brent M Dougal · IPR · Final written decision

  Claims 5, 15, and 25 were not shown unpatentable because Barsoum supports their priority date, and neither Barsoum nor ATSC327 qualifies as prior art.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Petitioner does not sufficiently explain why claim 5 requires this type of optimization, or why this would be required in order for Barsoum to provide written description support for the claim. Claim 5 does not expressly require optimization of phase considerations and Petitioner does not argue for a claim construction that would include such a requirement.” slip op. at 17

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “(3) Conclusion – Written Description In view of the above, we find that either disclosure in Barsoum identified by Patent Owner satisfies the written description requirement. 2. 35 U.S.C. § 103 As noted previously, Petitioner argues that dependent claims 5, 15, and 25 are obvious over the combination of Barsoum and ATSC327. Pet. 67–79. Having determined the Barsoum provides written description support for claims 5, 15, and 25, Barsoum cannot be prior art under 35 U.S.C. §102(a)(1) as asserted by Petitioner. Pet. 2; 35 U.S.C. § 102(a)(1) (requiring that “the claimed invention was patented . . . before the effective filing date of the claimed invention). Furthermore, having determined that the ’700 patent is entitled to an effective filing date of Barsoum ’777, which is June 5, 2008, the asserted March 2019 date of ATSC327 does not qualify it as prior art to the ’700 patent. Thus, the Petition does not establish by a preponderance of the evidence that claims 5, 15, and 25 are obvious over the combination of Barsoum and ATSC327.” slip op. at 22

  • Adverse judgmentAdverse judgmentOther

    “1 Claims 2, 3, 12, 13, 22, and 23, though challenged by Petitioner, were disclaimed by Patent Owner after trial was instituted. Ex. 2024. 2 The Petitioner Sur-reply was authorized in view of our authorization for Patent Owner to file declarant testimony with the Patent Owner Sur-reply.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We are persuaded that Petitioner’s proposal is consistent with the problems and solutions in the ’700 patent and prior art of record. We also find that Dr. Caire’s statement of a “Ph.D.,” “and possibly some years of work after Ph.D.” is consistent with Petitioner’s statement that the level of skill includes “[s]uperior education” to “compensate for a deficiency in work experience.” The complexity of the evidence of record emphasizes the importance of “at least two years of experience . . . including the use of constellations in transmitting signals between devices” or “[s]uperior education” in the same area. We adopt Petitioner’s definition of the level of skill as discussed above.” slip op. at 9

  Patent outcomesUS 10,693,700 not shown unpatentable
  § 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,693,700
• LG Electronics, Inc. v. Constellation Designs, LLCInstitution denied
  PTAB · Jul 18, 2023 · IPR2023-00320 · APJ Michael T Cygan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 6–7, 16–17, or 27–28 were unpatentable; disclaimed claims were excluded.

  RulingsInstitution decision

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

    “Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). For purposes of institution, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a).” slip op. at 5

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77. For these reasons, we determine that Petitioner has not shown that claims 6, 16, and 27 lack written description support in Barsoum. Petitioner does not assert that claims 7, 17, and 28 lack written description support in Barsoum for any reason separate than provided by its assertions against parent claims 6, 16, and 27. Therefore, Petitioner has not shown a lack of written description in claims 7, 17, and 28.” slip op. at 8

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “unequally spaced symbol constellations to a second group of unequally space[d] symbol constellations when the two groups are operated at the same SNR.” Pet. 15 (emphasis omitted). Petitioner argues that Barsoum “only describes determining a relative relationship between a geometrically shaped (i.e., unequally spaced) constellation and a constellation optimized for dmin.” Id. (citing Ex. 1027, 6:14–20, 2:56–63; Ex. 1003 ¶ 86). Petitioner points to a statement in Barsoum as “specifying that not all geometrically shaped constellations have a greater capacity than that of a constellation maximized for dmin.” Id. at 17 (citing Ex. 1027, 6:13–22). Petitioner asserts that Barsoum’s non-uniform constellations are capable of providing such greater parallel decoding capacity only after having been optimized for that purpose. Id. at 19 (citing Ex. 1027, 6:13–22, Ex. 1003 ¶ 92). Patent Owner disagrees, arguing that Barsoum describes determining optimized constellations for each operating SNR. Prelim. Resp. 74 (citing Ex. 1027, 4:62–5:11, 7:26–29, 8:47–56). Patent Owner further argues that the teachings related to optimizing a constellation for capacity at a first SNR also teach that other constellations optimized for a different SNR will not provide the same benefits at the first SNR. Id. We agree. Patent Owner correctly points to the specific examples of Figures 11b, 13b, 15b, and 17b as each showing a plurality of constellations, each optimized for a particular SNR that provide a greater parallel decoding capacity at that specific SNR than the other symbol constellations in the plurality. Id. at 75. More specifically, Figure 13b shows five constellations (i.e. a plurality), each optimized for a particular identified SNR that will perform better at that particular SNR than the other constellations which have not been optimized at that particular SNR. Id. at 76–77.” slip op. at 8

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “16–17, and 27–28 are obvious over the combination of Barsoum and ATSC327. Pet. 26. Each of the Petition’s grounds relies entirely on Barsoum to teach or suggest each limitation of independent claims 1, 11, and 21 upon which the challenged claims depend. Pet. 39–71, 96–98, 101–102. Apart from the written description support arguments above, Patent Owner does not contest Petitioner’s obviousness analysis of the challenged claims. See Prelim. Resp. As we have determined that Barsoum is not prior art to claims 6, 7, 16, 17, 27, and 28, the Petition does not establish a reasonable likelihood that those claims are obvious over the combination of Barsoum and ATSC327.” slip op. at 9

  § 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham
  Patents in suitUS 11,019,509
• LG Electronics, Inc. v. Constellation Designs, LLCInstituted
  PTAB · Jul 12, 2023 · IPR2023-00319 · APJ Brent M Dougal · IPR · Institution

  The Board instituted IPR on claims 2, 3, 5, 12, 13, 15, 22, 23, and 25 because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had at least a Master’s degree in an academic area emphasizing electrical engineering or a similar discipline, and at least two years of experience in the field working with, teaching, or researching communication systems including the use of con-stellations in transmitting signals between devices. [Ex.]1003, ¶[93]. Superior education could compensate for a deficiency in work experience, and vice-versa. Id. Pet. 28. Though Patent Owner makes arguments with reference to “a person of ordinary skill,” Patent Owner does not directly address or contest Petitioner’s level of skill. See e.g., Prelim. Resp. 3. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’700 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 9

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

    “Petitioner asserts that no terms require express construction. Pet. 28. Patent Owner does not argue that terms in the challenged claims should be construed. We determine that no terms need to be construed at this time. 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 9

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed

    “Under the present record, we determine that Petitioner has satisfied its burden with respect to a lack of written description support for at least some of the claims. In particular, each of claims 3, 13, and 23 require QAM-16, QAM-64, QAM-256, and QAM-1024 constellations, and the beginning end points of the code rate ranges appear to have been selected for different reasons, without any discussion or support that would apply across the board. For example, Patent Owner argues that for the QAM-16 and QAM-64 constellations the first identified code rate that covers an unequally spaced constellation is important because that was “the object of the invention” and thus establishes the beginning end point. Id. at 46–47, 49–50. However, Patent Owner provides no reason why in the QAM-256 constellation the claimed range covers equally and unequally spaced constellations. See id. at 52 (locus plot of Figure 14c). Rather, Patent Owner merely asserts that the claimed range is “coextensive with the values in [the table of] Figure 15b.” Id. at 51. For the QAM-1024 constellations Patent Owner also asserts that the claimed range is “coextensive with the values in [the table of] Figure 17b,” and again makes no mention of unequally spaced constellations. Id. at 53. Not only is Patent Owner’s logic applied inconsistently across the different types of QAM constellations, but this also results in inconsistency in the logic behind claims 3, 13, and 23 which require all of the different types of QAM constellations. Thus, we preliminarily determine that Petitioner has shown that a person of skill in the art would not understand that the patentee had possession of the claimed invention of claims 3, 13, and 23 at the time of the application, as there does not appear to be a way in Barsoum for determining how to select the beginning end points of the code rate ranges. See Pet. 3 (citing Lizardtech, Inc. v. Earth Res. Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005)). Claims 2, 12, and 22 each only require a QAM-16 constellation and do not require the other QAM constellation types. Thus, these claims are not internally inconsistent in how they select the beginning end point of the code rate range. We determine, in view of the current record, the written description support for these claims is a close issue, as is the question of whether the disclosed locus plots, without more, are sufficient to disclose a range, rather than just specific points. As we have determined that claims 3, 13, and 23 have been shown preliminarily to lack written description support, we reserve these questions for trial.” slip op. at 13

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

    “12, 13, 22, and 23 are obvious over the combination of Barsoum and ATSC322. Pet. 28–67. The Petition argues that dependent claims 5, 15, and 25 are obvious over the combination of Barsoum and ATSC327. Id. at 67– 79. Apart from the written description support arguments above, Patent Owner does not contest Petitioner’s obviousness analysis of the challenged claims. See generally, Prelim. Resp. We note that it would seem inconsistent for Patent Owner to argue that Barsoum has written description support for the claims and yet does not teach a feature of the claims. At the same time, Patent Owner also does not address ATSC322 or ATSC327, or Petitioner’s reasons to combine the references. Each of the Petition’s grounds relies entirely on Barsoum to teach or suggest each limitation of independent claims 1, 11, and 21, upon which the challenged claims depend. Pet. 39–51, 75. Concerning claims 2, 3, 12, 13, 22, and 23 the Petition relies on ATSC322 for teaching QAM-16, QAM-64, QAM-256, and QAM-1024 constellations with a code rate of 7/15 which is within the claimed ranges for each of the constellations. See e.g., id. at 54 (reproducing Ex. 1023, Tables 6.12 and 6.13 at 30–31 which show all four constellations with a code rate of 7/15). Petitioner also provides a number of reasons why one of skill in the art would look to ATSC322, which is a technical standard, for combination with Barsoum. Id. at 37–39. After review, we determine that the Petition preliminarily establishes a reasonable likelihood that claims 3, 13, and 23 are obvious over the combination of Barsoum and ATSC322. We also determine that if Barsoum is prior art to claims 2, 12, and 22, the Petition preliminarily establishes a reasonable likelihood that claims 2, 12, and 22 are obvious over the combination of Barsoum and ATSC322.” slip op. at 16

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham
  Patents in suitUS 10,693,700
• Peloton Interactive, Inc. v. Mad Dogg Athletics, Inc.All claims unpatentable
  PTAB · Apr 5, 2023 · IPR2022-00016 · APJ Hubert C Lorin · IPR · Final written decision

  The Board held claims 1–13, 16, and 17 unpatentable as obvious over Rice and Warner, Rice, Warner, and Sotokoshi, and Baudhuin-429 and Sotokoshi.

  RulingsFinal written decision

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

    “Accordingly, we accept as undisputed that the plain and ordinary meaning of “coupled” is attached, joined, or combined. In a vacuum, based solely on the plain and ordinary meaning of “coupled,” elements joined together only by a wired connection would be “coupled.” b. Intrinsic Evidence However, we cannot look at the ordinary meaning (i.e., joined) of “coupled” in a vacuum. “Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.” Phillips, 415 F.3d at 1313 (quoting Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005)). The “proper definition is the definition that one of ordinary skill in the art could ascertain from the intrinsic evidence in the record.’” Id. at 1314 (quoting Unitherm Food Sys., Inc. v. Swift–Eckrich, Inc., 375 F.3d 1341, 351 (Fed. Cir. 2004)). The intrinsic evidence in the record includes the claims, the specification, and the prosecution history. Phillips, 415 F.3d at 1314. 1) Claims “Coupled to” appears in four limitations in claim 1 (and in similar limitations in claim 14): • “a set of handlebars that is coupled to the frame and that provides” slip op. at 20

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

    “2. Motivation to Combine Rice and Warner In order to demonstrate obviousness, a petitioner must demonstrate that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent and would have had a reasonable expectation of success in doing so. KSR, 550 U.S. at 406 (2007). “To facilitate review, this analysis should be made explicit. 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’).” Id. at 418.” slip op. at 69

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateNot shown unpatentable

    “with Petitioner. “In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ . . . and that burden never shifts to the patentee.” Dynamic Drinkware, 800 at 1378 (quoting 35 U.S.C. § 316(e)). Accordingly, Petitioner must show that the ’460 application does not provide written description support for the ’240 patent claims. (Consistent with the Petition, the following discussion will cite to Ex. 1017, which is a copy of U.S. Patent No. 8,021,277 B2, that issued from the ’460 application.)” slip op. at 80

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

    “1. Nexus Patent Owner contends that a presumption of nexus applies here. PO” slip op. at 87

  Patent outcomesUS 9,694,240 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,694,240
• Carrier Fire & Security Americas Corporation v. Sentrilock, LLCAll claims unpatentable
  PTAB · Sep 14, 2022 · IPR2021-00665 · APJ Ryan H Flax · IPR · Final written decision

  Claims 1–3, 6, and 10–20 are unpatentable as obvious over Mosgrove and Harold, and independently over Kniffin and Maloney.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art has “at least a Bachelor’s degree [in] Electronics, Electrical, or Mechanical Engineering or related discipline, [and/]or at least three years of experience 8 Patent Owner argues in its Response that Petitioner’s witness, Mr. Comerford, lacks credibility, improperly implies claim constructions, does not take the level of ordinary skill into account, relies on improper hindsight, and is biased in favor of Petitioner because of employment history, and, hence, we should give his testimony “no weight.” See Resp. 6– 16. We do not agree with Patent Owner’s positions. The evidence shows that Mr. Comerford is qualified to testify on the issues in this proceeding, and we find his opinions are based on his understanding of the perspective of the ordinarily skilled artisan, his experience, the ordinary meaning of claim terms, and the disclosures of the prior art, are supported by evidence, and do not rely on the ’589 patent as a roadmap so as to infect his opinions with improper hindsight. See generally Ex. 1002; Ex. 1028; Ex. 1029. working with access control devices.”9 Pet. 11 (citing Ex. 1002 ¶ 19). Such a person of ordinary skill in the art could have both this level of education and experience without straying from Petitioner’s definition. Patent Owner neither contests Petitioner’s proposed definition of the ordinarily skilled artisan nor proposes an alternative. See generally Resp. Patent Owner’s witness, however, expressly adopts Petitioner’s definition. Ex. 2015 ¶ 20. We likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art and apply it here. B.” slip op. at 8

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

    “Petitioner states that “[f]or purposes of this IPR, Petitioner does not believe any claim term requires a construction in order to resolve if the Challenged Claims are unpatentable.” Pet. 24. Patent Owner indicates it agrees with Petitioner “that the terms of the Challenged Claims should be understood as written.” See Resp. 4–5. 9 We understand Petitioner’s proposed definition of the ordinarily skilled artisan to be inclusive regarding education and experience because such is reflected in Mr. Comerford’s cited testimony. See Ex. 1002 ¶ 19 (“I am such a person” and identifying his education and experience). We agree with the parties and determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that are in controversy need to be construed and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). C.” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997); see also 35 U.S.C. § 119(e)(1) (benefit of provisional application’s filing date requires disclosure of claimed invention “in the manner provided by the first paragraph of section 112”); Dynamic Drinkware, 800 F.3d at 1381–82 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.” Lockwood, 107 F.3d at 1571–72. We agree with Petitioner that the ’773 provisional does not describe the key identification device required by the claims so as to satisfy § 112. Such a component is described by the ’400 patent as the RFID tag. See Ex. 1006, Fig. 5 (element 74). The ’773 provisional, on the other hand, describes nothing that could be considered the claimed key identification device “for attachment to [the] at least one key” as recited by claims 1 and 14. Ex. 1001, 21:41–43, 22:38–40. Nothing in the ’773 provisional hints that anything, be it a tag or generic device, is attached to its otherwise disclosed key; therefore, we cannot agree with Patent Owner’s arguments. See generally Ex. 1005. The ’773 provisional merely indicates that a key can be contained in, removed from, and replaced in a key container module that can somehow sense the key’s presence, but provides no description as to how this sensing is accomplished, and certainly does not describe that anything attached to the key allows this sensing. Id. ¶ 4. slip op. at 13

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

    “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416. This is the case here where Mosgrove’s wireless communication system exists already and is merely redirected. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. Further, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements [of the prior art] in the manner claimed.” Id. at 420. This is the case here where the techniques of Harold illuminate an advantage to be had using Mosgrove’s existing system (or a slightly modified Mosgrove system). We find a reason existed to combine and modify the prior art: efficiency and streamlining. See Dystar Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (making things stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient are universal motivators to combine/modify prior art). And, as Mosgrove’s disclosed key containers have wireless communication capability, simply specifying that the communications will be between the key container and the computer rather than between the key container and keypad is no technological leap. It would have required only the use of known components and techniques to yield predictable results, and we find there would have been a reasonable expectation for success. See Ex. 1002 ¶ 79; KSR, 550 U.S. at 417 (to be nonobvious, an improvement must more than the predictable use of prior art elements according to their established functions). slip op. at 27

  Patent outcomesUS 8,606,589 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,606,589
• Carrier Fire & Security Americas Corporation v. Sentrilock, LLCSome claims unpatentable
  PTAB · Sep 14, 2022 · IPR2021-00664 · APJ Ryan H Flax · IPR · Final written decision

  Claims 23, 24, 28, 29, 35, 37, and 39–47 are unpatentable as obvious over Mosgrove, Harold, and Imran; the remaining challenged claims were not shown unpatentable.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have been “a person with at least a Bachelor’s degree in Electronics, Electrical, or Mechanical Engineering or related discipline, [and/]or at least three years of experience working with access control devices.” Pet. 8 (citing Ex. 1002 ¶ 19).10 Such a person of ordinary skill in the art could have both this level of education and experience without straying from Petitioner’s definition. Patent Owner neither contests Petitioner’s proposed definition of the ordinarily skilled artisan nor proposes an alternative. See generally Resp. Patent Owner’s witness, however, expressly adopts Petitioner’s definition. Ex. 2015 ¶ 20. We likewise adopt Petitioner’s proposed definition of the level of ordinary skill in the art and apply it here.11 hindsight, and is biased in favor of Petitioner because of employment history, and, hence, we should give his testimony “no weight.” See Resp. 9– 19. We do not agree with Patent Owner’s positions. The evidence shows that Mr. Comerford is qualified to testify on the issues in this proceeding, and we find his opinions are based on his understanding of the perspective of the ordinarily skilled artisan, his experience, the ordinary meaning of claim terms, and the disclosures of the prior art, are supported by evidence, and do not rely on the ’541 patent as a roadmap so as to infect his opinions with improper hindsight. See generally Ex. 1002; Ex. 1028; Ex. 1029. 10 We understand Petitioner’s proposed definition of the ordinarily skilled artisan to be inclusive regarding education and experience because such is reflected in Mr. Comerford’s cited testimony. See Ex. 1002 ¶ 19 (“I am such a person.”). 11 The parties use the acronym POSA to refer to the person of ordinary skill in the art. See generally Pet.; Resp.” slip op. at 12

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

    “Petitioner states that “[f]or purposes of this IPR, Petitioner does not believe any claim term requires a construction in order to resolve if the Challenged Claims are unpatentable based on the prior art presented.” Pet. 21. Patent Owner indicates it agrees with Petitioner “that the terms of the Challenged Claims should be understood as written.” See Resp. 6–7. We agree with the parties and determine that no claim term requires express construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim terms that are in controversy need to be construed and “only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). C.” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “In order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir. 1997); see also 35 U.S.C. § 119(e)(1) (benefit of provisional application’s filing date requires disclosure of claimed invention “in the manner provided by the first paragraph of section 112”); Dynamic Drinkware, 800 F.3d at 1381–82 (“A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1.”). “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.” Lockwood, 107 F.3d at 1571–72. We agree with Petitioner that the ’773 provisional does not describe the key identification tag/device required by all claims so as to satisfy § 112. Such a component is described by the ’400 patent as the RFID tag. See Ex. 1006, Fig. 5 (element 74). The ’773 provisional, on the other hand, describes nothing that could be considered the claimed key identification tag or device “for attachment to the at least one key” as recited by claim 23 or “attaching a key identification device to a key” as recited by claim 45. Ex. 1002, 23:1–5, 24:32–35. Nothing in the ’773 provisional hints that anything, be it a tag or generic device, is attached to its otherwise disclosed key; therefore, we cannot agree with Patent Owner’s arguments. See generally Ex. 1005. The ’773 provisional merely indicates that a key can be contained in, removed from, and replaced in a key container module that can somehow sense the key’s presence, but provides no description as to how this sensing is accomplished, and certainly does not describe that anything attached to the key allows this sensing. Id. ¶ 4. slip op. at 16

  • Strike new argumentNew argument disregardedDecided for patent owner

    “In our Trial Practice Guide we explain that a “[p]etitioner may not submit new evidence or argument in [a] reply that it could have presented earlier, e.g.[,] to make out a prima facie case of unpatentability.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019)14 (“CTPG” or “Trial Practice Guide”) (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). The Trial Practice Guide further explains that “‘[r]espond,’ in the context of 37 C.F.R. § 42.23(b), does not mean proceed in a new direction with a new approach as compared to the positions taken in a prior filing,” and “[w]hile replies and sur-replies can help crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly presents evidence may not be considered.” Id. at 74. “In most cases, the Board is capable of identifying new issues or belatedly presented evidence when weighing the evidence at the close of trial, and disregarding any new issues or belatedly presented evidence that exceeds the proper scope of reply or sur-reply.” CTPG 80 (Nov. 2019). The Board has regularly shown this capability. See Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369–70 (Fed. Cir. 2016) (The Board refusing to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R. § 42.23(b)); Apple Inc. v. e-Watch, Inc., IPR2015-00412, Paper 50, 44 (PTAB May 6, 2016) (“Accepting . . . 14 Available at www.uspto.gov/TrialPracticeGuideConsolidated. belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”). Thus, we find any suggestion by Petitioner that Mosgrove’s entire key container or key compartment is the conductive container of Diaferia is a new and late argument, which we will not consider. Likewise, we find any suggestion by Petitioner that some sort of wire or cable (or something of that nature) might be used to connect a key put inside a conductive container to a key tag that is outside that conductive container so that the tag might be inserted into a key-sensing circuit is also a new and late argument, which we will not consider.” slip op. at 30

  Patent outcomesUS 7,949,541 mixed
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 7,949,541
• Google LLC v. Ecofactor, Inc.Institution denied
  PTAB · Aug 1, 2022 · IPR2022-00535 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution for claims 1–17 under § 325(d), finding no material error in the Examiner’s priority determination and Quam essential to every asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “2. Conclusion as to 35 U.S.C. § 325(d) As discussed in detail above, the Quam and Modi references only qualify as prior art that can be used against the ’890 patent if the ’890 patent is not entitled to priority. However, the Petition fails to establish that the Examiner erred in determining that the ’890 patent is entitled to its priority claim. We exercise our discretion to decline to reconsider the issue of priority which has already been addressed by the Office. Thus, the Petition cannot show that Quam and Modi are prior art that can be used against the ’890 patent. As Quam is essential to all grounds in the Petition, we exercise our discretion under 35 U.S.C. § 325(d) to decline to institute.” slip op. at 14

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “Petitioner’s argument fails to identify any material errors by the Examiner. First, we determine that Petitioner makes no credible argument that one of skill in the art would not understand the ’554 application to teach that weather data is obtained from outside a building or that the Examiner erred in making such a determination. Petitioner acknowledges that the ’554 application teaches data comprising an outside weather condition. Id. at 12– 14. Data of an outside weather condition necessarily ultimately comes from a source outside of a building; otherwise it would not be an “outside” weather condition. Contrary to Petitioner’s argument, the claim does not require that the outside weather condition be transmitted from a source external to the building to the one or more processors through a network connected to the thermostat. See id. at 14. The claim states that the “outside weather condition [is] collected from a source external to the building,” but then only requires that the outside weather condition be received by the one or more processors from a network connected to the thermostat. Thus, how it is collected and how it is received is not linked or required by the claim language. Secondly, Figure 2 relied on by the Applicant shows that the entire system is set-up on a network. Thus, Figure 2 shows “a network connected to the thermostat” as required by the claim and sharing of data comes across the network, such as would occur when a server having a processor retrieves data, such as an outside weather condition, from a storage database on another server in the network. See e.g., Ex. 1005, 46; Ex. 1007, 399 at ¶¶ 81, 84, 406 at ¶ 110, 440–441.” slip op. at 9

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

    “qualify as prior art that can be used against the ’890 patent if the ’890 patent is not entitled to priority. However, the Petition fails to establish that the Examiner erred in determining that the ’890 patent is entitled to its priority claim. We exercise our discretion to decline to reconsider the issue of priority which has already been addressed by the Office. Thus, the Petition cannot show that Quam and Modi are prior art that can be used against the ’890 patent. As Quam is essential to all grounds in the Petition, we exercise our discretion under 35 U.S.C. § 325(d) to decline to institute. III. CONCLUSION For the foregoing reasons, we do not institute trial. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes review as to any claim of U.S. Patent 10,584,890 B2 is instituted.” slip op. at 14

  § 112 disclosureDiscretionary denial
  Patents in suitUS 10,584,890
• Peloton Interactive, Inc. v. Mad Dogg Athletics, Inc.Instituted
  PTAB · Apr 8, 2022 · IPR2022-00017 · APJ Hubert C Lorin · IPR · Institution

  The Board instituted inter partes review of claims 1–5 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “The Board uses a two-part framework for evaluating arguments under § 325(d): (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 first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 9

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends: A POSA in February of 2005 would have at least a bachelor’s degree in biomechanics or engineering (or equivalent) and about five years or more industry experience or equivalent experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field. A POSA could substitute directly relevant additional education for experience, e.g., substituting an advanced degree relating to the design of cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or biomechanics (or equivalent), for industry experience in a related field, and vice versa, substituting additional industry experience for a formal degree in a relevant field. Sargeant-328 ¶¶52-53. Pet. 4. Patent Owner states that “the Petition essentially repeats the same proposed standard [as in the District Court Action]. As such, there appears to be no significant dispute over the level of skill in the art possessed by a POSA.” Prelim. Resp. 11. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 14

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

    “When read in the context of the entirety of the first paragraph, the phrase “direct drive or fixed gear configuration” suggests that the two configurations are alternatives but it does not necessarily indicate that they equate to each other. When read in the context of the entirety of the second paragraph, the phrase “direct drive (fixed gear)” also does not necessarily suggest that they equate to each other. The entire phrase is “direct drive (fixed gear) and/or non direct drive e.g., freewheeling configuration.” Ex. 1002, 3:13–14; cited at Pet. Prelim. Reply 7. In other words, “direct drive (fixed gear)” configurations are not non–direct drive configurations, such as freewheeling configurations. Other than indicating that they are not non–direct drive configurations, there is insufficient additional indication that “direct drive” and fixed gear mechanisms equate to each other. Accordingly, the evidence at this stage more strongly supports Patent Owner’s argument that the ’328 patent does not disclose that “direct drive” configurations equate to fixed gear configurations. Given no other evidence at this stage to show that one of ordinary skill in the art would understand the ’328 patent’s disclosure of “direct drive (fixed gear)” (Ex. 1002, 3:13) and “a direct drive or fixed gear configuration” (id. at 2:10) to mean that 4 Warner (Ex. 1009). “direct drive” equates to fixed gear, Petitioner has not sufficiently shown that the ’328 patent equates “direct drive” to fixed gear configurations.” slip op. at 30

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

    “III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1–5 of the ’328 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’328 patent. Because a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition,” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 & n.2 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) and corresponding USPTO Guidance, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 26, 2018)), and because we have determined that at least one ground set forth in the Petition satisfies the threshold for institution, trial is instituted on the proposed grounds based on Rice, Warner, Sotokoshi, and Baudhuin–429. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–5 of the ’328 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 70

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,137,328

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.