- 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 - Minerva Surgical, Inc. v. Hologic, Inc.All claims unpatentablePTAB · May 8, 2018 · PGR2017-00002 · APJ Meredith C Petravick · PGR · Final written decision
Claims 1–19 are unpatentable under § 112(a) for lack of written description; Petitioner did not prove lack of enablement.
RulingsFinal written decision- BurdenUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateUnpatentable
“Written Description and the ’506 Application The test for written description is an objective inquiry into the four corners of the specification from the perspective of a POSA. Using this test, the invention must be described in a manner sufficient to demonstrate that the inventor actually invented the claimed invention. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “One shows that one is ‘in possession’ of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Written description is a question of fact judged as of the relevant filing date. Falko–Gunter Falkner v. Inglis, 448 F.3d 1357, 1363 (Fed. Cir. 2006). An ipsis verbis disclosure, however, is not necessary to satisfy the written description requirement. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The disclosure need only reasonably convey to a POSA that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. Id.; see Ariad, 598 F.3d at 1351.” slip op. at 23
- Disclosure Requirements (§112) › Enablement (Wands, Amgen full scope)Not enabledNot shown unpatentable
“Under 35 U.S.C. § 112(a), enablement is separate and distinct from the written-description requirement. Ariad, 598 F.3d at 1344. “The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.” United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). “[A] patent specification complies with the statute even if a ‘reasonable’ amount of routine experimentation is required in order to practice a claimed invention.” Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999). Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). These factors, referred to as the Wands factors, include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breath of the claims. Wands, 858 F.2d at 737. It is Petitioner’s burden to show by a preponderance of the evidence that the claims of the ’989 patent lack enablement. 35 U.S.C. § 326(e). Petitioner’s evidence and argument does not sufficiently establish that the ’989 patent fails to teach those in the art to make and use the claimed invention without undue experimentation. See PO Resp. 58–66. The Petition does not address the Wands factors sufficiently so as to show that undue experimentation is required to make or use the claimed invention. For example, neither the Petition nor Dr. Pearce sufficiently addresses the state of the prior art or the relative skill of those in the art. See Pet. 64–65; Ex. 1002 ¶¶ 145–152; PO Resp. 62. As Patent Owner argues, this is an “omission[] that [is] particularly fatal” to Petitioner’s enablement argument, because Petitioner argues that mechanical expansion and inflation expansion are incompatible and cannot be combined. PO Resp. 62; see Pet. 30–38, 64. Dr. Grundfest, however, testifies that it was well known to combine mechanical and balloon-based expansion in surgical devices. Ex. 2005 ¶¶ 132–136; PO Resp. 56. During cross-examination, Dr. Pearce testified that he “thought about the state-of-the-art in minimally invasive surgery during the 1990s.” Ex. 2003 18:1–14. Dr. Pearce’s testimony is conclusory and does not sufficiently address whether he considered whether it was well known to combine mechanical expansion and inflation expansion in surgical devices. For another example, relying upon the testimony of Dr. Pearce, the Petition asserts that a redesign of the expansion design disclosed in the ’989 patent “would take a substantial amount of time and cost to achieve.” Pet. 65 (citing Ex. 1002 ¶ 149). Likewise, Dr. Pearce testifies, “[s]uch a redesign would take a substantial amount of time and cost to achieve.” Ex. 1002 ¶ 149. Dr. Pearce, however, does not explain sufficiently why combining mechanical expansion and inflation expansion would require a substantial amount of time and cost. See id. For these reasons, we determine that Petitioner has not met its burden of showing by a preponderance of evidence that claims 1–19 are unpatentable under 35 U.S.C. § 112(a) for lack of enablement.” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Factors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (quoting Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983)). We are not persuaded that Dr. Pearce’s testimony concerning the level of skill in the art is erroneous to the extent it does not explicitly require experience related to devices used for uterine surgical procedures or surgical devices that employ expandable inflation-based and mechanical-based components. Patent Owner’s argument and Dr. Grundfest’s testimony is inconsistent with the ’989 patent, which does not disclose an ablation device or method of using an ablation device that solves problems unique to endometrial ablation or unique to surgical devices that employ expandable inflation-based and mechanical-based components. The ’989 patent does not limit the art to be “the field of minimally invasive surgical and uterine devices” (Ex. 2005 ¶ 60). The ’989 patent states: “The present invention relates generally to the field of apparatuses and methods for ablating or coagulating the interior surfaces of body organs. Specifically, it relates to an apparatus and method for ablating the interior linings of body organs such as the uterus and gallbladder.” Ex. 1001, 1:20–24; see also id. at 2:36–38 (“The present invention is an apparatus and method of ablation and/or coagulating tissue, such as that of the uterus or other organ”).” slip op. at 16
Patent outcomesUS 9,247,989 unpatentable§ 112 disclosurePatents in suitUS 9,247,989 - Captioncall, L.L.C. / Sorenson Communications, Inc. v. Ultratec, Inc.All claims unpatentablePTAB · Sep 7, 2016 · IPR2015-00637 · APJ William V Saindon · IPR · Final written decision
Claims 1–30 are unpatentable as obvious; Patent Owner’s contingent motion to amend is denied for lack of written-description support and indefiniteness.
RulingsFinal written decision- ExcludeMotion to exclude, grantedMotion to exclude, deniedGranted in part
“admitted that the patented features of voice and revoiced text are responsible for ‘giv[ing] the phone back to folks with hearing loss.’” PO Resp. 48 (emphasis added). Thus, Patent Owner is offering the statement for the truth that voice and re-voiced text gives the phone back to folks with hearing loss. Patent Owner’s argument that Mr. Puzey was discussing the existence of features in his company’s product rather than features in Patent Owner’s product does not change that his statement is offered as proof regarding an alleged long-felt need for the features. Accordingly, his testimony is hearsay. slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art is telecommunication systems. Thus, a [POSA] is a person familiar with at least that technology by way of background and/or experience.” CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00549, Paper 71, 13 (Final Written Decision) (PTAB 2015); see also CaptionCall, LLC v. Ultratec, Inc., Case IPR2013-00780, Paper 35, 9 (Final Written Decision) (PTAB 2015) (reaffirming our finding in IPR2013- 00549). Patent Owner states that it “does not agree” with that definition of a person of ordinary skill in the art, and that, “without waiving the foregoing objection and reserving all rights,” states that it will “appl[y]” our prior definition of a person of ordinary skill in the art “for purposes of this Response.” PO Resp. 3. By not setting forth arguments advocating a particular definition of the level of ordinary skill in the art, and by applying our prior definition, Patent Owner has waived arguments for any other definition. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art, as expressed by its declarant, Mr. Occhiogrosso. Ex. 1009 ¶¶ 26–27. This person typically has “a bachelor’s degree” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“understand a “communication link,” as claimed, to refer to the “communication line” described in the specification. In particular, the link is “intended not only to apply to a traditional land-line . . . but also to all equivalents that offer similar functionality.” Id. at 8:60–63. A link could be “a portion of the bandwidth” of a particular connection, such that a single mode of connection (e.g., IP) could carry out two types of communication (voice and text), with each type corresponding to a different “communication link.” See id. at 8:44–47, 8:63–65. For example, as explained in the ’838 patent, “[e]ach of the telephone lines could be . . . a portion of the bandwidth of an ISDN or DSL service.” Id. at 8:53–65. Accordingly, we adopt Petitioner’s construction of “communication link” as “any communication session, protocol, link, connection, or path distinguishable from [another] communication link[].”” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“3. Combination of References As we discussed above, Petitioner’s combination takes the two-line” slip op. at 43
Patent outcomesUS 8,908,838 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSRPatents in suitUS 8,908,838 - Shinn Fu Company Of America, Inc. / Shinn Fu Corporation v. The Tire Hanger CorporationAll claims unpatentablePTAB · Apr 22, 2016 · IPR2015-00208 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–5 are unpatentable under the stated §102 and §103 grounds; the motion to amend is granted, and substitute claims 6–10 are patentable over the prior art of record.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“that requires construction beyond what was done at the time of institution. Specifically, substitute claim 6 replaces the term “placing” with the new term “hanging.” We see no reason to interpret “hanging” apart from its plain and ordinary meaning. Thus, consistent with its dictionary definition, we construe “hanging” as “to fasten to some elevated point without support from below.” Merriam-Webster’s Collegiate Dictionary, 10th ed. (2000) (emphasis added). The substitute claims also use the transitional phrase “consisting essentially of,” which Shinn Fu argues should be construed presumptively as equivalent to “comprising.” Opp. 3–4 (citing Manual of Patent Examining Procedure § 2111.03). Tire Hanger argues for a narrower construction because, in its view, any additional steps would “materially change the basic and novel characteristics of the claimed method,” pointing to column 1, lines 26–59, of the ’897 patent. Reply 3 (citing Ex. 1002). We are not persuaded that a skilled artisan would view adding a simple extra step, such as raising the wheel to trip a safety latch while removing the wheel from the support arm (see, e.g., Ex. 1012, Fig. 2, 2:61–70), as materially changing the basic objective of the claimed invention in terms of being “easily accessible within the work space,” “remain[ing] out of the way,” and “not requir[ing] workers to bend over,” as made clear in the specification. Ex. 1002, 1:54–59. Thus, we determine that the phrase “consisting essentially of” should be construed as equivalent to “comprising,” so long as any additional unlisted steps “do not have a material effect on the basic and novel characteristics” of the claimed method. PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354–55 (Fed. Cir. 1998).” slip op. at 6
- ScopeMotion to amend, grantedDecided for patent owner
“enlarge the scope of the claims of the patent or introduce new matter.” Shinn Fu argues that claim 9, which Tire Hanger proposes as a substitute for original claim 4, impermissibly enlarges claim scope by deleting the requirement that the individual “does not have to bend significantly at the waist to guide the wheel over the hanger.” That omission, in Shinn Fu’s view, makes claim 9 broader, not narrower, because it infers that an individual may indeed be bending over while handling the wheel on the support arm. Id. at 21–22. We disagree. Claim 9 depends from substitute claim 6, which recites that, when the vehicle is elevated, “the human can remove the wheel without bending over,” and when the wheel is on the support arm, the wheel can be removed “without the human bending over.” Thus, as a matter of dependency, claim 9 incorporates the limitations from claim 6 that entail handling the wheel on the support arm “without the human bending over.” That an amendment simply removes a limitation from a dependent claim and adds it 11 Shinn Fu also argues that the Motion to Amend should be denied because Tire Hanger failed to comply with its obligation of first “conferring with the Board” before filing the Motion, as required by 37 C.F.R. § 42.121(a). Opp. 2. We are not inclined to deny the Motion to Amend on this procedural ground. Before filing the Motion, Tire Hanger’s legal representative contacted the Board to seek clarification on whether a conference call was necessary and was advised it was not. Ex. 2008 ¶¶ 1–4. As such, we are satisfied that Tire Hanger fulfilled its obligation of conferring with the Board. to the claim from which it depends does not mean that the amendment has broadened the scope of the dependent claim from which the limitation has been removed. As such, we are not persuaded by Shinn Fu’s argument. Rather, we find that Tire Hanger’s amendment does not violate the prohibition on enlarging claim scope.” slip op. at 17
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner
“support for its use of the term “human” in the proposed substitute claims. Opp. 23. According to Shinn Fu, the specification only refers to a “worker” performing the steps of removing and replacing the vehicle’s wheel, not a “human.” Id. In Shinn Fu’s view, by using the term “human,” rather than “worker,” in the substitute claims, Tire Hanger has broadened the claims to include “such embodiments or species as newborns, toddlers, children, disabled people, and decrepit people,” for which the specification purportedly lacks written description support. Id. We construe claims based on a reasonable interpretation in light of the specification and prosecution history. Shinn Fu’s proposed construction is unreasonable. The specification of the ’897 patent speaks expressly in terms of “individuals in handling tire/wheel assemblies when mounting and removing them from vehicles.” Ex. 1002, 1:41–43 (emphasis added). Likewise, the original claims refer to “a person” and “an individual” in describing removal of the wheel from the vehicle. Id. at 8:24–30. Those disclosures provide clear support for use of the term “human” in the substitute claims. Thus, we are not persuaded that Tire Hanger’s proposed amendment of the claims lacks written description support.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“Komorita, on the other hand, presents a different picture because it clearly discloses what is called a “tire hanger” on an automotive lift. Ex. 1004, Abstract, Fig. 29. Even so, Tire Hanger asserts that the claimed method is patentable over Komorita because Komorita “merely teaches placing a wheel in a cradle” for holding the wheel from below, not “hanging the wheel on the support arm” or “guiding a hole in the wheel over the support arm,” as required by substitute claim 6. Mot. 13–14; Reply 9; Tr. 30–31. Thus, the question arises as to whether “hanging” a wheel on “a support arm,” per claim 6, is patentably distinct from supporting the wheel from below in a cradle, per Komorita. We conclude it is. To begin, we previously construed the term “hanging” to mean “to attach or place something so that it is held up without support from below.” See section III.A.2 above. Notwithstanding that Komorita is labeled as a “tire hanger,” it is clear from Komorita that the structure actually disclosed is not a hanger but a cradle that supports the wheel from below. Ex. 1004 ¶¶ 113, 114, Fig. 29. Thus, given our claim construction, Komorita does not appear to meet the “hanging” limitation of substitute claim 6. Moreover, the ’897 patent expressly distinguishes the claimed invention from cradle-like structures, such as that of Komorita. Notably, the ’897 patent describes various embodiments of hangers, each of which is “adapted to fit inside the rim of the tire/wheel assembly.” Ex. 1002, 6:17–21 (emphasis added). Figure 6 of the ’897 patent depicts one such embodiment with the hanger inside of the tire/wheel assembly. The ’897 patent goes on to state that “other structures may be used” to support a tire/wheel assembly, such as “an arcuate cradle” configured “to receive a tire therein . . . to rest the tire in the cradle.” Id. at 6:22–24 (emphases added). Further, another embodiment of a cradle is described that includes “a plurality of arms . . . adapted to receive and hold a tire therein,” and where the tire “rests in the cradle.” Id. at 6:35–37 (emphases added). A plain reading of the ’897 patent reveals that the hanger structures (id. at 6:15–21) are a separate embodiment from the cradle structures (id. at 6:22–42) because they are disclosed as “other structures” and because their modes of retaining the tire/wheel assembly are different. The hanger structure allows the tire/wheel assembly to hang thereon, and includes a specific structure adapted to fit inside a hole in the tire rim. Id. at 6:15–21. In contrast, the cradle structure receives a tire therein, and comprises a structure adapted to fit around and below the outside of the tire. Id. at 6:22–42. As such, we find that there is a structural distinction between hangers and cradles. Although the ’897 patent discloses both hangers and cradles, proposed” slip op. at 22
Patent outcomesUS 6,681,897 unpatentableClaim construction§ 103 obviousness§ 112 disclosurePatents in suitUS 6,681,897
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.