- 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 - Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentablePTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision
Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22
Patent outcomesUS 11,333,007 mixedClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,333,007 - Cradlepoint, Inc. / Sierra Wireless, Inc. et al. v. Sisvel International S.A.Some claims unpatentablePTAB · Jan 18, 2022 · IPR2020-01102 · APJ Aaron W Moore · IPR · Final written decision
Claims 1–5, 15–20, 30, and 31 are unpatentable as obvious over Qualcomm and TS25.322; claims 6–14 and 21–29 were not shown unpatentable. Substitute claims 32–35, 45–49, 59, and 60 were denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention “would have a degree in electrical engineering or similar discipline, with at least three years of relevant industry or research experience in telecommunication, including familiarity with cellular communications technologies,” that this person “would also have familiarity with WCDMA,” and that “[t]his definition is approximate,” as “more education may substitute for industry experience or vice versa.” Pet. 12–13 (citing Ex. 1007 ¶¶ 30–34). We adopted Petitioner’s proposal at institution. See Decision 7–8. In its Response, Patent Owner “proposes that a person having ordinary skill at the time of invention—August 23, 2005—in the relevant art would be one with a bachelor’s degree in electrical engineering, computer sciences, or telecommunications, along with three to five or more years of practical experience in the field” and that “[a] combination of more experience in the field and less education or more education and less experience in the field would also suffice.” PO Resp. 8 (citing Ex. 2001 ¶ 27). Patent Owner asserts that “[a]lthough [its] proposed level of skill in the art is similar to Petitioners’ proposal, Patent Owner includes the qualification that a combination of more experience in the field and less education, or more education and less experience in the field would also suffice.” Id. The parties do not argue that the formulation of the level of skill in the art affects any issue in this case, and we maintain our adoption of Petitioner’s formulation, which we find to be generally consistent with the disclosures of the ’443 patent and the prior art, and which includes that “more education may substitute for industry experience or vice versa.”” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“length indicator” to mean “a single length indicator that provides two pieces of information: (1) that a first data octet of the protocol data unit is a first octet of a first service data unit; and (2) that at least one other octet of the protocol data unit is the last octet of another service data unit.” See Prelim. Resp. 9–10. We agreed with Patent Owner that the specification’s description of a single length indicator that conveys both types of information and the arguments made during prosecution that the claims required a “single LI” or “the same length indicator” to include both types of information were sufficient to support a construction that required a single length indicator to include both pieces of information. See Decision 9. Although it did not propose a construction in the Petition, Petitioner now argues that “the claim language uses the indefinite article ‘a’ to modify ‘length indicator’” and that “[p]recedent is well settled that ‘an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’” Pet. Reply 5 (citing KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). While we agree with Petitioner that “a” may mean “one or more,” that simply means that the addition of more length indicators would not be excluded from the scope of the claim. Petitioner does not explain, and we do not see, how that affects the meaning of “length indicator” itself and, for the reasons argued by Patent Owner and adopted at institution, we maintain the earlier construction of “length indicator” as “a single length indicator that provides two pieces of information: (1) that a first data octet of the protocol data unit is a first octet of a first service data unit; and (2) that at least one other octet of the protocol data unit is the last octet of another service data unit.” See Decision 8; Prelim. Resp. 9–12; PO Resp. 10–13. slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We also observe that, although Patent Owner characterizes this issue as one based on “teaching away” (see, e.g., PO Resp. 3; PO Sur-Reply 15– 16), the argument is not about teaching away because Patent Owner is not pointing us to any specific teaching in the prior art, or elsewhere, that would counsel against the proposed modification. Patent Owner is not arguing that something in the prior art disparages or discourages the use of one bit of an LI as a flag. Instead, Patent Owner is arguing that one of skill in the art would not pursue the Qualcomm approach because to do so would mean accepting other drawbacks that would flow from the use of the flag. In any event, we credit Patent Owner’s evidence that dedicating a bit of the LI for use as a flag would reduce the length that could be represented by the remaining bits of the LI and cause SDUs to be divided into more PDUs. See, e.g., Ex. 2005 ¶¶ 30, 32. However, the record also shows that use of the flag would provide a specific advantage, as described in Qualcomm. See Ex. 1006, 3; Ex. 1007 ¶ 253. This is the motivation advanced by Petitioner which, notably, Patent Owner does not dispute. We conclude that, even if Patent Owner is correct that the proposal in Qualcomm would reduce the permitted PDU size from 128 octets to 64, the change would merely be something a skilled artisan would need to weigh against the advantages that the Qualcomm technique would provide. Patent Owner may be correct that the reduced lengths would, in the end, render the modified system unsuitable for certain applications or for adoption in a standard. That would not, however, make the modification nonobvious, particularly where the exact change proposed in the combination was suggested by individuals working in the field, as evidenced by Qualcomm itself.7 The record shows that at least some of those working in the field, at the time of the invention, believed that the advantages of Qualcomm’s approach would outweigh the reduced lengths.” slip op. at 20
- BurdenMixed
“In TS25.322, the value “0000000” is a predefined, special value used to indicate that “[t]he previous RLC PDU was exactly filled with the last segment of an RLC SDU and there is no ‘Length Indicator’ that indicates the end of the RLC SDU in the previous RLC PDU.” See Ex. 1005, 36–37. However, although Qualcomm specifically contemplates implementing its flag scheme by “[r]e-arrang[ing] special LI values as they are now coded on less number of bits” (Ex. 1006, 4), the Petition did not argue a combination that includes modification of the special LIs for the independent claims. Instead, Petitioner relied on Qualcomm’s proposal to modify ordinary LIs that indicate the end of SDUs. See, e.g., Pet. 71–72 (describing and illustrating modification of the LI that identified the end of SDU 1: “[t]he green modified LI indicates that a first data octet of PDU is a first octet of SDU1 and another octet of the PDU is the last octet of SDU1”); Ex. 1007 ¶¶ 261–262. Petitioner’s argument with respect to these claims is thus not consistent with the argument it advanced for the independent claims from which these claims depend. Petitioner cannot reasonably rely on one type of prior art LI as the “length indicator” of claim 1, but then shift to a different type of prior art LI when addressing the very same “length indicator” recited in a dependent claim. Moreover, Petitioner fails to explain how or why the special LI “0000000” that is used to indicate the layout of the previous PDU could reasonably be used to also indicate the layout of the current PDU in which the LI appears. For example, if the previous PDU did not meet the condition identified by the “0000000” special value, then the LI would not appear in the next PDU even if that next PDU had a first SDU that ended in that PDU. For these reasons, Petitioner has not provided sufficient explanation or argument to establish obviousness of claims 6 and 21.9” slip op. at 28
Patent outcomesUS 7,894,443 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 7,894,443
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.