- Uatp IP LLC v. Slick Slide LLCSome claims unpatentablePTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision
Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20
Patent outcomesUS 11,998,854 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 11,998,854 - Uatp IP LLC v. Slick Slide LLCInstitutedPTAB · Apr 8, 2025 · PGR2024-00054 · APJ Julia Heaney · PGR · Institution
The Board instituted PGR on claims 1–17 and 22–28 and all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Upon consideration of the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one claim challenged in the Petition is unpatentable. Further, Patent Owner has not persuaded us that it is appropriate to exercise our discretion not to institute review. Accordingly, we institute a post-grant review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level patent owner adoptedOther
“On this record, we do not find Patent Owner’s proposed experience level of at least five years in measurement and analysis of coefficient of friction to be supported. As to the necessity of experience in textile engineering and fiber science, Patent Owner’s position, although not supported by declarant analysis of the factors listed above, is consistent with the disclosure of the ’854 patent, which describes features of a mesh layer in textile and fiber terms. See e.g., Ex. 1001, 10:17–11:14, 12:65–13:8, 14:20–24. On the whole, however, we do not discern on this record how specific experience in textile engineering and fiber science of a person of ordinary skill would materially alter the outcome at this stage of the proceeding. For purposes of this decision only, we apply Patent Owner’s proposed definition of a person of ordinary skill in the art, except for the requirement of five years of experience in measurement and analysis of coefficient of friction. The level of skill in the art remains an open issue in this proceeding. Further submissions by the parties may include argument and evidence that would assist in the resolution of this issue at the close of trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “no formal claim construction is necessary in this proceeding.” Pet. 10; Reply 1, 4. Patent Owner contends the terms “mesh layer” and “coefficient of friction” require construction. Prelim. Resp. 14–16; Sur-reply 2–5. We have considered the parties’ arguments and discuss them below with regard to each of the terms Patent Owner contends should be construed. Because our determination that Petitioner demonstrates at least one challenged claim meets the threshold for institution (see SAS Inst., 138 S. Ct. at 1359–60) is not based on construing the term “mesh layer” or “coefficient of friction,” we determine we need not construe either claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). As further discussed below, we invite the parties to address claim construction at trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We agree with Petitioner that the ’854 patent specification does not include clear and explicit lexicography or a disclaimer that would support requiring “coefficient of friction” to be determined by a specific ASTM test method. The portion of the specification Patent Owner asserts as a definition of “coefficient of friction” (see Ex. 1001, 11:31–42) is a description of an embodiment; we find it does not express patentee intent to redefine the term. Further, the statement that “the coefficient of friction … may be determined using the … ASTM D1894 standard test method” (id. at 11:32–35) indicates that use of that specific test method is optional. Accordingly, in the absence of patentee lexicography or disavowal, we do not limit the scope of the term “coefficient of friction” to require that it be measured by a specific ASTM standard. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). We note that the ’854 patent specification sets forth a definition for the coefficient of friction between the surfaces of the mesh material and the slide surface. Ex. 1001, 4:38–46. As stated above, however, we do not expressly construe any claim term at this stage of the proceeding. Should the parties address the construction of “coefficient of friction” at trial, we will make a determination after the close of evidence and any hearing.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,998,854 - Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution deniedPTAB · Mar 10, 2025 · PGR2024-00049 · APJ Jo-Anne M Kokoski · PGR · Institution
The Board denied institution because Petitioner did not show the patent was eligible for PGR; the challenged claims were supported by the 2006 priority application.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006. 2. Conclusion: PGR Eligibility For the foregoing reasons, and based on the record before us, we determine that Petitioner has not demonstrated that it is more likely than not that the ’202 patent has, or had, at least one claim having an effective filing date on or after March 16, 2013. Accordingly, we determine that the ’202 patent is entitled to the filing date of the ’634 application (October 18, 2006), and, thus, the ’202 patent is not eligible for post-grant review.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDecided for patent owner
“Accordingly, the ’202 patent consistently and repeatedly characterizes the invention as incorporating tobacco in some form and ties the stated benefits of the invention to the inclusion of tobacco. Moreover, the Specification is directed to smoking articles containing tobacco, all of the embodiments include tobacco, and “the present invention” is described as a smoking article, where the smoking article includes tobacco. Consequently, we determine that “smoking article” as it is used in the challenged claims is limited to devices that include tobacco. See Mosaic Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 1361 (Fed. Cir. 2022) (finding claimed “lip” is limited to “extrudable plastic materials” where specification states that “the device of the present invention is constructed of extrudable plastic materials” and “emphasizes the benefits of using extrudable plastics and describes them as benefits of the invention as a whole”); Poly-Am., L.P. v. described in the specification has inwardly extended short seals and every section of the specification indicates the importance of inwardly extended short seals. These two facts provide together a proper reason to limit the claims in this way.”); Phillips v. AWH Corp., 415 F.3d 1303, 1312–1317 (Fed. Cir. 2005) (en banc) (“[T]he specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive.”).” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateNot shown unpatentable
“Petitioner’s argument is dependent on accepting Petitioner’s assertion that the claims include a smoking article that does not contain tobacco, which we have not done. Instead, as set forth above, we construe “smoking article” as being limited to devices that include tobacco. See § II.B.2, supra. Based on our construction of “smoking article” and the evidence of record in this proceeding, we determine that the challenged claims are supported by the specification of the ’202 patent, which is identical to the specification of all of the continuations in the chain leading back to the October 18, 2006 that the specification of the ’202 patent and every patent in its priority chain “have identical specifications”); Prelim. Resp. 13 (noting that Petitioner does not identify other limitations in the challenged claims “allegedly lacking support in the ’202 patent family’s applications dating back to U.S. App. No. 11/550,634, filed on October 18, 2006”). Accordingly, we determine that Petitioner does not demonstrate that it is more likely than not that the challenged claims lack written support in the Specification (and the ’634 application). That is, on this record, it appears that the challenged claims properly claim priority to the ’634 application and, accordingly, have an effective filing date in October 2006.” slip op. at 17
Claim construction§ 112 disclosurecites PhillipsPatents in suitUS 11,925,202 - PTAB · Jun 20, 2023 · PGR2023-00008 · APJ Kristina M Kalan · PGR · Institution
The Board instituted post-grant review of claims 1–13 on all petitioned grounds, finding it more likely than not that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute post-grant review, we must determine that the information presented in the Petition, “if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims of the ’624 patent is unpatentable. Thus, we institute post-grant review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“evaluated the subject matter of Riis during examination of the ’624 patent, we agree that Riis was before the Office, as discussed in connection with our analysis of the first part of the Advanced Bionics framework, above. Examiner T presumably was aware of Riis by virtue of having initialed an IDS containing Riis in the ’624 patent’s application and also by virtue of having initialed an IDS containing Riis in the ’067 Application, but Examiner T did not apply Riis in connection with the examination of the ’624 patent. On this record, Patent Owner also fails to show that the claims of the child application leading to the ’624 patent are substantially similar to those of the parent ’814 patent in which Examiner S considered Riis, and, thus, consideration of Riis during the prosecution of the ’814 patent does not equate to consideration of Riis during the prosecution of the ’624 patent. Regarding Patent Owner’s argument (2) that Petitioner fails to sufficiently show how the Examiner erred in evaluating the prior art, we find Petitioner’s arguments demonstrate that Examiner T, the examiner of the ’624 patent, did not apply Riis (or Wypych or Tatarka) during the examination of the’624 patent. As Petitioner argues, the error lies in that “the Examiner failed to consider the relevance of Riis as it applied to the pending method claims,” because although “Riis was considered during examination of the parent ’999 application, Riis was not similarly considered during examination of the ’018 application which led to the ’624 patent.” Pet. 76–77. We determine that the circumstances here demonstrate that the Examiner erred in evaluating the prior art.” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityNot reached
“35 U.S.C. § 322(a)(2) to deny institution, arguing that the Petition fails to identify every RPI. Prelim. Resp. 10–11, 56–60. Patent Owner argues that the Petition “should also have identified its parent corporation, Huhtamäki Oyj . . . as well as the related corporation Huhtamaki, Inc. . . . as RPIs to comply with the statutory requirements for a PGR.” Id. at 10. On this record, we determine that we need not address whether Huhtamäki Oyj and Huhtamaki, Inc. are unnamed RPIs because, even if they were, it would not create a time bar or estoppel under 35 U.S.C. § 325. See SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (precedential); Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (Board’s jurisdiction to consider a petition does not require a “correct” identification of all RPIs in a petition); see also Blue Coat Sys., Inc. v. Finjan, Inc., IPR2016-01444, Paper 11 at 10 (PTAB July 18, 2017) (“evidence [of failure to identify all RPIs] is, at best, suggestive regarding an issue that is not jurisdictional”); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest . . . the Director can, and does, allow the petitioner to add a real party in interest.” (quoting Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364, 1374 n.9 (Fed. Cir. 2018) (en banc))). Here, notwithstanding the arguments devoted to the RPI issue in the Preliminary Response, Preliminary Reply, and Preliminary Sur-Reply, we are not persuaded that Petitioner is barred or estopped from this proceeding, or that Petitioner purposefully omitted Huhtamäki Oyj or Huhtamaki, Inc. to gain some advantage. As Petitioner argues, the “RPI analysis is not necessary at institution, because Patent Owner has not alleged Petitioner would be time barred or otherwise estopped based on unnamed RPIs.” Prelim. Reply 5 (quoting SharkNinja, IPR2020-00734, Paper 11 at 18). As SharkNinja states, certain Board decisions go through extensive analysis to determine whether parties should have been named as RPIs, whereas other Board decisions determine that “such a lengthy exercise is unnecessary for the purposes of rendering a decision on institution of trial.” SharkNinja, IPR2020-00734, Paper 11 at 19. Here, as in SharkNinja, we find the latter approach better serves the interest of cost and efficiency. Thus, at this time and on this record, we will not consider whether Huhtamäki Oyj or Huhtamaki, Inc. must be named as RPIs.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the invention “would have had a relevant technical degree in Chemical Engineering, Polymer Science, Materials Science, or the like, and 2–3 years of experience in laminate or film manufacture or similar packaging manufacture and that less experience may be necessary with additional education and vice versa.” Pet. 17 (citing Ex. 1003 ¶¶ 66–72). In its 4 Neither Patent Owner nor Petitioner appear to present any evidence directed to secondary considerations. See generally Pet.; Prelim. Resp.; Prelim. Reply; Prelim. Sur-Reply. Preliminary Response, Patent Owner does not contest Petitioner’s asserted level of ordinary skill in the art. See generally Prelim. Resp. We adopt Petitioner’s definition, which is consistent with the level of skill in the art at the time of the invention as reflected by the prior art and the ’624 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,260,624 - Vmware, Inc. v. Cirba Inc.All claims unpatentablePTAB · Dec 7, 2022 · PGR2021-00098 · APJ Russell E Cass · PGR · Final written decision
Claims 1–63 are unpatentable under § 112(a) because the patent lacks written-description support for the claimed “already placed” and “issue instructions” limitations.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pet. 20–54. With its Petition, Petitioner submitted the Declaration of Dr. Erik Zadok. Ex. 1006. Patent Owner elected to waive its Preliminary Response. Paper 11. We instituted trial on all grounds of unpatentability. (Paper 12 (“Inst. Dec.”)).” slip op. at 3
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededDecided for petitioner
“term “placing” requires more than a theoretical placing or planning to place as part of an analytical solution. Turning first to the claim language, we agree with Petitioner that the language of the independent claims is consistent with “placement” occurring after and separately from the analytical evaluation process. See Pet. Reply 3. For example, claim 1 is directed to a system for “determining placement of source computer systems on target systems,” the system configured to “determine a placement” by employing operations to “evaluate compatibility.” Ex. 1001, 40:2–4, 40:8– 36. The second “evaluate compatibility” operation is “to determine if the specific source system can be placed with those other source systems on the specific target system,” which suggests that what is being evaluated is whether the source system can be actually placed (e.g., moved or transferred) to the target system. Id. at 40:18–27 (emphasis added). Similarly, the third “evaluate compatibility” operation involves “evaluating the impact on resource utilization of the specific target system of placing the specific source system on the specific target system,” which suggests that what is being evaluated is the impact on resource utilization once the source system is actually moved or transferred to the target. Id. at 40:28–32 (emphasis added). Additionally, the claim states that, based on the “evaluate” operations, the claimed system “determine[s]” a placement, not that it executes the placement. Id. at 40:8–11. The actual placement seemingly occurs after the final claimed operation of “issu[ing] instructions to place” the source system(s) on to the target system “in accordance with the determined placement.” Id. at 40:37–39. Independent claims 32 and 63 include similar language. Id. at 42:36–43:3, 45:1–46:19. Had the patent applicant wanted to cover systems that were merely “hypothetically placed,” language to that effect could have been added to the claim.” slip op. at 19
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“As noted above, the claim language requires evaluating compatibility between a specific source system and one or more other source systems “already placed” on the target system. Paragraph 82 does not disclose the evaluation of compatibility of a source system and another source system as part of the “forward consolidation.” Additionally, paragraph 82 does not disclose that “existing target systems 16” have source systems “already placed” on them. Thus, paragraph 82 does not provide the level of detail recited in the limitation under either party’s definition of “placed.” In addition, as noted above, we have interpreted “placed” to require an actual placement rather than merely “planning to place” or a theoretical placement. See § II.A.2, supra. Therefore, even if the “existing target system 16” had theoretical or hypothetical systems added to it as part of the consolidation analysis, those would not be systems that are “already placed” on the target system.” slip op. at 34
Patent outcomesUS 10,951,459 unpatentableClaim construction§ 112 disclosurePatents in suitUS 10,951,459 - Falkbuilt Ltd. v. Dirtt Environmental Solutions Ltd.Institution deniedPTAB · Sep 24, 2021 · PGR2021-00067 · APJ Stacy B Margolies · PGR · Institution
The Board denied institution because Petitioner did not show that claims 1–5, 8–12, and 15–17 were more likely than not unpatentable as indefinite or obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a) (2020). We may not institute a post-grant review unless “the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). After considering the Petition, the Preliminary Response, Patent Owner’s Certificate of Correction Brief, and Petitioner’s Certificate of Correction Response Brief, we determine that Petitioner has not demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we deny institution of post-grant review.” slip op. at 2
- Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteNot shown unpatentable
“indefinite. “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014); see also id. at 910 (The definiteness requirement “require[s] that a patent’s claims, when viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of invention with reasonable certainty.”). Petitioner has not sufficiently shown that, when viewed in light of the specification and the prosecution history, claims 2 and 3 fail to inform a skilled artisan about the scope of the invention with reasonable certainty. Petitioner fails to address the amendment of claim 2 leading up to the issuance of the patent.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner fails to sufficiently explain how the references are combined to teach this limitation or the reason one of ordinary skill in the art would have made such a combination. For example, Petitioner fails to explain how one would have “[a]ppli[ed] the teachings of Shingu to Scranton.” Id. Such a combination is not readily apparent from the references themselves because Shingu relates to moving a camera so that it can take a repeat photograph and does not describe determining the architectural space surrounding the user. Petitioner also does not provide a reason why one of ordinary skill in the art would have combined the cited teachings of Shingu and Scranton to arrive at the claimed features. See id. at 41–42. Nor does Petitioner’s declarant, Dr. Welch, provide testimony explaining how the teachings would have been combined or a reason to make the combination. See Ex. 1002 ¶¶ 79–81. Indeed, as Patent Owner notes, Dr. Welch does not even reference Scranton in his analysis of this claim limitation. See id.; Prelim. Resp. 19–20. Petitioner therefore fails to sufficiently show that the combination of Shingu and Scranton teaches “the particular physical location and the virtual predetermined position comprising the same relative view position within the architectural design file and an architectural space surrounding the user.”” slip op. at 25
- Expert testimonyPetitioner expert discountedOther
“and Scranton teaches the “receive a communication” limitation. Petitioner relies on Dr. Welch’s testimony to fill in gaps for what is not expressly disclosed in Shingu. As explained above, Shingu discloses an augmented reality system “that helps users take pictures from the same position and camera angle as a previous photo.” Ex. 1003, 272. Shingu discloses “us[ing] an existing method to estimate camera position as implemented in ARToolKit.” Id. at 271 (emphasis added). Shingu—which describes aiming a camera on an object at a certain angle—does not disclose having a user located within a particular physical space. Petitioner therefore relies on Dr. Welch to assert that it was known ARToolKit could provide the claimed functionality—indicating a relative direction that the virtual reality module (the camera in Shingu) is facing, and a location of a user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space. Pet. 34–35 (citing Ex. 1002 ¶¶ 69, 72). Dr. Welch’s testimony, in turn, is based on Wagner (Exhibit 1018), which appears to have been downloaded in February 2021. See Ex. 1002 ¶¶ 69 (citing Ex. 1018), 72; Ex. 1018 (footer). Although Dr. Welch gives a date of 2002 for Wagner (see Ex. 1002 ¶ 69), that date does not appear in Exhibit 1018. See Ex. 1018. Petitioner fails to explain in its Petition what evidence supports its assertion that Wagner shows that ARToolKit had been applied to the creation of a floor of a building “more than a decade before the time of the alleged invention” or that the techniques described in Welch were “well known by the time of the alleged invention.” See Pet. 34–35. Nor does the cited testimony from Dr. Welch identify evidence or otherwise provide support for the 2002 date or that the functionality described in Wagner was “well known.” See Ex. 1002 ¶¶ 69, 72. Thus, Petitioner’s assertions and Dr. Welch’s testimony regarding what was known to a person of ordinary skill in the art about the functionality of ARToolKit goes well beyond the express disclosures of Shingu—using “an existing method to estimate camera position” (Ex. 1003, 271)—and, on the current record, are not sufficiently supported by contemporaneous evidence. Petitioner therefore does not sufficiently show that the combination of Shingu and Scranton teaches “receiv[ing] a communication from the one or more position tracking sensors, wherein the communication comprises an indication of a relative direction that the virtual reality module is facing, and a location of the user with respect to the one or more position tracking sensors, wherein the user is located within the particular physical space.”” slip op. at 22
§ 103 obviousness§ 112 disclosurecites Phillips · NautilusPatents in suitUS 10,783,284 - Unified Patents Inc. v. KCG Technologies LLCAll claims unpatentablePTAB · Feb 10, 2021 · IPR2019-01536 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1–13 are unpatentable as obvious; the revised motion to amend is denied because proposed substitute claims 14–26 are unpatentable as obvious or indefinite.
RulingsFinal written decision- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, deniedDenied
“We agree with Petitioner. Proposed substitute claim 24 recites “the handheld device” without antecedent basis. This lack of antecedent basis renders proposed substitute claim 24 indefinite, as we noted in our Preliminary Guidance. Pet. Opp. to RMTA 25; Prelim. Guidance 8 (“Proposed substitute claim 24 also recites ‘the handheld device’ and also suffers from the lack of antecedent basis). Despite having the opportunity to correct its error and amend proposed substitute dependent claim 24 when independent claim 14 was amended to remove the recitation of “a handheld device,” Patent Owner did not do so in its Contingent Revised Motion to Amend. RMTA 31. Proposed substitute claim 24 is indefinite because the claim “fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see USPTO Memorandum on the Approach to Indefiniteness Under 35 U.S.C. § 112 in AIA Post-Grant Proceedings (Jan. 6, 2021)13; see MPEP 2173.05(e) (9th ed., Rev. 08.2017, June 2020). This is because “the handheld device” is only recited in proposed substitute claim 24, and the proposed substitute claim fails to inform one skilled in the art the scope of invention related to synchronizing “data on the handheld device” “in the virtual smart phone.” Because proposed substitute claims 25 and 26 depend from proposed substitute claim 24, we similarly agree with Petitioner that claims 25 and 26 also are indefinite for lacking an antecedent basis for the term “handheld device.” Pet. Opp. to RMTA 25. Accordingly, we determine Petitioner has demonstrated by a preponderance of the evidence that proposed substitute claims 24–26 are unpatentable under 35 U.S.C. § 112 as indefinite.” slip op. at 40
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner
“Whether to treat a preamble term as a claim limitation is determined on the facts of each case in light of the claim as a whole and the invention described in the patent.” Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) (quoting Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003) (internal quotation marks omitted). “Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble generally is not limiting.” Symantec Corp. v. Computer Assoc. Int’l, Inc., 522 F.3d 1279, 1288 (Fed. Cir. 2008) (internal quotation marks omitted). When the limitations in the body of the claim rely upon or derive essential structure from the preamble, then the preamble acts as a necessary component of the claimed invention and is limiting. See Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003). A claim preamble also is limiting if the preamble is “necessary to give life, meaning, and vitality” to the claim. Pitney Bowes, Inc., 182 F.3d at 1305. We disagree with Patent Owner. Specifically, we do not agree that limitations in the body of the claims require the preamble to serve as an antecedent basis nor do they derive essential structure from the preamble. Rather, all of the elements recited in the body of claim 1 comprise a “virtual smart phone.” That is, we do not discern, and Patent Owner fails to persuasively point us to, any structure imparted by the preamble’s recitation of a “virtual smart phone.” See Pet. Reply 1–2. We similarly do not agree that the without the term “virtual smart phone” there would be no understanding of the “emulating” or “handheld device” limitations. Rather, the recited “software application executing on the processor” limitation provides the structure and meaning for the “emulating” of the “handheld device” features. Furthermore, we agree with the Petitioner that there is no evidence in the record that the prosecution history requires that the preamble is limiting, and the claims were distinguished during prosecution based on the recitation of a “virtual” smart phone. Id. at 2–3. Accordingly, we do not agree with Patent Owner that the preamble is limiting. slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“on the process to . . . emulate features of a handheld device.” Ex. 1001, 12:58–60 (emphasis added). Patent Owner argues that the term “‘emulate’ has a meaning in the art that is common and understood to mean ‘to imitate.’” PO Resp. 18. Patent Owner provides a dictionary definition to support its contention. Ex. 2004 (defining “emulate” as “to imitate in an effort to equal or surpass”). Patent Owner contends the use of “emulate” in claim 1 comports with its commonly understood meaning as “to imitate,” as does the use of the term “emulate” in the written description. Pet. 18–20 (citing Ex. 1001, 1:66–2:3, 2:6–3:5, 12:54–13:2 (claim 1)). Petitioner argues that the term “emulate” should be given its plain and ordinary meaning and does not contest Patent Owner’s construction of the term “emulate” as “to imitate.” Pet. 6–7; Pet. Reply 7. Petitioner, however, contests Patent Owner’s application of that construction to the asserted prior art. Pet. Reply 4–7 (citing Ex. 1034 ¶¶ 24–26). Petitioner specifically argues that Patent Owner implies that “(1) the imitation must be an exact duplicate in display and manner of input . . . or (2) the imitation relates only to the display and touch screen aspects.” Pet. Reply 4–5. In support of its position that Patent Owner’s interpretation of “to imitate” improperly narrows the meaning of “emulate,” Petitioner contends the written description discloses “less than full replication as emulation” and “controlling the handheld device th[r]ough control of a projected image using a variety of control input mechanisms provides emulation.” Pet. Reply 5–6 (citing Ex. 1001, 2:2–5, 3:57–61, 4:63–66, 6:24–42). Petitioner also notes that the dictionary definition Patent Owner proffered indicates that an exact duplication is not required. Pet. Reply 7 (“The complete definition of emulate [as] ‘to imitate in an effort to equal or surpass.’ Ex. 1004, 3”). We conclude that a preponderance of evidence supports the construction of the term “emulate” to mean “to imitate,” without any further restriction such as exact duplication or only display or touch screen aspects. Accordingly, we construe the term “emulate” as “to imitate.”” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at or before the priority date of the ’955 patent “would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, physics, or a related subject, and two to three years of work experience in the field of automotive information systems.” Pet. 6 (citing Ex. 1002 ¶¶ 38–39); Ex. 1034 ¶ 14 (Petitioner’s expert reiterating the same level of ordinary skill in the art). Patent Owner does not propose an ordinary level of skill in the art. We agree with and adopt the level of ordinary skill in the art as articulated by Petitioner.” slip op. at 10
Patent outcomesUS 9,671,955 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 9,671,955 - Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentablePTAB · Sep 7, 2016 · IPR2015-00637 · APJ William V Saindon · IPR · Final written decision
Claims 1–30 are unpatentable as obvious; Patent Owner’s contingent motion to amend is denied for lack of written-description support and indefiniteness.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“admitted that the patented features of voice and revoiced text are responsible for ‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis added). Thus, Patent Owner is offering the statement for the truth that voice and re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s argument that Mr. Puzey was discussing the existence of features in his company’s product rather than features in Patent Owner’s product does not change that his statement is offered as proof regarding an alleged long-felt need for the features. Accordingly, his testimony is hearsay. slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art is telecommunication systems. Thus, a [POSA] is a person familiar with at least that technology by way of background and/or experience.” CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00549, Paper 71, 13 (Final Written Decision) (PTAB 2015); see also CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00780, Paper 35, 9 (Final Written Decision) (PTAB 2015) (reaffirming our finding in IPR2013- 00549). Patent Owner states that it “does not agree” with that definition of a person of ordinary skill in the art, and that, “without waiving the foregoing objection and reserving all rights,” states that it will “appl[y]” our prior definition of a person of ordinary skill in the art “for purposes of this Response.” PO Resp. 3. By not setting forth arguments advocating a particular definition of the level of ordinary skill in the art, and by applying our prior definition, Patent Owner has waived arguments for any other definition. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art, as expressed by its declarant, Mr. Occhiogrosso. Ex. 1009 ¶¶ 26–27. This person typically has “a bachelor’s degree” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“understand a “communication link,” as claimed, to refer to the “communication line” described in the specification. In particular, the link is “intended not only to apply to a traditional land-line . . . but also to all equivalents that offer similar functionality.” Id. at 8:60–63. A link could be “a portion of the bandwidth” of a particular connection, such that a single mode of connection (e.g., IP) could carry out two types of communication (voice and text), with each type corresponding to a different “communication link.” See id. at 8:44–47, 8:63–65. For example, as explained in the ’838 patent, “[e]ach of the telephone lines could be . . . a portion of the bandwidth of an ISDN or DSL service.” Id. at 8:53–65. Accordingly, we adopt Petitioner’s construction of “communication link” as “any communication session, protocol, link, connection, or path distinguishable from [another] communication link[].”” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“3. Combination of References As we discussed above, Petitioner’s combination takes the two-line” slip op. at 43
Patent outcomesUS 8,908,838 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,908,838 - Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentablePTAB · Dec 2, 2015 · IPR2014-00825 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, 6, 7, 10, 13, 19, and 20 are unpatentable as obvious; the petition did not prove claims 2, 5, 8, 9, 11, 12, and 14–18 unpatentable.
RulingsFinal written decision- BurdenDecided for patent owner
“Applying these principles to the instant case, in an inter partes review, the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of the evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See Dynamic Drinkware, 800 F.3d at 1379. (explaining petitioner “had the burden of persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 13–36.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“Even if we were to find that Petitioner’s citation to two pages of its declarant’s testimony, without explanation, does not amount to improper incorporation by reference, the testimony of Petitioner’s declarant, Leonard J. Forys, Ph.D., is insufficient to show one of ordinary skill in the art was in possession of the subject matter of the claims at issue. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). First, the testimony of Petitioner’s declarant, Dr. Forys, is conclusory, merely quoting some portions of the ’357 patent without adequately explaining how the quoted portions relate to the subject matter recited by the claims. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Moreover, during cross-examination Dr. Forys explained his analysis, “I just went through the ’167 patent and just picked a few things out that seem to indicate that they are already there. . . . So it was illustrative. It’s not a detailed analysis. It is just suggestive.” Ex. 2006, 48:1–7.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“The ’357 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system of Claim 1 would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is 25 required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8 (emphasis omitted). Therefore, in light of the plain language of the claim, the Specification of the ’357 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 25
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony14 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of Science degree in electrical engineering, computer science, or an equivalent field, as well as at least three years of academic or industry experience in telephony systems.” slip op. at 29
Patent outcomesUS 7,529,357 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,529,357 - Global Tel*link Corporation v. Securus Technologies, Inc.Some claims unpatentablePTAB · Dec 2, 2015 · IPR2014-00824 · APJ Barbara A Benoit · IPR · Final written decision
Claims 1, 3, 4, 6, 7, 10, 19, and 20 are unpatentable over Spadaro and Hodge; claim 13 is unpatentable over Spadaro, Hodge, and Cree. Claims 2, 5, 8, 9, 11, 12, and 14–18 were …
RulingsFinal written decision- BurdenDecided for patent owner
“the burden of persuasion is on Petitioner to prove “unpatentability by a preponderance of evidence,” 35 U.S.C. § 316(e), and that burden never shifts to the Patent Owner. See id. (explaining petitioner “had the burden of 11 Dynamic Drinkware issued after the time of the trial hearing and post-hearing briefing. 11 persuasion to prove unpatentability by a preponderance of the evidence, and this burden never shifted”). Petitioner also has the initial burden of production. Id. Petitioner satisfied its burden of production by arguing in its Petition that Spadaro was prior art under § 102(e) and, in combination with one or more other prior art references, would have rendered claims 1–20 obvious at the time the invention was made under § 103(a). Pet. 4–5, 19–35.” slip op. at 11
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateNot shown unpatentable
“production under § 103(c)(1), Petitioner contends it carried its burden of production to show that the ’167 patent (grandparent) sufficiently would have conveyed to one of ordinary skill in the art that the Patent Owner had possession of the claimed subject matter and, therefore, the ’260 patent is entitled to the benefit of the filing date of the ’167 patent. Reply 7. As Petitioner recognizes (Reply 6), a claim in an application is entitled, under 35 U.S.C. § 120, to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims in the later application, as required by 35 U.S.C. § 112. 35 U.S.C. § 120; In re Chu, 66 F.3d 292 (Fed. Cir. 1995). Petitioner’s argument consists of a single paragraph identifying claim numbers and locations where the ’167 patent purportedly describes the subject matter of most, but not all, of the claims at issue and a citation to a single paragraph in its declarant’s supplemental declaration supporting Petitioner’s Reply. Reply 7 (listing claims 2, 8, 9, 11, and 14–18, but not listing claims 5 and 12; citing Ex. 1020 ¶ 16).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The ’260 patent does not set forth a special definition for “call application management system.” As confirmed by Dr. Forys (id.), the plain language of the claim specifies the function required to be performed by the call application management system—connecting calls responsive to 26 receiving a request to connect the call. Although Dr. Forys found Patent Owner’s proposed construction to be “reasonable,” Patent Owner’s proposed construction unnecessarily introduces the term “call processing,” which is not recited by the claim itself and on its face seems broader than the recited function of a call application management system—to connect a call. We do not agree with Patent Owner that a call application management system must perform examples of call processing described by the Specification, but not recited in the claim. Limitations from embodiments are not to be imported into the claims. See In re Van Geuns, 988 F.2d at 1184. Furthermore, we find that Patent Owner’s contention— the name “the call application management system would be understood [by one of ordinary skill in the art] to manage, from start to finish, each call placed or received at the plurality of prisons” (PO Resp. 6)—places too much weight on the term “management” without sufficiently addressing the term “application.” We credit the testimony of Petitioner’s declarant, who disagrees that call application management system is required to manage “all call processing, ‘from start to finish.’” Ex. 1020 ¶ 8. Therefore, in light of the plain language of the claim, the Specification of the ’260 patent, and according the testimony of Patent Owner’s declarant and Petitioner’s declarant appropriate weight, we construe “call application management system” to mean a system that performs the enumerated function—“connecting a call to or from the telephone terminals over a telephone carrier network responsive to receiving a request for connecting the call.”” slip op. at 26
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties propose similar levels of ordinary skill in the art and do not directly challenge the other’s proposal. We consider the level of ordinary skill in the art to be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The prior art references, like the ’260 patent, relate to telephone communication systems. See Ex. 1001, 1:60–62 (indicating the technical field relates to inmate management and call processing); Ex. 1004, 1:7–9 (indicating the field of the invention relates to the processing of voice telephone calls); Ex. 1005, 1:7–9 (indicating the field of the invention relates to telephone communication systems). In general, we adopt the areas of agreement in the parties’ proposals. Patent Owner’s proposed academic or industry experience of telephony15 systems comports with the level of ordinary skill in the art reflected in the prior art of record, which relate to telephone communication systems. Petitioner has not explained sufficiently why the broader field of communications systems is a more appropriate area of academic or industry 15 MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 2112 (6th ed. 2003) (defining telephony as “[t]he transmission of speech to a distant point by means of electric signals”) (Ex. 3001). 30 experience than telephony systems. Thus, we generally adopt Patent Owner’s proposed academic or industry experience in telephony systems. Therefore, one of ordinary skill in the art would have a Bachelor of” slip op. at 30
Patent outcomesUS 8,340,260 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 8,340,260
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.