- 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 - 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 - PTAB · Aug 11, 2023 · PGR2023-00013 · APJ Sharon Fenick · PGR · Institution
Instituted PGR on claims 1–27 on all asserted grounds; the Board found it more likely than not that at least one claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A post-grant review may be instituted only if “the information presented in the petition filed under section 321, 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 below, Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’286 patent on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A. Level of Ordinary Skill in the Art Petitioner contends that: A person of ordinary skill in the art . . . would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technologies.” slip op. at 9
- Parallel petitionsDecided for petitioner
“The Trial Practice Guide states that “one petition should be sufficient to challenge the claims of a patent in most situations.” CTPG 59. “Two or more petitions filed against the same patent at or about the same time . . . may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns.” Id. (citing 35 U.S.C. § 316(b), which is identical to 35 U.S.C. § 326(b)). Although rare circumstances may necessitate two petitions, “the Board finds it unlikely that circumstances will arise where three or more petitions by a petitioner with respect to a particular patent will be appropriate.” Id. To help the Board determine whether multiple petitions are necessary, the Trial Practice Guide further instructs a petitioner filing multiple petitions challenging the same patent to explain “the differences between the petitions, why the issues addressed by the differences are material, and why identifies one petition that satisfies petitioner's burden under 35 U.S.C. § 314(a).” CTPG 59–60. Additionally, the Trial Practice Guide instructs the patent owner to “clearly proffer any necessary stipulations,” where the patent owner asserts that “the differences identified by the petitioner are directed to an issue that is not material or not in dispute.” Id. at 61. The patent owner may, for example, “seek to avoid additional petitions by proffering a stipulation that certain claim limitations are not disputed or that certain references qualify as prior art.” Id. In light of the particular facts before us, we decline to exercise our discretion to deny the Petition pursuant to 35 U.S.C. § 324(a) on the basis of the filing of two parallel petitions. In particular, we recognize that the two petitions do not include duplicate attacks on the basis of unpatentability over prior art, but rather break the issues into two distinct parts—prior-art based unpatentability challenges, in PGR2023-00012, and 35 U.S.C. §§ 101 and 112 challenges here. The usual considerations of fairness, timing, and efficiency do not weigh in favor of exercising our discretion to deny institution. In particular, the petitions were filed concurrently, which means that Petitioner did not gain a timing advantage that might otherwise occur if the petitions were filed serially. Additionally, the proceedings can be coordinated, and a similar or common schedule can be adopted. To the extent that Patent Owner argues (see Prelim. Resp. 55–56) that Petitioner was attempting to avoid providing a single stipulation that (upon institution) Petitioner will pursue neither section 103 grounds on certain art, as per the stipulation offered in PGR2023-00012, nor section 101 and 112 grounds as per the stipulation here (see Pet. 49), discretionary denial of this Petition would not provide such a stipulation. Because we institute both here and in is equivalent to our best understanding of Patent Owner’s desired stipulation “tak[ing] into account” the two Petitions. Accordingly, based on the particular facts and circumstances before us, we decline to exercise our discretion to deny the instant Petition under § 324(a) on the basis of the Petitioner’s filing of multiple petitions.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2. Conclusion We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors together, we determine that they do not favor a discretionary denial. As we do not find that the first five Fintiv factors favor discretionary denial, we therefore do not make a determination regarding compelling merits under Fintiv factor 6, and our consideration ends with this conclusion. CommScope, 4–5.” slip op. at 23
Claim construction§ 101 eligibility§ 112 disclosureDiscretionary denialcites Alice · Mayo · Bilski · Enfish · Phillips · NautilusPatents in suitUS 11,328,286 - PTAB · Aug 11, 2023 · PGR2023-00012 · APJ Sharon Fenick · PGR · Institution
Instituted PGR on claims 1–27 and all asserted grounds after finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“On this record, and for the purposes of institution, we agree that Petitioner has sufficiently shown that the information presented on the interface of the card device is not described in the ’891 provisional as being limited to use in an in-store merchant card reader facility. The ’891 provisional describes the card “connect[ing] to a personal computer” for use in generating payment information for online purchases. Ex. 1012 ¶ 17. While Patent Owner argues that the description in the ’891 provisional of “uniquely generat[ing] a credit card number” means a use “unique from that used for in-store transactions,” this description echoes the general description of the use of the card to provide “a unique credit card number . . . for each transaction.” Compare Ex. 1012 ¶ 14, with id. ¶ 17.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art . . . would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) one to two years of experience working with payment processing and/or digital authentication systems, including familiarity with short-range wireless technologies.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Because the trial in the district court litigation, under any of the parties’ proposed approaches, appears likely to begin several months before our deadline to reach a decision, this factor weighs in favor of discretionary denial.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We address the meaning of several claim terms below and determine that no additional claim construction is needed for purposes of this Decision.” slip op. at 23
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites PhillipsPatents in suitUS 11,328,286 - 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
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.