• Aroma360, LLC v. Air Esscentials, Inc.All claims unpatentable
  PTAB · Oct 6, 2026 · IPR2025-00706 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 1, 4, and 7–10 are unpatentable as obvious over Goubet and anticipated by Gao; proposed substitute claims 20 and 21 are denied as indefinite and lacking written-description support.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Response, Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner, but Patent Owner “reserves the right to address [the definition] should new issues materialize.” PO Resp. 6. Patent Owner did not address this issue in the Sur-reply. As noted in the Decision on Institution, Petitioner’s proposed definition appears generally consistent with the record, including the prior art. See Dec. Inst. 8 (citing In re GPAC Inc., 57 F.3d at 1579). We remove the phrase “at least” in both listed options, however, as that phrase adds ambiguity. Further, Patent Owner has not argued at trial that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would have understood either the challenged patent or the prior art. In the analysis below, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution, as proposed by Petitioner.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther

    “Network LLC, 929 F.3d 1350, 1357 (Fed. Cir. 2019). At first glance, the language of the limitation at issue—which, again, recites “the compressed air and the operative fluid mix together in said mixing chamber to form the fluid dispersion”—would seem to require the “fluid dispersion” (under the stipulated construction) to be fully formed in the “mixing chamber.” In other words, the language of the limitation alone would seem to support Patent Owner’s proposed construction for the “form the fluid dispersion” limitation. But the claim construction analysis does not end with consideration of the claim language alone. Next, we turn to the Specification. The Federal Circuit has said that the specification “is the single best guide to the meaning of a disputed term.” Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). Here, the discussion in the Specification of precisely the same language as in the limitation at issue strongly supports that “to form a fluid dispersion” in the limitation at issue requires only initial mixing of the compressed air and operative fluid in the mixing chamber, with further “formation” of the ”fluid dispersion” occurring downstream of the mixing chamber: More importantly, the “predetermined amount” of compressed air and the “preselected amount” of the operable fluid are initially mixed together in the mixing chamber 226 to form a fluid dispersion. The diffusion chamber 112" is further structured to facilitate the formation of a plurality of substantially uniform droplets, as defined hereinabove, in the fluid dispersion prior to discharge from the diffusion chamber 112" through discharge port 132. Ex. 1001, 10:62–11:2 (emphasis added) (discussing Figure 6), quoted, in part, at Pet. Reply 6–710; see also Ex. 1001, 5:64–6:4 (same language, except without double primes, in a discussion of Figures 1 and 2). To be sure, certain passages in the Specification could be read to indicate that a “fluid dispersion” must be fully formed in the “mixing chamber.” See, e.g., Ex. 1001, 6:11–12 (“More in particular, the suppression chamber 232 receives the fluid dispersion from the mixing chamber 226.”); see also id. at 7:22–33, 11:39–52 (both implying that a “fluid dispersion” is formed in the mixing chamber). But the passage block quoted directly above (and the similar one bridging columns 5 and 6) more directly addresses the issue at hand—i.e., the scope of “form the fluid dispersion”—by using the same” slip op. at 13

  • Expert testimonyPatent owner expert discountedMixed

    “As an initial matter, the record here does not support any sound basis to disregard the entirety of Dr. Micklow’s Declaration for allegedly not reviewing the parties’ claim constructions. See Pet. Reply 2 (citing Ex. 1046, 115:15–18). Contrary to Petitioner’s argument, in the cited discussion, Dr. Micklow does not indicate that he applied an incorrect understanding of a claim term. Cf. Cordis Corp. v. Bos. Sci. Corp., 658 F.3d 1347, 1357–58 (Fed. Cir. 2011) (disregarding testimony “based on an incorrect understanding of the claim construction”), cited at Pet. Reply 1. Instead, we read Dr. Micklow’s testimony as clarifying that he was not involved in claim construction at all and that, as stated, he “made [his] opinions based on what [he] read in the patents.” Ex. 1046, 112:11–12; see also id. at 115:15–18 (“I don’t know if I would even apply claim construction. I applied engineering principles to a document that had been published with the patent office.”).” slip op. at 18

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

    “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); TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016) (“Although the KSR test is flexible, the Board ‘must still be careful not to allow hindsight reconstruction of references . . . without any explanation as to how or why the references would be combined to produce the claimed invention.’”) (citation omitted). Based on the complete record, we agree with Patent Owner that “Petitioner’s asserted motivation boils down to the conclusory statement that given Goubet and Kaiser, ‘it was well known in the field at the time of the invention that droplets of greater uniformity result in uniform droplet evaporation.’” PO Resp. 31 (quoting Pet. 59). We agree with Patent Owner that Petitioner’s discussion of the alleged reasons to combine (Pet. 59) is insufficient to support the proposed combination here. See Magnum Oil, 829 F.3d at 1380. Specifically, we are not persuaded that Kaiser’s teachings—which relate to combustion (Ex. 1014 at 43)—would have led one of ordinary skill in the art to the proposed modifications, which would allegedly “improve the smoothness (i.e., less harsh) of the aroma generated as the oil droplets evaporate in the surrounding airspace.” See Pet. 59 (emphasis added); White Pet. Decl. ¶ 251 (same); see PO Resp. 32 (“Rather, Dr. White merely describes the ability to achieve the effect as in the claimed patent, not why a [person of ordinary skill in the art] would look to the field of electrospray injection and combustion in mesoscale power-generation systems, using high-voltage electric fields to generate charged fuel droplets for controlled combustion in catalytic micro-combustors when considering atomization for scents.”). For these reasons, we determine, in light of the complete record, that Petitioner has not shown by a preponderance of the evidence that one of ordinary skill in the art at the time of the invention would have had reason to combine Goubet and Kaiser, as proposed. slip op. at 32

  Patent outcomesUS 10,583,449 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 10,583,449
• Aroma360, LLC v. Air Esscentials, Inc.All claims unpatentable
  PTAB · Oct 6, 2026 · IPR2025-00705 · APJ Eric C Jeschke · IPR · Final written decision

  Claims 7–9 and 11 are unpatentable as obvious over Goubet; proposed substitute claim 21 is denied as indefinite.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In the Response, Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner, but Patent Owner “reserves the right to address [the definition] should new issues materialize.” PO Resp. 5. Patent Owner did not address this issue in the Sur-reply. As noted in the Decision on Institution, Petitioner’s proposed definition appears generally consistent with the record, including the prior art. See Dec. Inst. 8 (citing In re GPAC Inc., 57 F.3d at 1579). We remove the phrase “at least” in both listed options, however, as that phrase adds ambiguity. Further, Patent Owner has not argued at trial that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would have understood either the challenged patent or the prior art. In the analysis below, we continue to apply the level of ordinary skill in the art adopted in the Decision on Institution, as proposed by Petitioner.” slip op. at 9

  • Expert testimonyPetitioner expert creditedDecided for patent owner

    “The record here does not support any sound basis to disregard the entirety of Dr. Micklow’s Declaration, as asserted in Petitioner’s overall argument. See Pet. Reply 1–2. Contrary to Petitioner’s argument, in the cited general discussion, Dr. Micklow does not indicate that he applied an incorrect understanding of a claim term. Cf. Cordis Corp. v. Bos. Sci. Corp., 658 F.3d 1347, 1357–58 (Fed. Cir. 2011) (disregarding testimony “based on an incorrect understanding of the claim construction”), cited at Pet. Reply 1; see also Pet. Reply 2 (arguing that “Dr. Micklow’s declaration is premised on understandings of claim scope that are inconsistent with the constructions advanced by both of the parties” (emphasis added)). Instead, we read the cited portions of Dr. Micklow’s testimony as clarifying that he was not involved in claim construction at all and that, as stated, he “made [his] opinions based on what [he] read in the patents.” Ex. 1046, 112:11–12; see also Pet. Reply 1 (citing Ex. 1046, 112:4–12, 113:13–20, 115:15–18). Next, we turn to each of the four specific claim terms that Petitioner highlights in its further arguments.” slip op. at 12

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

    “B. Claim Construction In inter partes reviews, the Board interprets claim language using the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. Neither Petitioner nor Patent Owner propose explicit constructions for any claim terms. Pet. 10–11; PO Resp. 5. Based on the complete record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “Florida Litigation a Joint Claim Construction statement that included stipulated claim constructions and disputed claim constructions for terms in the challenged patent as well as the ’449 patent and the ’918 patent. See Ex. 1018, Exhibit A (Stipulated Claim Constructions), Exhibit B (Disputed Claim Constructions). The parties stipulated to the construction of the terms “fluid dispersion” and “baffle” as recited in the challenged claim. See id., Exhibit A.10 10 When staying the Florida Litigation, the District Court cancelled the scheduled claim construction hearing. See ECF No. 67 (April 8, 2025) (granting joint motion to stay); ECF No. 68 (April 8, 2025) (cancelling the The stipulated construction of “fluid dispersion” merely restates the express definition of “fluid dispersion” from the challenged patent (although the definition is not cited or discussed in the parties’ filing). Compare Ex. 1018, Exhibit A, with Ex. 1001, 3:8–20. Similarly, the stipulated construction of “baffle” essentially parrots one sentence in the challenged patent (again, not cited or discussed in the parties’ filing). Compare Ex. 1018, Exhibit A, with Ex. 1001, 7:57–59. To the extent necessary, we determine that the complete record supports the parties’ stipulated constructions of “fluid dispersion” and “baffle,” and we apply those constructions below.” slip op. at 10

  Patent outcomesUS 9,527,094 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Nautilus
  Patents in suitUS 9,527,094
• Uatp IP LLC v. Slick Slide LLCSome claims unpatentable
  PTAB · 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 mixed
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · Nautilus
  Patents in suitUS 11,998,854
• Uatp IP LLC v. Slick Slide LLCInstituted
  PTAB · 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 · Graham
  Patents in suitUS 11,998,854
• Ecto World, LLC / Sv3, LLC v. Rai Strategic Holdings, Inc.Institution denied
  PTAB · 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 Phillips
  Patents in suitUS 11,925,202
• Maplebear Inc. D/B/A Instacart v. Consumeron, LLCAll claims unpatentable
  PTAB · Nov 20, 2024 · IPR2023-00865 · APJ Carl M Defranco · IPR · Final written decision

  Claims 1–19 are unpatentable under § 103 over Carr and Lauka, with additional references for the dependent-claim grounds, because the challenged claims lack priority support in the ’848 application.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Instacart submits that a person of ordinary skill in the art (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the field of electronic commerce” and that “[l]ack of work experience can be remedied by additional education, and vice versa.” Pet. 27 (citing Ex. 1003 ¶¶ 22–25). Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like” and that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” PO Resp. 7 (citing Ex. 2016 ¶¶ 19–23). But, as Consumeron’s expert acknowledges, Consumeron’s proposed definition “is not materially different” from Instacart’s. See Ex. 2016 ¶ 22. Accordingly, while we adopt the level of skill in the art as defined by Instacart our findings and analysis would be the same under Consumeron’s proposal.” slip op. at 7

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “8 Consumeron argues Dr. Houh’s testimony should be given little weight because he “admitted he did not evaluate what the ’848 Application reasonably conveys to a skilled artisan.” Resp. 26 (citing Ex. 2011, 74:8– 76:6, 83:4–84:1, 92:22–95:5). We disagree. Dr. Houh’s testimony indicates that he properly considered what the ’848 application reasonably conveys to a POSITA. See Ex. 1003 ¶¶ 52, 56, 58, 61, 65. The portions of his cross-examination testimony cited by Consumeron do not suggest otherwise. For the reasons explained below, we credit Dr. Houh’s testimony over the competing interpretations offered by Consumeron and Dr. Mitzenmacher. 9 The dissent criticizes the majority’s analysis as “overly narrow” and too focused on the preferred embodiment. See Dissent 7–8. We disagree. Our analysis considers the entirety of the ’848 application, including all of the passages cited by Consumeron and the dissent.” slip op. at 13

  • Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateNot entitled to earlier dateDecided for petitioner

    “But it does not follow that an agent encountering a stock-out would necessarily respond according to the specific steps recited in claims 1 and 14.10 For example, instead of sending information about a replacement product, the agent could travel to another location to look for the same product, or notify the customer that the desired product could not be found and terminate the transaction. Because the ’848 application only contemplates scenarios where a product can be located, it does not describe the agent’s response in the event the identified product cannot be located or is unavailable, much less reasonably convey possession of a method comprising the specific, responsive steps in claims 1 and 14.11” slip op. at 17

  • Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner

    “construed the terms “acquisition request” and “acquiring” in our final written decision in the related 1357 IPR to encompass “not only a request for a delivery agent to shop for and purchase goods, but also a request for the agent to pick up or obtain pre-paid goods.” See 1357 IPR, Paper 35 at 11. It is undisputed that the ’465 patent at issue here and the ’835 patent at issue in the 1357 IPR are related and share essentially identical specifications, figures, and claim terms. See Pet. Reply 16; PO Resp. 38 n.6. Thus, for the same reasons as in our final written decision in the related 1357 IPR, we likewise determine here that Instacart’s construction of “acquisition request” is the correct one. See SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1316 (Fed. Cir. 2015) (“Where multiple patents ‘derive from the same parent application and share many common terms, we must interpret the claims consistently across all asserted patents.’” (quoting NTP, Inc., v. Research in Motion, Ltd., 418 F.3d 1282, 1293 (Fed. Cir. 2005)). Consumeron provides no persuasive justification for us to depart from our prior reasoning in the related 1357 IPR.” slip op. at 23

  Patent outcomesUS 11,238,465 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips
  Patents in suitUS 11,238,465
• Hum Industrial Technology, Inc. v. Amsted Rail Company, Inc.All claims unpatentable
  PTAB · Aug 6, 2024 · IPR2023-00540 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 21–30, 36, and 37 are unpatentable as obvious; the Revised Motion to Amend is denied, and the Motion to Exclude is dismissed as moot.

  RulingsFinal written decision

  • Skill levelDecided for petitioner

    “G. Level of Ordinary Skill in the Art We consider the asserted grounds of unpatentability in view of the” slip op. at 10

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

    “B. Other Claim Terms The parties do not dispute the construction of any other claim terms and we find that no other terms require express construction to resolve the controversy between the parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., 200 F.3d at 803).” slip op. at 13

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

    “Accordingly, we find that Petitioner has shown sufficiently that a person of ordinary skill in the art would have been motivated to combine the teachings of Armitage and Barone in the manner suggested. ix. Summary as to Claim 1 We find that Petitioner has shown sufficiently that the combination accounts for the limitations of claim 1, and that a person of ordinary skill would have been motivated to combine Armitage and Barone with a reasonable expectation of success. Accordingly, we find that Petitioner has shown by a preponderance of the evidence that claim 1 would have been obvious over Armitage and Barone.” slip op. at 35

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “include selection of data along certain axes or combinations of axes measured by the accelerometer and ignoring unselected data, well-supported and entitled to substantial weight. See Ex. 1025 ¶¶ 4–6. We find Dr. Shamos’s testimony to the contrary, Ex. 2006 ¶¶ 40–42, inconsistent with the disclosure of the challenged patent, and entitled to little weight. Patent Owner argues that Armitage does not monitor all of the axes, like the ’915 patent. See Sur-reply 1–3. However, the ’915 patent, just like in Armitage, isolates the data from a single axis for further analysis. See Ex. 1001, 13:17–24. Thus, we do not find Patent Owner’s distinction to be persuasive. Accordingly, we find that Petitioner has shown that Armitage accounts for this limitation.” slip op. at 24

  Patent outcomesUS 10,137,915 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · Nautilus
  Patents in suitUS 10,137,915
• Dynaenergetics Europe GmbH / Dynaenergetics US, Inc. v. Qinetiq LimitedNo claims unpatentable
  PTAB · Apr 11, 2024 · PGR2023-00003 · APJ William A Capp · PGR · Final written decision

  The Board held claims 1–5 not unpatentable; Petitioner failed to prove its asserted §101, §102, §103, and §112 grounds, including indefiniteness and written-description challenges.

  RulingsFinal written decision

  • BurdenNot shown unpatentable

    “prevail, Petitioner bears the burden to demonstrate that the challenged claims are unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat'l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). The standard of proof is preponderance of the evidence. 35 U.S.C. § 326(e); 37 C.F.R. § 42.1(d). We have jurisdiction under 35 U.S.C. § 6.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A. Level of Ordinary Skill Petitioner’s expert, Mr. Serra testifies that he is familiar with the” slip op. at 45

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “process of claim 1. The first principal decision is the selection of a known liner design from a library that is made at the beginning of the design process. The second principal decision is made at the conclusion of the design process where a “final liner design” emerges after hole shapes produced by modified liners converge toward the desired hole shape. A person of ordinary skill in the art, having read claim 1 in context, would understand that the term “optimized” in the claim refers to the hole shape of the known liner design that is selected from among the known liner designs in the library during the selection step of the claim. A person of ordinary skill in the art would similarly understand that the design that is chosen in the initial selection process is “optimized” with respect to the population of known liner designs in the library as opposed to being “optimized” relative to liner designs produced during the later varying and modelling steps of the design process.” slip op. at 26

  • Disclosure Requirements (§112) › Definiteness (Nautilus)DefiniteNot shown unpatentable

    “Accordingly, Petitioner has not shown that claims 1–5 of the ’039” slip op. at 22

  Patent outcomesUS 11,215,039 not shown unpatentable
  Claim construction§ 101 eligibility§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Bilski · Phillips · Markman · Nautilus
  Patents in suitUS 11,215,039
• Maplebear Inc. D/B/A Instacart v. Consumeron, LLCInstituted
  PTAB · Nov 21, 2023 · IPR2023-00865 · APJ Carl M Defranco · IPR · Institution

  The Board instituted IPR of claims 1–19, finding a reasonable likelihood that claims 1 and 14 are obvious over Carr and Lauka.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “III. CONCLUSION For the above reasons, we determine that the information presented in the Petition demonstrates a reasonable likelihood that at least claims 1 and 14 of the ’465 patent are unpatentable as obvious over Carr and Lauka. And because Instacart demonstrates that at least one claim of the ’465 patent meets the threshold for institution, we institute an inter partes review of all claims as challenged in the Petition. See 37 C.F.R. § 42.108(a),(c); SAS, 138 S. Ct. at 1359–60. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–19 of the ’465 patent is instituted; and” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Consumeron responds that one skilled in the art would have been “someone with a background in electrical engineering, computer science, or the like” and that “industry experience can make up for a lack of technical training, and more education can make up for a lack of industry experience.” Prelim. Resp. 29. Consumeron’s definition appears to overlap significantly with Instacart’s definition. Accordingly, for purposes of institution, we adopt the level of skill in the art as articulated by Instacart.” slip op. at 5

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

    “product ordered by the customer is available and does not contemplate a scenario where the product is unavailable or otherwise describe the action to be taken if the product is unavailable. See Pet. 17–22. We agree, at least based on the preliminary record. In particular, with reference to Figures 2 and 3, the ’848 parent application describes a method where (1) a customer chooses “a store where a desired product is being sold” (step 105), (2) the customer selects a delivery agent and sends an “acquisition request” to the delivery agent (steps 108, 109, 110), and (3) “the selected delivery agent travels to the store location . . . and finds the desired product to be acquired” (step 113). Ex. 1011 ¶¶ 17, 20, 23 (emphasis added). “The delivery agent then communicates to the customer that the product has been identified, and the customer has the option of inspecting the product in real-time” (step 117). Id. ¶ 23 (emphasis added). “Next, the customer either approves or rejects acquisition of the inspected product” (steps 119, 120, 122). Id. ¶ 24 (emphasis added). That description in the ’848 parent application clearly presumes that the product ordered by the customer has been located and is available for inspection, which is at odds with the additional requirements of claims 1 and 14 of “failing to locate an identified product” and “determining that the identified product is not available.” Ex. 1001, 11:20 (claim 1), 12:30 (claim 14) (emphases added). To the extent Consumeron argues otherwise, we are not persuaded at this preliminary stage. According to Consumeron, the customer’s rejection of the product means that “the agent fails to locate a product that is satisfactory.” See Prelim Resp. 11. But nowhere do we discern that the ’848 parent application hinges the identity and availability of a product on whether it is satisfactory to the customer. That a product might not meet a customer’s satisfaction does not negate the description in the ’848 parent application that the agent locates and identifies the product in the first instance before giving the customer the option to inspect and reject the product. Indeed, because the customer placed the online order with a store advertising the product, the presumption is that the advertised product is available and satisfactory to the customer.8 And, while conceivably the purchase of a product cannot be fulfilled in the event the product is unavailable, it would seem to be improper hindsight to derive written description support by “[w]orking backward from a knowledge of the claims.” Novozymes A/S v. DuPont Nutrition Biosciences APS, 723 F.3d 1336, 1349 (Fed. Cir. 2013). “Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed. It extends only to that which is disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997). Thus, based on the preliminary record, the ’848 parent application does not provide sufficient written description for the terms noted above. As such, we find that Instacart demonstrates a reasonable likelihood it will prevail in showing that the asserted references are prior art to the challenged claims.” slip op. at 6

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

    “and Lauka. See Pet. 30–44, 47–49. We begin with Instacart’s challenge of method claim 1. Instacart provides a detailed mapping of how Carr satisfies all the recited limitations of claim 1, except limitation [1.0.3], for which Instacart points to Lauka. See id. at 35–44. In particular, Instacart cites the following evidence in support of its contentions that Carr and Lauka, when combined, teach or suggest each of the recited limitations of claim 1: Limitation 1.0.1—“A method for remote acquisition and delivery of goods through one or more agents of a service provider” (Pet. 35 (citing Ex. 1005 ¶¶ 36, 39, 43, 45, 92, Figs. 1, 3, 6;; Ex. 1001 ¶¶ 97–100)); Limitation 1.0.2—“each agent having a mobile agent system in communication with at least one remote server,” (Pet. 35–37 (citing Ex. 1005 ¶¶ 2, 6, 40–43, 53, Fig. 1 (annotated); Ex. 1003 ¶¶ 101–104)); Limitation 1.0.3—“with each mobile agent system including: a digital image capture device and a communication device, said method comprising:” (Pet. 37–38 (citing Ex. 1005 ¶¶ 74, 88, 94, 122; Ex. 1006, 3:19–28, 3:49–57, 4:10–21; Ex. 1003 ¶¶ 105– 109)); Limitation 1.1—“receiving, through the at least one remote server, a first acquisition request from a customer for a first set of one or more goods;” (Pet. 38 (citing Ex. 1005 ¶¶ 9, 60, 73, Fig. 1; Ex. 1003 ¶¶ 110–112)); Limitation 1.2—“contacting, through the communications device, the one or more agents;” (Pet. 38 (citing Ex. 1005 ¶¶ 57, 74; Ex. 1003 ¶¶ 113–115)); Limitation 1.3—“upon failing to locate an identified product of the set of one or more goods, electronically transmitting information on a replacement product for the identified product of the set of one or more goods to the customer using the digital image capture device of the agent, including:” (Pet. 38–40 (citing Ex. 1005 ¶¶ 90, 95, 96, 105, 107, ; Ex. 1003 ¶¶ 116– 119)); Limitation 1.4—“obtaining a bar or QR code of the replacement product;” (Pet. 40 (citing Ex. 1005 ¶¶ 95, 107; Ex. 1003 ¶¶ 120– 122)); Limitation 1.5—“determining the information from the bar or QR code, wherein the information includes at least one image of the replacement product; and” (Pet. 40–42 (citing Ex. 1005 ¶¶ 95–96, 116; Ex. 1003 ¶¶ 123–127)); Limitation 1.6—“sending the information for the customer to approve the purchase of the replacement product based on the information determined from the bar or QR code; and” (Pet. 42– 43 (citing Ex. 1005 ¶¶ 51, 96–99, Fig. 12; Ex. 1003 ¶¶ 128– 130)); and Limitation 1.7—“upon receiving approval of the purchase from the customer, acquiring the replacement product, via the agent.” (Pet. 43–44 (citing Ex. 1005 ¶¶ 99, 101; Ex. 1003 ¶¶ 131–132)); Instacart also provides a reason why one skilled in the art would have combined the teachings of Carr and Lauka with a reasonable expectation of success. See Pet. 31–34 (citing Ex. 1003 ¶¶ 86–96); see also id. at 37 (“In view of the teachings of Lauka, a POSITA would have recognized that it was obvious to implement the UPC scanner functionality of Carr’s handheld device using an ‘imaging device’ such as that taught by Lauka, which specifies that the ‘imaging device 206 can comprise a video or still camera’ and ‘can be used to capture images.’ Ex.1006, 3:49-57; Ex.1003, ¶¶105- 107.”).” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosure
  Patents in suitUS 11,238,465
• Popsockets LLC v. Flygrip, Inc.All claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00937 · APJ Hyun J Jung · IPR · Final written decision

  Claims 2 and 8 are unpatentable under § 103 over the ’476 Publication and Hobbs because that combination teaches all limitations and has a supported motivation to combine.

  RulingsFinal written decision

  • Strike new argumentDenied

    “evidence with its Sur-reply, “other than deposition transcripts of the cross-examination of any reply witness,” but Petitioner does not explain adequately why these exhibits constitute “new evidence” to Petitioner, when they are, or should have been, the bases of its analysis regarding the asserted priority date of the challenged claims. See Pet. 17–41 (analyzing the asserted priority documents, the chain of priority to the Provisional Application, and the prosecution history of the ’024 patent). Some of the exhibits, such as Exhibits 2027 and 2028 (the as-filed grandparent and parent applications), should have already been included in the record. Patent Owner also violates our Rule 42.6(d), which states that “[a] document already in the record of the proceeding must not be filed again, not even as an exhibit or an appendix, without express Board authorization.” If we granted Petitioner’s motion, then Patent Owner’s citations to some documents already of record, and filed by Petitioner, would become meaningless and would deprive us of the ability to analyze documents already properly filed in view of the parties’ arguments. For the reasons above and on the facts of this proceeding, Petitioner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We, therefore, deny Petitioner’s Motion to Strike.” slip op. at 9

  • ExcludeMotion to exclude, deniedDenied

    “1012–1019, along with others, for the declaration filed with the Petition. Ex. 1025 ¶ 5. These exhibits show the basis for the testimony in the declaration, and an expert may rely on hearsay in forming an opinion under Federal Rules of Evidence 703. To the extent they are hearsay, we would limit their purpose to showing the basis for testimony. Also, dictionary definitions are routinely considered extrinsic evidence that may shed light on the plain and ordinary meaning of a claim term. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1318 (Fed. Cir. 2005) (en banc) (“Within the class of extrinsic evidence, the court has observed that dictionaries . . . can be useful in claim construction.”) (citation omitted). For the reasons explained by Petitioner (Paper 24, 6), the definitions were not offered for the truth of the matter asserted, and, thus, we do not consider these exhibits hearsay. For the reasons above, Patent Owner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). We also do not rely on any of Exhibits 1004–1008 and 1012– 1019 to reach our determination. In view of the above, Patent Owner’s Motion to Exclude Exhibits 1004–1008 and 1012–1019 is denied.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had “a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design” (Pet. 11) and Patent Owner contends that one of ordinary skill in the art would have had a “bachelor’s degree in a technical field and at least 1 year of experience with product development” (PO Resp. 14), the parties substantially agree with respect to these aspects of their proposals for the level of ordinary skill. Petitioner contends, in the alternative, that the ordinarily skilled artisan would have had “five years or more of experience in mechanical product design,” but Patent Owner alternatively contends that the ordinarily skilled artisan has “a college degree in a non-technical field and at least 3 years of experience in product development.” Pet. 11; PO Resp. 14 requires more years of experience than Patent Owner’s alternate person of ordinary skill in the art. See Pet. 11; PO Resp. 14. In view of the above, we see no reason to disturb our preliminary determination regarding the level of ordinary skill in the art. Thus, we maintain and reaffirm that one of ordinary skill in the art “would have had either (1) five years or more of experience in mechanical product design, or (2) a bachelor’s degree in Mechanical Engineering and one year or more of experience in mechanical product design.” Pet. 11 (citing Ex. 1025 ¶¶ 25– 27). Based on the full record and for the reasons below, even if we adopted Patent Owner’s proposed level of ordinary skill, our determination would be the same.” slip op. at 13

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

    “We agree with Petitioner that, in this proceeding, “conical” does not require an express interpretation to resolve the parties’ disputes. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In the related proceeding, we determined that one of ordinary skill in the art would understand that the term “conical” does not exclude cones with a pyramidal shape. PopSockets LLC v. Flygrip, Inc., IPR2022-00938, Paper 29 at 19 (PTAB Oct. 30, 2023). To the extent any issue in this proceeding would implicate the interpretation of “conical,” we apply the same determination.” slip op. at 15

  Patent outcomesUS 10,800,024 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 10,800,024

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.