• Nxtgen Toys, LLC v. Zipstring, LLCAll claims unpatentable
  PTAB · Feb 20, 2026 · IPR2024-01213 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–4, 12, and 15–17 are unpatentable; substitute claim 27 is allowed, while substitute claims 21–26 and 28 are denied as obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the invention “was typically a person with a bachelor’s degree in mechanical engineering, aerospace engineering, physics, or other science or 6 Patent Owner does not rely on any objective indicia of nonobviousness in this proceeding. engineering based degree that [was] familiar with general principles of mechanics and aerodynamics with at least two years of experience in product design and development in the field of toys or other amusement type devices.” Pet. 32 (citing Ex. 1002 ¶¶ 2–6, 22–26). Patent Owner states that it submitted the following proposal for a POSITA in the related district court litigation: “[a POSITA] would have had at least a B.S. degree in Mechanical Engineering, Electrical Engineering, Aerospace Engineering, Industrial Design, Product Design, or similar field, with at least two years industry experience in one of these fields, and such POSITA would have been familiar with general principles of mechanics, fluid mechanics and aerodynamics.” PO Resp. 4–5. We note that the parties’ proposals overlap considerably, and neither party argues the inadequacy of the other party’s proposal or that any patentability issue in this case turns on the resolution of this issue. We find Petitioner’s definition consistent with the problems and solutions disclosed in the ’774 patent and prior art of record, and adopt it as our own. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). We would arrive at the same findings and conclusions in this Decision if we adopted Patent Owner’s proposal.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that no “term requires construction to resolve the invalidity grounds presented in this Petition since the prior art renders claims 1–4, 12, and 15–17 unpatentable under any reasonable interpretation of the claims.” Pet. 7. Patent Owner argues that it “does not believe express claim constructions are necessary during this proceeding because the claims can readily be given their ordinary and customary meaning in the context of the patent at the time it was filed.” PO Resp. 5. Based on the parties’ positions and our view of the record, we need not expressly construe any claim limitations to resolve the issues in this Decision. To the extent that any implicit claim construction issues relate to the issues raised by the parties, we address them in the context of the parties’ patentability arguments below.” slip op. at 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “string, and that adding Scorch’s slot removes this arguably inconvenient process by allowing insertion and removal of a string without removing and reinstalling any aspects of the housing. See Pet 85–86 (citing Ex. 1002 ¶¶ 174–175; Ex. 1007, 3:30–3:53, 6:03; Ex. 1008, 3:46–4:45); Pet. Reply 18–20 (citing in part Ex. 2002 ¶ 187 (Dr. Janét’s testimony that Wagner’s removal and reinstallation of a cover “may be viewed as an inconvenient process”)). Making insertion and removal of the string easier and quicker provides a notable advantage over Wagner’s existing device. See id. Scorch itself supports this argument and the related expert testimony because it discusses insertion and removal of strings and stated that the slot allows a user to “swap them out really quick.” Ex. 1007, 3:30–53. Petitioner also persuasively argues that a POSITA would know how to add the slot while maintaining the proper operation of the device, such as allowing insertion and removal of the string and avoiding inadvertent exiting of the string from the device. See Pet. 86–87 (citing Ex. 1002 ¶¶ 175–176; Ex. 1007, 4:00–30, Ex. 1008, 2:49–52); Pet. Reply 19, 21 (citing Ex. 1002 ¶¶ 174–176). We find Petitioner’s arguments and reasoning in support of adding Scorch’s slot to Wagner’s housing straightforward and persuasive. Patent Owner’s arguments against the combination do not directly refute Petitioner’s reasoning or cast doubt on Scorch’s statement that its slot enables “quick” insertion and removal of a string—quicker than Wagner’s method that requires removal and replacement of a cover on its housing. See PO Resp. 16–22; PO Sur-reply 14–20; Ex. 2002 ¶ 187 (acknowledging inconvenience of Wagner’s existing process for insertion and removal of a string). Patent Owner suggests that Petitioner’s proposed combination fails to take into consideration certain drawbacks such as the risk of inadvertent string exit from the housing or slot, but Petitioner expressly addresses such concerns in the Petition. See PO Resp. 18 (stating that Scorch’s slotted funnel may allow the string to “shoot out the slot” and that Scorch addresses this by adding “a bent wire” to “prevent the string from coming out the side”); PO Sur-reply 16–17; Pet. 86–87 (arguing that Wagner’s flanges would help to trap the string in place, but if not, Scorch’s additional structures could be used to restring the string and “to further reduce the risk of a string inadvertently exiting” the device). We agree with Petitioner that a POSITA would understand how to incorporate Scorch’s slot without causing inadvertent removal of the string—using structures already present in Wagner and Scorch—and the need to add such unclaimed structurers does not teach away from the combination as Patent Owner suggests. See Pet. 86–87; PO Resp. 22. We also agree with Petitioner that a POSITA would understand how to make minor modifications, if necessary, to allow insertion and removal of the string around Wagner’s flanges. See Pet. Reply 21 (citing Ex. 1002 ¶¶ 174–176).” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “refute Petitioner’s reasoning or cast doubt on Scorch’s statement that its slot enables “quick” insertion and removal of a string—quicker than Wagner’s method that requires removal and replacement of a cover on its housing. See PO Resp. 16–22; PO Sur-reply 14–20; Ex. 2002 ¶ 187 (acknowledging inconvenience of Wagner’s existing process for insertion and removal of a string). Patent Owner suggests that Petitioner’s proposed combination fails to take into consideration certain drawbacks such as the risk of inadvertent string exit from the housing or slot, but Petitioner expressly addresses such concerns in the Petition. See PO Resp. 18 (stating that Scorch’s slotted funnel may allow the string to “shoot out the slot” and that Scorch addresses this by adding “a bent wire” to “prevent the string from coming out the side”); PO Sur-reply 16–17; Pet. 86–87 (arguing that Wagner’s flanges would help to trap the string in place, but if not, Scorch’s additional structures could be used to restring the string and “to further reduce the risk of a string inadvertently exiting” the device). We agree with Petitioner that a POSITA would understand how to incorporate Scorch’s slot without causing inadvertent removal of the string—using structures already present in Wagner and Scorch—and the need to add such unclaimed structurers does not teach away from the combination as Patent Owner suggests. See Pet. 86–87; PO Resp. 22. We also agree with Petitioner that a POSITA would understand how to make minor modifications, if necessary, to allow insertion and removal of the string around Wagner’s flanges. See Pet. Reply 21 (citing Ex. 1002 ¶¶ 174–176). At best, Patent Owner’s arguments on this issue establish potential drawbacks in Petitioner’s proposed combination, but drawbacks alone do not defeat Petitioner’s obviousness rationale that includes readily apparent benefits. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.”); Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine “). In addition, even if Patent Owner were correct that Wagner’s existing design works as well as Petitioner’s proposed combination, given all of the tradeoffs involved, that would not fatally undermine Petitioner’s showing. In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (obviousness does not require that the proposed combination “is the preferred, or most desirable, combination”). On this record, Petitioner’s (and Scorch’s) stated advantages that are achieved when adding Scorch’s slot to Wagner’s housing adequately support Petitioner’s motivation to combine rationale.” slip op. at 26

  Patent outcomesUS 11,674,774 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Nautilus
  Patents in suitUS 11,674,774
• Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCAll claims unpatentable
  PTAB · Apr 10, 2024 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–14 are unpatentable as anticipated by Keith; the Board did not reach the alternative obviousness ground over Hanson and Keith.

  RulingsFinal written decision

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

    “claims of the later-filed application must be supported by the written description in the parent ‘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.’” Anascape, Ltd. v. Nintendo of Am. Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). “[T]he hallmark of written description is disclosure,” and the test “is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date” of that application. Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. But, “[i]t is not sufficient for purposes of the written description requirement of [35 U.S.C.] § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Lockwood, 107 F.3d at 1572.” slip op. at 33

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). Whether a reference anticipates is assessed from the perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.”). slip op. at 13

  • BurdenFwd all claims unpatentableDecided for petitioner

    “preponderance of the evidence that the claims are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R. § 42.1(d) (2022). “In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 12

  Patent outcomesUS 10,803,435 unpatentable
  § 102 anticipation§ 112 disclosurecites KSR · Graham
  Patents in suitUS 10,803,435
• Tetra Tech Canada Inc. v. Georgetown Rail Equipment CompanyAll claims unpatentable
  PTAB · Aug 25, 2020 · IPR2019-00620 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–3, 7–13, and 16–20 are unpatentable as obvious; the contingent motion to amend with substitute claims 30–44 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art “would have a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision.” Pet. 21 (citing Ex. 1004 ¶ 42). Patent Owner states that, for purposes of its Response, “Patent Owner does not contest the level of ordinary skill in the art asserted by Petitioner.” PO Resp. 3. Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of one of ordinary skill in the art. In light of the record now before us, we find that a person of ordinary skill in the art would be an individual with at least a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, computer science, physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of computer or machine vision. Ex. 1004 ¶ 42. The level of ordinary skill in the art is also reflected by the references themselves. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown.’”); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record).” slip op. at 8

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

    “On the full record now before us, we determine it is not necessary to construe any claim term expressly to resolve the parties’ dispute. Vivid Techs., Inc., 200 F.3d at 803 (“Only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). D. Prior Art” slip op. at 10

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “Additionally, by providing the declaration of Ms. Watters, Petitioner has taken further steps to provide testimony that Uzarski was catalogued, shelved, and indexed before the critical date, and made available such that persons of ordinary skill in the art, exercising reasonable diligence, could have located it. Id. at 1–2. Ms. Watters, a librarian with the University of Wisconsin-Madison since 1998, provides details regarding her professional background leading to her current position as Director of Wisconsin TechSearch within the University of Wisconsin-Madison. Ex. 1038, 1. She testifies that, based on her knowledge, Uzarski “was received by Wendt Library, University of Wisconsin-Madison Libraries on February 11, 1994.” Id. at 2. She further testifies that, based on the information in Uzarski, “it is clear that the microfiche was received by the library on or before February 11, 1994, catalogued and available to library patrons within a few days or at most 2 to 3 weeks after February 11, 1994.” Id. The declaration concludes with an affidavit that Ms. Watters is aware that false statements are punishable by fine or imprisonment or both. Id.; see 37 C.F.R. § 1.68; 28 U.S.C. § 1746. We have reviewed the testimony of Ms. Watters supporting Uzarski’s public accessibility as of the critical date, and find that Ms. Watters provides credible testimony regarding the receipt of Uzarski by the University of Wisconsin-Madison Library and the cataloging and availability of Uzarski. On this complete record, we are persuaded that the indicia on Uzarski and the support provided by the Watters declaration demonstrate sufficiently that Uzarski was publicly accessible as of the critical date.” slip op. at 17

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

    “Petitioner and its declarant provide ample reasons that one of ordinary skill in the art would have been motivated to employ Villar’s processor to use Uzarski’s method, and ample reasons that one of ordinary skill in the art also would have known to look to Haas to determine what was “well-known to one of ordinary skill in the art at the relevant time to determine the condition of railroad ties,” and to identify and use the particular regulations referenced in Uzarski. Pet. 30 (citing Ex. 1004 ¶ 58), 37–38 (citing Ex. 1004 ¶ 70); see also Reply 6–12; Ex. 1004 ¶¶ 70–71; Ex. 1038, 18–20. On this complete record, and for the reasons provided by Petitioner and discussed above, we determine that Petitioner provides adequate reasoning to combine the three references in the manner proposed in the Petition with a reasonable expectation of success.” slip op. at 33

  Patent outcomesUS 9,441,956 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 9,441,956
• Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentable
  PTAB · Aug 29, 2017 · IPR2016-00656 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–13 are unpatentable: anticipated by Themig and Flores; claims 4, 8, 9, and 13 also are obvious over Flores and over Flores with Whiteley.

  RulingsFinal written decision

  • Skill levelOther

    “ordinary skill in the art would have recognized the possibility of making various design changes. See PO Resp. 13–16. Patent Owner rests this argument on the testimony on page 12 of Mr. McGowen’s declaration, where he opines about various design changes that could be made. See id. We afford this particular testimony little weight because Mr. McGowen does not cite any underpinning evidence for his assertions about the possible variations. See Ex. 2006, 12; 37 C.F.R. § 42.65 (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also note that this testimony discusses a number of possible variations, but does not discuss omitting the port-opening sleeve as a possible variation. See id. Thus, even if we credit Mr. McGowen’s testimony, it provides limited support for the proposition that the ’807 application demonstrates possession of a system without a portopening sleeve. Moreover, as Petitioner notes, Mr. McGowen indicated the variations he discussed would have been “obvious,” which is not enough to establish written description support. See ICU Medical, 558 F.3d at 1378– 1379.” slip op. at 14

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

    “Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Although the Specifications of the ’009 patent and the ’807 patent do not use the word “necessary,” we are persuaded that, just as a person of ordinary skill in the art would have understood that the spike was necessary in ICU Medical, a person of ordinary skill in the art would have understood that the port opening sleeve (i.e., sleeve 322) is necessary here. See ICU Medical, 558 F.3d at 1378; see also LizardTech. Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344–45 (Fed. Cir. 2005) (The disclosure of only one way to create a seamless DWT—by maintaining updated sums—did not provide written description support for claims that did not recite maintaining updated sums.). As Petitioner explains, the original claims of the ’807 application all require a “port-opening sleeve,” as recited in independent claims 1 and 15. Ex. 1019, 39–42; Pet. 22. Similarly, the Abstract of the ’807 application describes a tubing string assembly that includes closures, in which “[t]he closures are openable by a sleeve drivable through the tubing string inner bore.” Ex. 1019, 43. These disclosures would have strongly suggested to a person of ordinary skill in the art that a port-opening sleeve was a necessary component in the invention. See ICU Medical, 558 F.3d at 1378 (noting claims omitting spike recitation not filed with original application, but added years later during prosecution). Consistent with this, Petitioner persuades us that the only way the ’807 application teaches the claimed requirement of allowing a plug to open and then pass through a sleeve or sleeves is by using a port-opening sleeve, such as sleeve 322. Pet. 24; Reply 7. Petitioner argues that the Figure 6 embodiment cannot function without the port-opening sleeve. Pet. 24. Petitioner explains that port-closure sleeves 325a, 325b “have an inner diameter that ‘is generally equal’ to the inner diameter of the tubing string, meaning that any ball or plug that can traverse the tubing string will—in the absence of an intermediate port-opening sleeve—necessarily also pass through the port-closure sleeves [without opening them].” Id. (citing Ex. 1001, 10:1–6, Fig. 6); see also Ex. 1019, 34 (Disclosing that “sleeve 325a is selected to have an inner diameter that is generally equal to the tubing string inner diameter.”).” slip op. at 12

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–13. Pet. 24–33. Patent Owner’s sole argument that Themig does not anticipate claims 1–13 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–13. PO Resp. 21. For the reasons, explained above in Section III.B, we find this argument unpersuasive.” slip op. at 16

  Patent outcomesUS 8,657,009 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 8,657,009
• Baker Hughes Incorporated / Baker Hughes Oilfield Operations, Inc. v. Packers Plus Energy Services, Inc.All claims unpatentable
  PTAB · Aug 29, 2017 · IPR2016-00657 · APJ Neil T Powell · IPR · Final written decision

  Claims 1–8 are unpatentable as anticipated by Themig and Flores, and obvious over Flores and Flores with Whiteley; obviousness over Echols with Thomson, with or without Whiteley, was not shown.

  RulingsFinal written decision

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

    “Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner

    “Petitioner persuades us that the ’807 application does not provide written description support for the challenged claims of the ’451 patent. Aside from the Figure 6 embodiment of the ’451 patent and ’807 application, no other disclosed embodiment falls within the scope of the challenged claims. As noted in our Institution Decision and in Section III.A above, each of the challenged claims requires an apparatus or method with a sleeve (or multiple sleeves) actuatable or opened by a plug, where the sleeve (or multiple sleeves) allows the plug to pass through the sleeve in the open position. Inst. Dec. 5–6. Aside from the Figure 6 embodiment, we do not find (and Patent Owner does not argue) that any of the other embodiments teaches a sleeve or sleeves that allow a plug to pass through in the open position of the sleeve or sleeves. In view of this, Petitioner persuades us that none of the disclosed embodiments other than Figure 6 of the ’807 application could potentially provide written description support for the challenged claims of the ’451 patent.” slip op. at 11

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Petitioner’s assertions and evidence persuade us that Themig anticipates each of claims 1–8. Patent Owner’s sole argument that Themig does not anticipate claims 1–8 is that the claims are entitled to the filing date of the ’807 application, such that Themig is not prior art to claims 1–8. PO Resp. 21. For the reasons, explained above in Section II.B, we find this argument unpersuasive.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Patent Owner persuades us that Petitioner has not provided rational underpinning for its contention that it would have been obvious to add multiple examples of Echols’ sleeve to each interval of Thomson’s system. We find unpersuasive Petitioner’s argument that neither the claims nor the challenge requires a cement casing in the well. Regardless of what the claims require, Petitioner chose Thomson and Echols as the prior art to support its obviousness contention. On this record, we are persuaded that Thomson discloses using its tubing string in a well lined with a cement casing. Thomson discloses that “[b]efore running the completion, each well was perforated with tubing-conveyed perforating (TCP) guns.” Ex. 1005, 3. Thomson also discusses “installation into the horizontal section of the liner,” and admonishes that “[t]he well in general and liner in particular needs to be properly cleaned and conditioned. This is essential for running ten packers in a horizontal liner.” Id. at 3–4. These disclosures indicate that Thomson’s system includes a cement liner in the wellbore. Consistent with this, Figure 3 of Thomson, reproduced below, appears to show a liner at the periphery of the wellbore.” slip op. at 26

  Patent outcomesUS 9,074,451 unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosure
  Patents in suitUS 9,074,451
• Sony Corporation, Sony Electronics Inc., Sony Mobile Communications AB, And Sony Mobile Communications (USA) Inc. v. Memory Integrity, LLCAll claims unpatentable
  PTAB · May 19, 2016 · IPR2015-00158 · APJ Neil T Powell · IPR · Final written decision

  Claims 19–24 are unpatentable: claim 24 as obvious over Koster, and claims 19–23 as obvious over Koster and Kuskin; the motion to amend is denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed board ownDisclaimer not foundDecided for petitioner

    “evidence in Patent Owner’s Response, we remain unpersuaded that the ’121 patent supports limiting the broadest reasonable construction of “states” solely to cache coherence protocol states. A claim term will be interpreted more narrowly than its ordinary and customary meaning only under two circumstances: (1) the “patentee sets out a definition and acts as [its] own lexicographer,” or (2) the “patentee disavows the full scope of a claim term either in the specification or during prosecution.” Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012). To disavow claim scope, the specification or prosecution history must “make[] clear that the invention does not include a particular feature” and the feature is then “deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification” or prosecution history, “might be considered broad enough to encompass the feature in question.” SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001); see Aventis, 675 F.3d at 1330. To disavow claim scope, the patentee may “include[] in the specification expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.” Aventis, 675 F.3d at 1330 (internal quotations omitted). In this context, it is not sufficient “that the only embodiments, or all of the embodiments, contain a particular limitation.” Id.” slip op. at 9

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

    “Petition, Patent Owner’s Response, and Petitioner’s Reply. Based on that review, we determine that Petitioner has demonstrated, by a preponderance of the evidence, that all of the limitations of claim 24 are taught by, or rendered obvious in view of the teachings of Koster, and that claim 24, considered as a whole, would have been obvious over Koster. Pet. 19–20, 25; PO Resp. 1–16; Pet. Reply 1–8. We find Petitioner’s citations and arguments persuasive, and we adopt them as the basis for our decision. Pet. 19–20, 25; Pet. Reply 1–8. We are persuaded that Koster’s tags and shadow tag memory teach the claim language “probe filtering information representative of states associated with selected ones of the cache memories.” For the reasons explained in Section II.A.1.a supra, we do not agree with Patent Owner’s argument that the broadest reasonable interpretation of this claim language requires cache coherency states. Additionally, as discussed in Section II.A.1.a supra, Patent Owner does not persuade us that the examples of tags and state information discussed in the ’121 patent constitute a clear disavowal of tags as necessarily excluded from state information. See PO Resp. 14–15 (citing Ex. 1001, 7:67–8:4; 13:44–14:47; Fig. 7). Furthermore, Patent Owner’s argument that tags are not state information fails to recognize that the claimed probe filtering information does not have to be states, it need only be “representative of states associated with selected ones of the cache memories.” Ex. 1001, 31:5–6 (emphasis added); see Tr. 74:11– 15, 77:2–9. Patent Owner does not dispute that Koster’s shadow tag memory and its tags indicate where specific data is cached. See PO Resp. 15; Ex. 1001, at [57], 6:9–38, 6:61–7:16, 7:25–33, Figs. 9, 10; Pet. 20; Pet. Reply 5–6; Ex. 1013 ¶ 19; Ex. 1015 ¶ 20; Ex. 1016, 186:17–24. Additionally, Koster uses the information provided by the shadow tag memory and its tags in controlling where to send data requests. See, e.g., Ex. 1001, 6:18–32; Pet. 20; Ex. 1013 ¶ 19. Accordingly, we are persuaded that Koster’s shadow tag memory and its tags are representative of whether selected ones of the cache memories contain specific data, which is representative of the states of those cache memories. See, e.g., Ex. 3001, 497–498 (setting forth definition of “state” as “[t]he condition at a particular time of any of numerous elements of computing—a device, a communication channel, a network station, a program, a bit, or other element—used to report on or to control computer operations.”); Pet. 20; Pet. Reply 1–8; Ex. 1013 ¶ 19; Ex. 1015 ¶ 20; Ex. 1016, 186:17–24.” slip op. at 25

  • 112 supportMotion to amend, deniedDenied

    “although Patent Owner points to several lines and one figure as describing the limitation, these disclosures simply identify the existence of a cache coherency controller with both a coherent and non-coherent protocol interface without providing any detail of how such a cache coherency controller would be implemented. See Ex. 2020, 12:20–23, 13:11–17; Ex. 2006, 12:12–15, 13:4–10; Ex. 1001, 7:44–48, 8:5–14. Figure 3 represents a concept of a cache coherence interface with two interfaces—but lacks any details that would show one skilled in the art how to make or use a cache coherence interface with two interfaces. See Ex. 2020, Fig. 3; Ex. 2006, Fig. 3. The specification describes Figure 3 as a “diagrammatic representation” of a cache coherence controller, and does not purport to show details of how the two interfaces would be implemented together in such a controller. See Ex. 2020, 5:17, 12:28–13:21, Ex. 2006, 6:16, 12:20– 13:14; Ex. 1001, 3:32–33, 7:53–8:19. This is supported by the testimony of Dr. Oklobdzija, who testified that Figure 3 (along with Figures 2 and 17 of the ’121 patent) “point[] . . . to a non-coherent interface and the interconnections,” but do not provide details regarding how to implement a coherent and non-coherent interface and instead “le[ave] someone . . . with ordinary skill in the art to . . . figure it out.” Ex. 1016, 90:5–93:1, 95:14– 96:10. Dr. Oklobdzija also agreed that “one of ordinary skill would not have already had in their knowledge how to build a system with [both] interface[s].” Id. at 90:5–17.” slip op. at 37

  • Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledDecided for petitioner

    “Ex. 2020, 12:22–14:21; Ex. 2006, 11:14–12:14; Ex. 1001, 7:44–8:19. This general description fails to provide a structure or description of how a person having ordinary skill in the art would make or use a cache coherence controller with both types of interfaces. The most detailed language— “[i]n one embodiment, the cache coherence controller 230 is a specially configured programmable chip such as a programmable logic device or a field programmable gate array” and “[a]ccording to various embodiments, each interface 307 and 311 is implemented either as a full crossbar or as separate receive and transmit units using components such as multiplexers and buffers”—does not specifically describe how to implement the system. Instead, as confirmed by Dr. Oklobzjia, the sentence related to the cache coherence controller 230 “gives kind of [a] suggestion to – that this can be implemented as a programmable chip” and the sentence describing implementation of the interfaces is simply an “implementation hint.” Ex. 1016, 100:18–102:20. According to Dr. Oklobzjia, the implementation details are “up to the engineers to – to figure out further.” Id. at 101:10–20. Indeed, Dr. Oklobdzija testified that prior to the filing date of the ’121 patent, a person of ordinary skill in the art would not have known to use both a coherent interface and a non-coherent interface at once. Ex. 2019 ¶¶ 11–12. Specifically, Dr. Oklobdzija testifies that, a reference that “reflects the state of the art of coherent and non-coherent interfaces” as of the alleged effective filing date of the ’121 patent indicated that a system could use only one or the other of a coherent or non-coherent interface, but not both. Id. ¶ 12. Noticeably absent in Patent Owner’s Motion is reference to any detailed discussion in the ’121 patent of the how the cache coherence controller would operate with both interfaces at once, let alone such full, clear, concise, and exact terms as to enable any person skilled in the art, to make and use the system. Given the testimony of Dr. Oklobdzija, we cannot determine that Figure 3 and the few corresponding lines of description apprise one of ordinary skill how to make and use a cache coherence controller with both a coherent and non-coherent protocol interface. See Automotive Techs. Int’l v. BMW of N. Am., Inc., 501 F.3d 1274, 1281–85 (Fed. Cir. 2007) (holding that electronic sensors were not enabled because the specification’s general description failed to provide a structure or description of how a person having ordinary skill in the art would make or use the sensor). This is true despite Dr. Oklobdzija’s conclusory statement to the contrary. Ex. 2042 (Reply Declaration) ¶ 7 (“As I noted in my deposition, based simply on my review during the deposition itself, I believed, and I continue to believe, that the specification of the ’121 Patent contains a number of ‘implementation hint[s]’ which would enable one of skill in the art to practice the coherent protocol interface’ and ‘non-coherent protocol interface’ limitations without undue experimentation.”). “It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.” Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997). Although the knowledge of one skilled in the art is relevant, the novel aspect of an invention must be enabled in the patent. As noted above, according to Dr. Oklobdzija, prior to filing of the ’121 patent, it was suggested that a system could use only one or the other of a coherent or non-coherent interface, but not both. Ex. 2019 ¶¶ 11–12. Given that the allegedly novel aspect of the invention is a cache coherence controller that uses both interfaces, which was unknown to a person of ordinary skill at the time, it is insufficient to merely provide “implementation hints” using known technologies to create that novel cache coherence controller. As was the case in Genentech, the portions of the specification relied upon by Patent Owner here provide “only a starting point, a direction for further research” on using a probe filtering unit with both protocol interfaces; it does not provide guidance to a person of ordinary skill in the art on how to make or use such system. 108 F.3d at 1366. Patent Owner, thus, fails to show that the specification provides “reasonable detail” sufficient to enable use of a probe filtering unit is coupled to a coherent protocol interface and a non-coherent protocol interface. We conclude that Patent Owner has not met its burden of showing that the protocol interface limitation is properly enabled under 35 U.S.C. § 112 ¶ 1.” slip op. at 39

  Patent outcomesUS 7,296,121 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 7,296,121
• Headbox, LLC v. Infinite Imagineering, Inc.All claims unpatentable
  PTAB · May 22, 2015 · IPR2014-00365 · APJ Benjamin D M Wood · IPR · Final written decision

  Claims 1–3, 5, 8–14, 16–19, 22, and 24–26 are unpatentable under § 103; claim 23 is indefinite under § 112, and its obviousness was not reached.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “headphone set in accordance with claim 1, where each of said speaker headphones includes a pair of stereo headphone driver units in order to increase the volume/audio level when said speaker headphones are not positioned on the user’s head.” Ex. 1001, 12:5–9 (emphasis added). Claim 23 additionally recites “wherein each of said headphone driver units includes a volume controlling means for regulating and presetting the volume level for said exterior speakers and said interior speakers.” Id. at 12:23–26 (emphasis added). Petitioner contends, and we agree, that “volume controlling means” is a means-plus-function claim term under 35 U.S.C. § 112, paragraph 6, and that the claimed function is regulating and presetting the volume level for the exterior speakers and the interior speakers. Pet. 11. Petitioner also contends that the Specification does not identify any structure that corresponds to this function. Id. “If the specification does not contain an adequate disclosure of the structure that corresponds to the claimed function, the patentee will have failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112, which renders the claim invalid for indefiniteness.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (internal quotation marks omitted). The Specification teaches that one embodiment of headphone set 10 includes driver unit 70 for interior speakers 42, 44, and driver unit 72 for exterior speakers 38, 40, with driver units 70, 72 including “volume controlling means” 71 and 73, respectively. Ex. 1001, 6:40–45, Fig. 2B.7 According to the Specification, the volume controlling means are for presetting a maximum volume to each of the interior and exterior speakers, presumably to prevent hearing damage caused by excessively loud audio. Id. at 6:57–7:2. But the Specification does not describe or depict the structure that the volume controlling means uses to preset the maximum volume. Instead, it merely describes their function and depicts each of them as a box in a block diagram. Id. This is not sufficient because it does not “cabin the scope of the functional language in the means[-plus-function] element.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 518–19 (Fed. Cir. 2012) (holding that a “black box” in a flow chart only represents a function without specifying structure). Accordingly, we agree with Petitioner that the ’966 patent Specification does not describe structure corresponding to the function of presetting a maximum volume to the interior and exterior speakers, rendering claim 23 indefinite.” slip op. at 6

  • Disclosure Requirements (§112) › Definiteness (Nautilus)IndefiniteOther

    “which renders the claim invalid for indefiniteness.” Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009) (internal quotation marks omitted). The Specification teaches that one embodiment of headphone set 10 includes driver unit 70 for interior speakers 42, 44, and driver unit 72 for exterior speakers 38, 40, with driver units 70, 72 including “volume controlling means” 71 and 73, respectively. Ex. 1001, 6:40–45, Fig. 2B.7 According to the Specification, the volume controlling means are for presetting a maximum volume to each of the interior and exterior speakers, presumably to prevent hearing damage caused by excessively loud audio. Id. at 6:57–7:2. But the Specification does not describe or depict the structure that the volume controlling means uses to preset the maximum volume. Instead, it merely describes their function and depicts each of them as a box in a block diagram. Id. This is not sufficient because it does not “cabin the scope of the functional language in the means[-plus-function] element.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 518–19 (Fed. Cir. 2012) (holding that a “black box” in a flow chart only represents a function without specifying structure). Accordingly, we agree with Petitioner that the ’966 patent Specification does not describe structure corresponding to the function of presetting a maximum volume to the interior and exterior speakers, rendering claim 23 indefinite.” slip op. at 7

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

    “speaker headphone (ear covers 20) on opposing ends of a headband—each speaker headphone comprising an exterior speaker (audio speaker 25) and an interior speaker (earphone speaker 27)—and a signal wire connecting an audio device output to the speaker headphones. Ex. 1003, 2:8–20, 23–44, 53–59, 3:24–32, Figs. 1, 2. Kuo also discloses a switch that allows a user to listen to either the interior speakers or exterior speakers, although it does not describe the claimed three-way switch that also allows a user to 8 See 37 C.F.R. § 42.23(a) (“Any material fact not specifically denied may be considered admitted.”). simultaneously listen to both interior and exterior speakers. Id. at 2:32–44, 3:27–29. We find, however, that Awaba discloses a three-way switch (mode switch 28) that permits a user to select between the three claimed listening modes. Ex. 1004, 2:5–12, 27–28, 4:30–36, Fig. 1. Further, a skilled artisan9 would have considered Awaba’s three-way switch to be an obvious substitute for Kuo’s two-way switch because both are used for essentially the same purpose: to select between a headphone’s internal and external speakers on similar speaker-equipped headphones. The skilled artisan would have been motivated to make the substitution because Awaba’s threeway switch adds the additional functionality of being able to play both sets of speakers at the same time.” slip op. at 9

  • Obviousness (§103) › KSR rationalesUnpatentable

    “claim 1. We find that the combination of Kuo and Awaba teaches the additional limitations recited in these claims. Specifically, Kuo discloses the input jack, amplifier member, power source, headphone shape and audio-device connection of, respectively, claims 8–10, 12, and 16. Ex. 1003, 2:21– 31, 37–39, 47–59, 3:4–32, Figs. 1, 2, 5–7. Kuo’s mounting of ear covers 20 at the joint ends 11 of headband 10 corresponds to the requirements of claim 5. Id. at 2:12–18, Fig. 2. Further, Awaba discloses the three-way switch of claims 2 and 11 and the electrical connections of claim 11 (Ex. 1004, 2:24– 28, 4:25–36, Fig. 1); Awaba’s transmission of mono signals corresponds to 9 We find that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of skill in the art). the monaural system of claim 24 (id. at 4:26–29); and Awaba’s socket 24 corresponds to claim 26’s pocket (id. at 4:10–17). Adding these features to Kuo’s headphones would have constituted use of known techniques to improve similar devices (speaker-equipped headphones) in the same way. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (holding that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”).” slip op. at 10

  Patent outcomesUS 8,085,966 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites KSR
  Patents in suitUS 8,085,966
• Munchkin, Inc. / Toys “r” US, Inc. v. Luv N’ Care, Ltd.All claims unpatentable
  PTAB · Apr 21, 2014 · IPR2013-00072 · APJ Michael J Fitzpatrick · IPR · Final written decision

  The sole claim is unpatentable as obvious over Hakim ’225 and Hakim ’604; the motion to amend is denied because it would enlarge claim scope.

  RulingsFinal written decision

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

    “The test for sufficiency of the written description, which is the same for either a design or a utility patent, has been expressed as “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (quoting Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). In the context of design patents, the drawings provide the written description of the invention. Thus, when an issue of priority arises under § 120 in the context of design patent prosecution, one looks to the drawings of the earlier application for disclosure of the subject matter claimed in the later application. Owens, 710 F.3d at 1366 (citations omitted).” slip op. at 6

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

    “likelihood that the claim of the ’465 patent would have been obvious over each of Hakim ’225 and Hakim ’604. Dec. on Pet. 23. In response, Patent Owner does not argue that the claim is patentably distinct from those references. PO Resp. 6-7; Tr. 31:10-17. Rather, Patent Owner argues that the references are not prior art. PO Resp. 6-7; Tr. 31:10-17.” slip op. at 5

  • ScopeMotion to amend, deniedDenied

    “Owner relies on this distinction, between infringement of design patents and that of utility patents, to argue that the proposed amended claim is not broader than the issued claim because, to “an ordinary observer,” the designs are “substantially the same.” PO Reply 4 (emphasis added). However, Patent Owner does not direct us to, and we are not aware of, any authority that has applied the “ordinary observer” test—first enunciated as a test for infringement in Gorham Manufacturing Co. v. White, 81 U.S. 511 (1871) and adopted as the sole test for design patent infringement in Egyptian Goddess, 543 F.3d at 678—to compare the scope of two claims. The scope of the issued claim and the proposed amended claim are defined by the respective drawings. See id. at 679 (design patents typically are claimed as shown in the drawings). Those drawings differ with respect to the spout tip and the vent. Specifically, the proposed amended claim is broader than the issued claim because it is broader with respect to racetrackshaped spout tips and raised rim vents, even though it may be narrower with respect to egg-shaped spout tips and vents without raised rims. See In re Rogoff, 261 F.2d 601, 603 (CCPA 1958) (“[A] claim is broadened if it is broader in any respect than the original claim, even though it may be narrowed in other respects.”). In other words, a drinking cup, having the racetrack-shaped spout tip and raised rim vent of the proposed amended claim, could infringe the proposed amended claim based on its overall design, yet not infringe the issued claim. See Thermalloy, Inc. v. Aavid Eng’g, Inc., 121 F.3d 691, 692 (Fed. Cir. 1997) (“A new claim enlarges if it includes within its scope any subject matter that would not have infringed the original patent.”). Therefore, the proposed amended claim would enlarge the claimed subject matter in violation of 35 U.S.C. § 316(d)(3) and 37 C.F.R. § 42.121(a)(2)(ii).” slip op. at 14

  Patent outcomesUS D617,465 unpatentable
  § 103 obviousness§ 112 disclosure

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.