- 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 - 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 - PTAB · Apr 26, 2022 · PGR2022-00007 · APJ Thu A Dang · PGR · Institution
The Board instituted PGR on claims 1–19 based on likely lack of written description and obviousness over Ellison and Muir, with Al-Salqan or Searle added for certain claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Section 324(a) of Title 35 of the United States Code provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon consideration of the evidence and arguments in the Petition (including its supporting testimonial evidence) as well as the evidence and arguments in the Preliminary Response, for the reasons below, we determine that the information in the Petition satisfies the threshold provided in 35 U.S.C. § 324(a) and we institute this proceeding.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“not present in the written description whose benefit is sought it must be shown that a person of ordinary skill would have understood, at the time the patent application was filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998) (emphasis added). In other words, where the written description fails to disclose an element explicitly, “the applicant must show that any absent text is necessarily comprehended in the description provided and would have been so understood at the time the patent application was filed.” Id. at 1354–55 (emphases added). At this stage of the proceeding, we do not find persuasive Patent Owner’s contention that a person of ordinary skill in the art would have recognized that authentication software has a “private key” that forms an “integral part of the authentication software component and/or is embedded therein” (Prelim. Resp. 13 (quoting Ex. 1001, 5:39–40)), in view of the cited section in the Detailed Description describing the authentication software as comprising the unique serial number, the unique software ID and/or a private encryption key, but only the unique serial number or the unique software ID is embedded therein. See Ex. 1001, 5:39–49. That is, we are unpersuaded at this stage of the proceeding that the person of ordinary skill in the art will directly and unambiguously deduce from the ’773 application as filed that the “private encryption key” is embedded in the authentication software, as Patent Owner contends. Prelim. Resp. 13. Instead, we find persuasive Petitioner’s contention that the ’480 patent (i.e., the ’773 application) merely teaches storing the digital signing algorithm in a secure part of the BIOS 44 but is silent as to storage of the private key. Pet. 18 (citing Ex. 1001, 9:27–34, 13:31–44; Ex. 1003). As Petitioner contends, the” slip op. at 20
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The Specification of the ’480 patent discloses secure area 62 only accessible to BIOS 44, comprising applications and storage locations not reported to operating system 48 (Ex. 1001, 8:62–9:1), wherein, as shown in Figure 3, secure area 62 comprises secure storage location 60, recovery application 56, and authentication software 54. Id. at 9:7–11. That is, the Specification shows “secure memory inaccessible to said operating system” as a location that holds software not accessible to operating system 48. Id. Nothing in the Specification, or the general knowledge in the art, limits “secure memory inaccessible to said operating system” to Ellison’s “isolated storage area 70,” or precludes Ellison’s “secure platform 200,” as Patent Owner proposes. Prelim. Resp. 35–36. In fact, nothing in the Specification or the general knowledge in the art limits the “storage” to any amount of time in the secure memory. We are unpersuaded by Patent Owner’s apparent position that software that is loaded into a secure location of execution is not software that is “stored” in a “secure memory” location. Prelim. Resp. 35–36. In view of the Specification and the general knowledge in the art, we determine that the term “stored in said secure memory inaccessible to said operating system” encompasses being held in any secure location that is determination here is preliminary, and the parties are invited to address this claim construction issue at trial, if so desired.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“ii. “providing a private key in a memory of said electronic device, said memory being a secure part of a Basic In Out System or any other secure location in said electronic device, which private key is inaccessible to a user of said electronic device, wherein the private key is encrypted when the private key is stored in said memory” (claim 1) Petitioner contends that Ellison’s “isolated execution regions ‘is accessible only to elements of the operating system and processor operating in isolated execution mode,’” and that “isolated mode applets 461 to 46K and their data are tamper-resistant and monitor-resistant from all software attacks from other applets and OS 12.” Pet. 56 (citing Ex. 1006, 4:1–22). According to Petitioner, “[a] user is not an element of the operating system and processor operating in isolated execution mode, and therefore 6 The issue of whether the preamble is limiting need not be resolved at this stage of the proceeding because, regardless of whether the preamble is limiting, Petitioner shows sufficiently for purposes of institution, and Patent Owner does not dispute, that the combination of Ellison and Muir teaches a method for performing an electronic transaction between first and second transaction parties, as recited in the preamble. See Realtime Data, 912 F.3d at 1375 (noting that we need only construe “only those terms that . . . are in controversy”). Ex. 1003 ¶ 92). Petitioner then contends that Ellison discloses “a secure platform 200 that ‘includes the OS nub 16, the processor nub 18, a key generator 240, . . . , all operating within the isolated execution environment.’” Pet. 58 (citing Ex. 1006, 8:25–32; Ex. 1003 ¶ 95). Petitioner also contends that “the private key 204 can be stored in the cryptographic key storage 155 and in a multiple key storage of the non-volatile flash memory 160,” and “only the OS nub 16 can retrieve the private key.” Id. at 59–60. According to Petitioner, because “the OS nub 16 is within the secure platform and isolated environment,” it would have been obvious to a person of ordinary skill in the art (POSITA) that “the cryptographic key storage 155 and the non-volatile flash memory 160 are secure storage locations so that the private key 204 can be accessed securely by OS nub 16.” Id. (citing Ex. 1003 ¶ 96). Thus, Petitioner contends that “Ellison explicitly teaches that the OS nub 16 and private key 204 shown in platform 200 all operate within the isolated execution environment,” which “would indicate to a POSITA that private key 204 is stored in a secure memory and is inaccessible to a user of said electronic device.” Id. Nevertheless, Petitioner contends that Muir “explicitly teaches a private key 167 stored in a restricted memory space 170 which is inaccessible to the operating system.” Id. at 60 (citing Ex. 1008, 7–9, 3). Petitioner then contends that Ellison’s OS nub 16 “retrieves the encrypted private key 204 and decrypts it for use in the isolated environment.” Pet. 61 (citing Ex. 1006, 8:33–65, 11:1–12:26). Thus, Petitioner contends that “Ellison and Muir render obvious the private key 204 being encrypted when stored in a secure memory (e.g.,” slip op. at 32
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,992,480
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.