- 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 - Apple Inc. v. Paul PoniatowskiInstitutedPTAB · Oct 7, 2024 · IPR2024-00731 · APJ Jennifer S Bisk · IPR · Institution
The Board instituted review of claims 1–6, 8–13, 15–20, and 22–27 based on a reasonable likelihood that Wang, Dua, and Yong render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–6, 8–13, 15–20, and 22–27 of the ’578 patent on the sole ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). For purposes of this proceeding, Petitioner argues a person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, computer engineering, or equivalent with one to two years of experience in the field of mobile transactions.” Pet. 8 (citing Bederson Decl. ¶¶ 35–37). Petitioner adds that “[a]dditional education or experience might substitute for the above requirements.” Id. To the extent necessary, and for purposes of this Decision, we accept this assessment offered by Petitioner, as it is supported by Dr. Bederson’s testimony and appears consistent with the ’578 patent and the asserted prior art. 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” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“scanner, reader, or camera” that is aimed at a barcode or special code of a product, the price of which is then added to the retail bill. Pet. 10–11 (quoting Ex. 1001, 7:45–49, 9:5–11). According to Petitioner, the Specification does not elaborate further on the meaning of the term “information concerning prices of goods.” Id. at 11. Petitioner, thus, interprets the term to encompass scenarios in which price information is received directly or indirectly. Id. Petitioner notes that during prosecution of the ’578 patent, the Examiner rejected this limitation over prior art, stating that prior art “sends the scanned bar code information to the server,” which “then preferably returns a description of the item and information,” and “[t]his item description and price information is displayed on the telephone’s display.” Id. at 12 (quoting Ex. 1002, 231). According to Petitioner, this is an example of indirectly receiving information concerning the prices of goods as it comes from a queried server, not from the item itself. Id. Petitioner notes that Patent Owner never disputed, and in fact, made statements supporting that these actions were encompassed by the claim limitation. Id. (citing Ex. 1002, 214). We agree with Petitioner that nothing in the claim language or the Specification requires that the claimed optical input receive information concerning the prices of goods directly from the goods themselves. Thus, on this record, we preliminarily construe the term “receiving information concerning the prices of goods” to encompass receiving pricing information from a server.” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“In an inter partes review, the burden is on the petitioner to show a reasonable likelihood that it would prevail on a ground of unpatentability. 35 U.S.C. § 314(a). With respect to entitlement to any earlier effective filing date, however, a patent owner is not presumed to be entitled to the earlier filing dates of ancestral applications that do not share the same disclosure, such as in a continuation-in-part situation. See PowerOasis, Inc. v. T–Mobile USA, Inc., 522 F.3d 1299, 1305–06 (Fed.Cir.2008) (stating that once a defendant establishes that a reference is § 102(b) prior art, burden is on patent owner to come forward with evidence proving priority to an earlier filing date).” slip op. at 12
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · GrahamPatents in suitUS 8,270,578 - 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 - Satco Products, Inc. v. The Regents Of The University Of CaliforniaInstitution deniedPTAB · Nov 8, 2021 · IPR2021-00661 · APJ Steven M Amundson · IPR · Institution
The Board denied institution of review for claims 1 and 2 under § 314(a), finding the Fintiv factors weighed against review because of the advanced, overlapping ITC investigation.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“The Fintiv factors “relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Fintiv, IPR2020-00019, Paper 11 at 6. A stay of parallel litigation pending resolution of a Board proceeding “allays concerns about inefficiency and duplication of efforts.” Id. That the E.D.N.Y. case was stayed “at its earliest stage,” however, does not “allay[] concerns about inefficiency and duplication of efforts” in view of the 1220 investigation. Additionally, the E.D.N.Y. case was stayed “pending completion” of the 1220 investigation, not because of any Board proceeding. Ex. 3002, 1. With dates set in the 1220 investigation for the ALJ’s initial determination and the ITC’s final determination, a stay seems highly unlikely, especially with the initial determination date about a week away. Hence, factor (1) weighs against institution. See Fitbit, Inc. v. Koninklijke Philips N.V., IPR2020-00771, Paper 14 at 16–17 (PTAB Oct. 19, 2020).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). But we have discretion to deny a petition even when a petitioner satisfies the “reasonable likelihood” threshold standard for instituting trial. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). Based on the current record and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“essentially the same argument about the ’557 patent’s effective filing date for its challenge based on Nakamura-959 and Nakamura-949 as for its invalidity defense based on insufficient written-description support for claim 1. See Pet. 7, 12–21, 37; Ex. 2004, 29–33; Ex. 2005, 245–48; Ex. 2014, 64–65, 70. As we understand the arguments, resolving the ’557 patent’s effective filing date does not require interpreting any part of § 1.57. See Pet. 12–21; Prelim. Resp. 29–31. Instead, the issue turns on whether the ’154 application supports claim 1 according to § 112’s first paragraph. See Pet. 12–21; Prelim. Resp. 29–31. Also, the challenges based on Tanda present a similar issue whether the ’447 provisional supports claim 1 according to § 112’s first paragraph. See Pet. 12–21, 61; Prelim. Resp. 29–31, 36–37. “[T]he test for sufficiency 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.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Under the circumstances here, the ITC can apply the test for sufficiency of disclosure to the ’154 application and the ’447 provisional just as well as the Board.” slip op. at 27
§ 112 disclosureDiscretionary denialPatents in suitUS 10,658,557 - Election Systems & Software, LLC v. Hart Intercivic, Inc.All claims unpatentablePTAB · Sep 1, 2021 · PGR2020-00031 · APJ Jason M Repko · PGR · Final written decision
Claims 1–30 are unpatentable: claims 1–5, 15–19, 25, and 11–14, 28 on obviousness grounds; claims 6, 7, 9, 10, 23, 24, 29, 30 on anticipation; claims 20–22 on obviousness.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On September 2, 2020, we instituted an inter partes review of all challenged claims based on all grounds in the Petition. Paper 6 (“Inst. Dec.”). Patent Owner filed a Response. Paper 14 (“PO Resp.”). Petitioner filed a Reply. Paper 19 (“Pet. Reply”). Patent Owner filed a Sur-reply. Paper 20 (“Sur-reply”). An oral hearing was held on July 6, 2021. A transcript of that hearing has been entered into the record. Paper 28 (“Tr.”).” slip op. at 2
- Skill levelDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, A person of ordinary skill in the art at the time the ‘966 patent was filed (“POSITA”) would have had at least a Bachelor’s degree in electrical engineering or computer science or an equivalent field, or equivalent work experience and, in addition, at least two years’ experience with electronic voting machines, including familiarity with ballot marking devices (“BMDs”), optical character recognition, bar codes and hash functions. Pet. 24 (citing Shamos Decl. ¶¶ 50–51). In the Institution Decision, we applied Petitioner’s proposed definition. Inst. Dec. 6. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. (PO Resp. 3). We continue to find that the level of ordinary skill identified by Petitioner (Pet. 24) is consistent with the record. See Inst. Dec. 6. Thus, we use the same definition here that we used in the Institution Decision.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“testimony also support Petitioner’s conclusion that the accuracy of Brockhouse’s OCR could be improved. Pet. 56; Ex. 1005, 1:20–21 (disclosing that OCR is error prone); Shamos Decl. ¶ 231. On this record, Petitioner provides sufficient “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“4. Claims 7, 9, 10, 24, and 30, Anticipation The Petition states that the statutory basis for challenging claims 7, 9, 10, 24, and 30 is “35 U.S.C. §§ 102 and/or 103.” Pet. 3. In this section, we consider anticipation under Section 102. Patent Owner does not contest Petitioner’s analysis. See generally PO Resp.; PO Sur-reply. Upon review of the entirety of the record, we credit the undisputed testimony of Dr. Shamos and are persuaded by Petitioner’s uncontested analysis. In particular, claims 7 and 24 depend from claims 6 and 23, respectively. Both claims 7 and 24 add “wherein the bar code is utilized to confirm the printed vote record is valid.” Ex. 1001, 9:30–31 (claim 7), 11:18–19 (claim 24). For claims 7 and 24, Petitioner asserts that Nadaf counts the vote only after confirming that the PVR is valid. Pet. 70 (citing Ex. 1007, 6:2–10). In the cited passages, Nadaf refers to the process as “confirming the institutional provenance and integrity of the content of the printed vote.” Ex. 1007, 6:2–6. According to Nadaf, “Only after being audited will the printed vote be validated for counting.” Id. at 6:7–10. On this record, Petitioner supports the assertion that Nadaf confirms the printed vote’s validity with the bar code, as recited. See Pet. 69–70. Thus, we determine that Petitioner has shown by a preponderance of the evidence that the subject matter of claim 7 and 24 are anticipated by Nadaf. Claim 9 recites a “two dimensional bar code.” Ex. 1001, 9:35–36. Claims 10 and 30 recite “a QR code bar code” Id. at 12:34–35. As for claims 9, 10, and 30, Petitioner asserts that Nadaf’s PVR contains both voter-readable text and a bar code encoded with voter selections. Pet. 71 (citing Ex. 1006, Fig. 4). Petitioner asserts that (1) Nadaf’s Figure 4 shows an example QR code and (2) a QR code is a two-dimensional bar code. Id. (citing Ex. 1007, 18:9; Ex. 1003 ¶ 296). On this record, Petitioner shows that Nadaf discloses the two-dimensional bar code that is a QR code, as recited in claims 9, 10, and 30. Thus, we determine that Petitioner has shown by a preponderance of the evidence that claims 9, 10, and 30 are anticipated by Nadaf.” slip op. at 56
Patent outcomesUS 10,445,966 unpatentable§ 102 anticipation§ 103 obviousness§ 112 disclosurecites PhillipsPatents in suitUS 10,445,966 - Flex Logix Technologies Inc. v. Venkat KondaAll claims unpatentablePTAB · Mar 16, 2021 · PGR2019-00042 · APJ Norman H Beamer · PGR · Final written decision
Claims 1–7, 9–15, and 17–19 are unpatentable under §§ 102(a)(1) and 103; the revised motion to amend and motion to exclude are denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Therefore, for purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy, we do not expressly construe any claim term for purposes of this Decision. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Ex. 1001, 49:9–18. Petitioner argues, and we agree, that this language is non-limiting as reciting optional features that “may or may not” be present, and therefore irrelevant to the issue of anticipation.9 Pet. 54–57.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“In light of these and other disclosures in Wong ’308, Petitioner argues that a POSITA would have been motivated to implement the switches of the ’756 PCT application using multiplexers. Pet. 102; Ex. 1002 ¶ 182. Patent Owner does not challenge this fact — the references to multiplexers (also referred to a “muxes”) in the ’342 patent suggest that Patent Owner would concede this point. E.g., Ex. 1001, 9:67, 14:33. Upon review of the record, we are persuaded that Petitioner has proved by a preponderance of the evidence that the combination of the ’724 provisional application and Wong ’308 renders claims 1–7, 9–15, and 17–19 obvious.” slip op. at 29
Patent outcomesUS 10,003,553 unpatentableClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham · NautilusPatents in suitUS 10,003,553 - Juniper Networks, Inc. v. Finjan, Inc.No claims unpatentablePTAB · Apr 7, 2020 · IPR2019-00026 · APJ Charles J Boudreau · IPR · Final written decision
Claims 1, 15, and 41 were not shown unpatentable: Abadi did not identify suspicious code in its annotations, and the Abadi and Gryaznov combination did not cure that deficiency.
RulingsFinal written decision- Skill levelOther
“differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations, including (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; 2 Abadi et al., U.S. Patent No. 6,253,370 B1, issued June 26, 2001 (filed Dec. 1, 1997) (Ex. 1008, “Abadi”). 3 Dmitry O. Gryaznov, Scanners of the Year 2000: Heuristics, Virus Bull. Conf. 225 (Sept. 1995) (Ex. 1009, 2–11, “Gryaznov”). (3) the level of skill in the art; and (4) when in evidence, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving obviousness, a petitioner cannot employ mere conclusory statements. The petitioner must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds with the principles stated above in mind.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Having considered the parties’ arguments, we see no reason to disturb their agreed construction of “Downloadable” as “an executable application program, which is downloaded from a source computer and run on the destination computer,” with which the parties state their express agreement. We clarify in Section II.D.2. below that we agree with Patent Owner that the executable application program that is to be run on the destination computer must be the same executable application program that is downloaded from the source computer within the agreed construction. Sur-reply 1–2. This interpretation is not a question of the construction of the term “Downloadable” itself, but rather flows from the express language of the challenged claims, in which “the Downloadable” that is “ma[de] . . . available to web clients” in the final step of each of independent claims 1 and 41 has its antecedent basis in the first claim step, “receiving . . . a Downloadable.” Likewise, the antecedent in claim 15 for “the Downloadable” that is made available to web clients is the Downloadable in which suspicious code is identified by the content inspection engine. We also agree with Patent Owner that the claimed “linking” of a DSP “to the Downloadable” does not compel a different understanding because we are not persuaded that the linking contemplated in the ’844 patent requires modification of the code of the Downloadable itself. Sur-reply 2–3.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Having considered the full record developed during trial, we agree with Patent Owner that the replacement of the word “profile” with “information” does not add any clarity to the meaning of this phrase and that the proper construction of “Downloadable security profile that identifies suspicious code in [the received / a] Downloadable” in the context of the ’844 patent is “profile that must at least include, but is not necessarily limited only to, an identification of hostile, potentially hostile, undesirable, or potentially undesirable code in the corresponding Downloadable.” PO Resp. 7–8. Regardless, we do not discern that the difference between the parties’ positions with respect to these phrases is dispositive of any issues in this proceeding.” slip op. at 14
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“generate an ID for the Downloadable.” PO Resp. 21 (emphasis added) (quoting Ex. 2015, 15), 23 (emphasis added) (citing Ex. 2015, 20). Based on Patent Owner’s arguments, we are not persuaded that the ’639 provisional demonstrates possession by the inventors of linking a DSP to the Downloadable “before a web server makes the Downloadable available to web clients.” Rather, by the time that the DSP has been linked to the Downloadable (e.g., by code scanner 325, in Patent Owner’s mapping), we understand that the Downloadable has already been received—and hence “made available”—by the web server. Notably, this conclusion does not depend on where the “linking” occurs—particularly, whether it may occur at a network gateway, a focus of the parties’ claim construction arguments (see, e.g., Pet. 25–27; PO Resp. 10–12; Section II.B.5, supra)—but instead on when it occurs relative to the Downloadable being made available to clients. Further, having considered the alleged Appendix to the ’639 provisional (Ex. 2015, 37–45), including portions cited by Dr. Butler in related litigation (see Ex. 2047), we are not persuaded that anything in the Appendix demonstrates possession of linking “before a web server makes the Downloadable available to web clients.” In conclusion, therefore, we are not persuaded that the inventors were in possession of the subject matter of the challenged claims at any time prior to the December 22, 1997, filing date of the ’648 application.” slip op. at 35
Patent outcomesUS 6,154,844 not shown unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 6,154,844 - Wombat Security Technologies v. Phishme, Inc.Rehearing deniedPTAB · Jul 20, 2017 · PGR2017-00009 · APJ Jennifer S Bisk · PGR · Rehearing
The Board denied Wombat’s rehearing request, leaving institution of PGR denied because the petition did not show the patent was eligible for PGR.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“DISCUSSION The applicable standard for granting a request for rehearing is abuse of discretion. 37 C.F.R. § 42.71(c). The requirements of a request for rehearing are set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“sufficiently shown that the ’038 patent was eligible for post-grant review. Inst. Dec. 8–13. Specifically, we found deficient Petitioner’s contention that the challenged claims were not entitled to the benefit of the filing date of Application No. 13/785,252 (“the ’252 application”) to which the ’038 patent claims priority as a continuation-in-part. Inst. Dec. 8–13. This finding was based on the following deficiencies of the Petition: (1) the Petition did not discuss the relevant disclosure of the application to which the ’038 patent claims priority—Application No. 13/785,282 (“the ’252 application”)—as originally filed, citing instead to the ’940 patent, which issued from the ’252 application; (2) the Petition did not address the Examiner’s statements in the Notice of Allowability that “[t]he present application is being examined under the pre-AIA first to invent provisions”; and (3) Petitioner did not satisfy its burden to show that a person of ordinary skill in the art would not have understood the inventor to have possession of “providing feedback to the individual confirming that the identified email was a simulated phishing attack” (“the feedback limitation”). Id. For the third deficiency, we found the feedback limitation supported by at least paragraphs 5 and 18 of the ’252 application, which discuss training individuals who receive simulated phishing attacks such that users are better able to recognize and thwart a real phishing attack. Id. at 11–12.” slip op. at 2
- BurdenDecided for patent owner
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
- Disclosure Requirements (§112) › Written description (Ariad)Not reached
“being recited expressly in the ’252 application it “satisf[ied] its burden to establish that it was more likely than not that the ’038 patent was not entitled to the filing date of the [’252 application].” Reh’g Req. 3. In Blue Calypso, LLC v. Groupon, Inc., however, the Federal Circuit explicitly found that identifying a limitation as not being recited expressly in the specification at issue was not enough to support a finding of lack of written description. 815 F.3d 1331, 1345 (Fed. Cir. 2016). The Federal Circuit explained that it was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding,” concluding this placed “undue weight on the absence of the [exact] terms appearing in the specification.” Id. at 1345–46. Petitioner’s burden, therefore, is not established simply by pointing out that the ’252 application does not explicitly state the feedback limitation.” slip op. at 4
§ 112 disclosurePatents in suitUS 9,398,038
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.