- 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 - Ericsson Inc. v. Koninklijke KPN N.V.Some claims unpatentablePTAB · Oct 4, 2023 · IPR2022-00557 · APJ Kevin F Turner · IPR · Final written decision
Claims 1, 10–12, 21, 22, 24, and 25 are unpatentable as obvious; claims 2, 3, 6, and 8 were not shown unpatentable; the contingent motion to amend is denied.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art at the time of the invention “would be a person with a B.S. degree in electrical engineering, computer engineering, or equivalent training or job experience, with two years of experience in computer networking technology, or a Master’s degree in electrical engineering, computer engineering, or other equivalent degree.” Pet. 13 (citing Ex. 1003 ¶ 47). Patent Owner indicates that it does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. PO Resp. 14. We find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we continue to adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“associated sessions” With respect to the limitation “associated sessions,” Patent Owner asserted that the ’669 Patent defines those sessions as those that “should not be managed independent from each another,” and continues to assert the same in its Response. PO Resp. 14–15 (quoting Ex. 1001, 7:37–38). Based on the recitations of the Specification, we construe “associated sessions” as “sessions that should not be managed independent from each other,” as proffered by Patent Owner. Ex. 1001, 7:37–38. slip op. at 8
- Prior constructionTerm construed board ownDecided for petitioner
“Patent Owner asserts that the United States District Court for the Eastern District of Texas rejected Petitioner’s proposed construction in the District Court Case, and following briefing and oral argument in that proceeding, the District Court concluded that “composition session” means “a signaling session that is separate from the associated sessions and that is for facilitating management of the associated sessions.” PO Resp. 16. Having reviewed the District Court’s determination, we do not discern a significant difference in scope between it and Petitioner’s formulation, and we, thus, adopt its construction of “composition session” in the analysis below.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“As such, we continue to determine that Petitioner has sufficiently established that an ordinarily skilled artisan would have had a rationale to combine the teachings of Foti with RFC 3261, RFC 4566, RFC 2326, Wright, and Lloyd, and would have had a reasonable expectation of success in achieving that combination, as we determined in the Institution Decision. See Inst. Dec. 17–18. We continue to be persuaded that one of ordinary skill in the art would have consulted and utilized disclosures in the RFC references to understand and implement the protocols disclosed by Foti. We are further persuaded by Petitioner’s arguments that such skilled artisans would have had a rationale to combine the teachings of Wright and Lloyd with those of Foti for the reasons provided. Petitioner has asserted that each of the supporting references would have been used by persons of ordinary skill in the art to modify or enhance the system described in Foti for the benefits described for the proposed changes. Absent reasons the references should not be combined, we determine that the motivation proffered by the Petition is sufficient to support the combination, under the preponderance of the evidence standard.” slip op. at 16
Patent outcomesUS 9,667,669 mixedClaim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · GrahamPatents in suitUS 9,667,669 - PTAB · Dec 13, 2021 · IPR2020-01062 · APJ Ken B Barrett · IPR · Final written decision
The Board granted cancellation of claims 1–15, 19–20, and 22–24; allowed substitute claims 26–29, 31–38, and 40–44; and denied substitute claims 30 and 39 for lack of written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1003 ¶¶ 78–79; see Pet. 10. In the Institution Decision, we adopted Mr. Fischer’s definition for purposes of that decision. Institution Decision (Paper 7) 9–10. Patent Owner states that it “accepts that definition for the purposes of this proceeding.” Rev’d MTA 24. Mr. Fischer’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Mr. Fischer’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “code” and “Electronic Product Code (EPC).” Opp. to Rev’d MTA 6. Patent Owner asserts that “the limitations of the substitute claims do not require construction and should, instead, be construed in accordance with their ordinary meaning.” Rev’d MTA 24. According to Patent Owner, the addition of certain features of the proposed substitute claims renders moot Petitioner’s arguments concerning the meaning of the term “code.” Id. Additionally, Petitioner argues that the content of the recited codes— an EPC and a code different from the EPC—constitutes “printed matter” (non-functional descriptive material) and, therefore, are not entitled to patentable weight. Opp. to Rev’d MTA 7–10; Pet. Sur-reply 5–6. We need not reach this issue. Even if we construed the specifically recited codes as being non-functional descriptive material, Petitioner, for reasons discussed below, has not shown that the claimed subject matter is unpatentable. Also, the parties do not identify any other issue in this case that turns on whether the two recited codes are non-functional descriptive material. See, e.g., Opp. to Rev’d MTA 11–12 (Petitioner arguing that the relied-on prior art discloses codes in the form of an EPC and a TID (i.e. a code other than the EPC)). On this record, we determine that no claim terms require express construction.” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“A patent claim is indefinite when that claim, “viewed in light of the specification and prosecution history, [does not] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014).” slip op. at 12
- ScopeDecided for patent owner
“Motion to Amend, that “[c]onstruing ‘a first and second memory bank’ to mean, for example, two memories instead of ‘a memory’ also impermissibly broadens the claims.” Opp. to Rev’d MTA 4 n.1 (citing Ex. 1032 ¶¶ 3024– 3027); see also Pet. Sur-reply 1–2 (“the scope of the proposed claims is impermissibly broadened to encompass logical memory banks storing codes in more than one memory.”); Tr. 7:12–13 (“That’s improper because it enlarges the scope of claims to include two memories instead of just one.”). Petitioner’s argument appears to assume that the proposed substitute claims require two memories (as opposed to the recited “memory bank[s]”) and that, because two memories are quantitatively more than one memory, the claims have been broadened. We disagree with Petitioner’s arguments. The arguments are contingent upon a construction of two memory banks being the same scope as two memories. See Opp. to Rev’d MTA 4 n.1 (“Construing . . . impermissibly broadens the claims.”). Petitioner has not offered any persuasive argument or evidence that the two different terms—“memory” and “memory bank” are coextensive or that the more general term “memory” can encompass two of the more specific “memory bank[s].” Further, even if the proposed substitute claims required two memories rather than two memory banks, adding the requirement of a second memory (or, as written in the proposed claims, two memory banks rather than “a memory” as in the issued claim) is further limiting the claims and, therefore, is not broadening the scope. See Hockerson-Halberstadt, Inc., 183 F.3d at 1374. We agree with Patent Owner that the amended language regarding two memory banks does not impermissibly broaden the scope relative to the original claims.” slip op. at 18
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 8,134,451 - Microsoft Corporation v. Smart Skins LLCAll claims unpatentablePTAB · Jun 21, 2017 · IPR2016-00404 · APJ Robert J Weinschenk · IPR · Final written decision
Claims 1, 12, 13, 15, 23, and 24 are unpatentable as obvious over Lunsford and Canova; Janik and Kehoe do not qualify as prior art.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties do not identify any material differences between their respective definitions of the level of ordinary skill in the art. Pet. 11–12; PO Resp. 5. Thus, we determine that both parties define the level of ordinary skill in the art appropriately in this case. Further, our findings and conclusions in this case would be the same under either party’s definition of the level of ordinary skill in the art. To the extent necessary, though, we adopt Patent Owner’s definition, which is supported by the declaration of Dr. Ian Cullimore. PO Resp. 5; Ex. 2006 ¶ 27. As such, we determine that a person of ordinary skill in the art would have had a Bachelor’s degree or equivalent in engineering or computer science, a minimum of a few years of experience with designing and developing software and hardware systems for mobile devices, and general knowledge of embedded systems, and software principles, peripherals, communications protocols, and the like.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree that the specification of the ’864 patent supports construing the adding limitations to mean “configured to enable or contribute to enabling the peripheral device and the mobile device to function together,” as Petitioner proposes. For example, the ’864 patent states that “I/O interface 406 [of electronics 400] facilitates an application or a system service of mobile device 300 in reading the inputs provided by peripherals 102–104, and to writing the outputs to be outputted to peripherals 102–104.” Ex. 1001, col. 4, l. 65–col. 5, l. 1 (emphasis added). The ’864 patent further explains that “protocol processor 403 [of electronics 400] is employed to recover the input data” from peripherals 102–104 (id. at col. 4, ll. 43–48 (emphasis added)), and that “device driver 532 [of mobile device 300] notifies protocol processor 403 to package the data for output to peripherals 102–104” (id. at col. 5, l. 66–col. 6, l. 1 (emphasis added)). These portions of the ’864 patent indicate that the electronic component, which includes the protocol processor, facilitates the transmission of data between the peripheral device and the mobile device, and, thus, contributes to enabling the peripheral device and the mobile device to function together. Id. at col. 6, ll. 3–4 (“Accordingly, data may be . . . inputted and/or outputted for mobile device 300 and peripherals 102–104.”).” slip op. at 7
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“burden to come forward with evidence that claims 1 and 15 are entitled to the benefit of the filing date of the priority applications. See Dynamic Drinkware, 800 F.3d at 1379. As a result, the burden of production returns to Petitioner to show that claims 1 and 15 are not entitled to the benefit of the filing date of the priority applications. Id. at 1380. Petitioner argues that the priority applications do not disclose that the electronic component is coupled to the LEDs or that the electronic component is configured (or designed) to add the LEDs to the mobile device. Pet. Reply 2–4. Specifically, Petitioner argues that “[t]he two ancestor applications . . . do not describe those LEDs interacting with either the mobile device or the supposed electronic component in the cover,” but instead imply “that the LEDs control themselves.” Id. at 3–4. Petitioner’s argument is not persuasive. First, the priority applications do not imply that the LEDs control themselves. The priority applications disclose that the electronic component on the cover includes data for personalizing various aspects of the mobile phone. PO Resp. 15–16; Ex. 1014, 8–9 (“having data . . . for personalizing various behavioral or non-visual aspects of the personality of exposed mobile phone”), 21 (“During this exchange of data, settings . . . complementary to the personalizing theme of the interchangeable covering [are] immediately implemented in the mobile electronic device”); Ex. 1015, 7–8, 20. The priority applications further disclose that the “included data control[s] the LEDs.” PO Resp. 15; Ex. 1014, 17; Ex. 1015, 16. Thus, the priority applications convey that the electronic component on the cover includes data for controlling the LEDs. Second, the priority applications describe the LEDs as interacting with the mobile device and the electronic component. As discussed above, the priority applications disclose that the electronic component and the mobile phone exchange data for personalizing various aspects of the mobile phone. PO Resp. 15–16; Ex. 1014, 8–9, 21; Ex. 1015, 7–8, 20. With respect to personalization of the mobile phone using the LEDs on the cover, the priority applications disclose that the “LEDs may be utilized for various visual activities, such as, but not limited to, displaying a message, or lighting up corresponding to sounds.” PO Resp. 15; Ex. 1014, 17; Ex. 1015, 16. Thus, the priority applications convey that the electronic component is coupled to the mobile phone and the LEDs, and that the electronic component enables the mobile device to function together with the LEDs (e.g., so that the LEDs can be used to display a message or light up corresponding to sounds). Therefore, Patent Owner has shown sufficiently that claims 1 and 15” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner argues that a person of ordinary skill in the art would have had a reason to combine the cited teachings of Lunsford and Canova. Pet. 23–26 (citing Ex. 1007 ¶¶ 32–38). We agree with and adopt Petitioner’s reasoning. Specifically, Lunsford and Canova relate to the same field of endeavor as the ’864 patent, that is, a cover for a mobile device that adds a peripheral to the mobile device.10 Ex. 1001, col. 1, ll. 27–30; Ex. 1003, col. 1, l. 66–col. 2, l. 3; Ex. 1004, col. 1, ll. 47–55, col. 2, ll. 25–28. Further, as discussed above, Lunsford teaches a connector disposed on the cover body, and Canova also teaches a connector disposed on the cover body. Ex. 1003, col. 2, l. 64–col. 3, l. 5, col. 10, ll. 34–45, Fig. 3E; Ex. 1004, col. 1, ll. 53– 55, col. 2, ll. 1–8, col. 2, ll. 41–47, Figs. 5A, 5B. It would have been obvious to a person of ordinary skill in the art to combine these interrelated teachings of Lunsford and Canova so that the connector in Lunsford is disposed on the cover body as taught by Canova. Pet. 23–24; Ex. 1007 ¶¶ 35–37; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“Often, it will be necessary . . . to look to interrelated teachings of multiple patents”). Also, it would have been obvious to a person of ordinary skill in the art to 9 As a result, the challenged claims would have been obvious over Lunsford, even without Canova. 10 In addition, Canova incorporates by reference the contents of Lunsford. Pet. 24; Ex. 1004, col. 1, ll. 6–8, col. 1, ll. 19–20. dispose the connector in Lunsford on the cover body, as taught by Canova, in order to allow the connector in Lunsford to mate easily with the corresponding connector of a handheld computer. Pet. 25–26; Ex. 1007 ¶ 38; KSR, 550 U.S. at 417 (“the predictable use of prior art elements according to their established functions”).” slip op. at 33
Patent outcomesUS 7,079,864 unpatentableClaim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 7,079,864
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.