- Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Mar 26, 2024 · IPR2023-01460 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1, 10, and 11 are obvious over Dua, Hong, and Lockwood.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“lululemon proposes, and Nike does not dispute, that one skilled in the art would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear.” Pet. 12–13 (citing Ex. 1002 ¶¶ 43–45); see also Prelim. Resp. 9 (“Nike applies lululemon’s proposed level of skill in the art.”). lululemon’s proposed definition is consistent with the problems and solutions in the ’484 patent and prior art of record. Accordingly, for purposes of institution, we adopt lululemon’s definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“lululemon asserts that “the plain and unambiguous language of the claim[s] requires that the flat-knitted element having the claimed features must be formed from a flat-knitting process.” Pet. 13–14. Nike agrees with lululemon’s construction of the claims, i.e., “that the flat-knitted element, including the ‘domed, three dimensional structure,’ ‘must be formed from a flat-knitting process.’” Prelim. Resp. 9–10 (quoting Petition 13–14). In doing so, Nike explains that the claims do not cover “a flat knitted element with a three-dimensional structure formed only after the knitting process is complete.” Id. at 10. Thus, consistent with the parties’ reasoning, we construe the claims to require that the “central portion having a domed, three-dimensional structure” be formed during the flat-knitting process, and not afterward.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Based on the current record, we credit the testimony of lululemon’s expert over that of Nike’s expert. lululemon’s expert points to Hong’s explicit disclosure that “knitting directly the 3D shapes can overcome fabric waste and diminish the labour cost inherent to the use of two-dimensional fabrics.” Ex. 1002 ¶ 91 (citing Ex. 1005, 5) (emphasis added). That disclosure clearly teaches or suggests that the 3D shape is accomplished as part of Hong’s flat-knitting process, and not as part of a post-knitting step. Hong makes this clear not only by its title, “The development of 3D shaped knitted fabrics . . . on a flat knitting machine,” but also throughout its description of the flat-knitting process: - “The use of a new electronic flat knitting machine (Shima Seiki SES 122FF) for producing three-dimensional shaped fabrics for technical purposes is described.” Ex. 1005, Abstract (emphasis added). - “This work describes the use of the new flat knitting machines to knit 3D structures.” Id. at 1 (emphasis added). - “It is not difficult to knit a spherical form in the SES 122FF flat knitting machine.” Id. at 4 (emphasis added). - “By exploiting the capacity of this [flat-knitting] machine, it is possible to knit more types of three-dimensional knitted fabrics.” Id. at 6 (emphasis added). Moreover, we find unpersuasive the testimony of Nike’s expert that Hong’s use of a 2D pattern in the knitting process necessarily means that the article being knitted is a 2D article as opposed to a 3D article. See Ex. 2002 ¶¶ 43–45. To the extent Hong uses a 2D pattern, it appears to be merely to establish the number of needles and courses to be used in the flat-knitting process that produces the actual 3D article. See, e.g., Ex. 1005, 4 (“it is necessary to start by transferring the three-dimensional concept to a two-dimensional pattern, . . . and then establishing the relation between the number of operating needles and the number of knitted courses.”). Nowhere does Hong appear to mention using the 2D pattern to make a 2D article. Rather, as discussed above, Hong is devoted entirely to describing a flat knitting machine that produces three-dimensional shaped fabric articles. We also find unpersuasive the testimony of Nike’s expert that “[t]he pattern shown in [Hong’s] Figure 5(2) . . . is not sufficient to produce the fully formed shape shown in Figure 5(3),” and, thus, one skilled in the art “would not know how to close the tubes shown in Figure 5(3).” Ex. 2002 ¶¶ 46–47. Hong explicitly states that “[d]uring knitting, the two smaller tubes are separately knitted with two cam systems.” Ex. 1005, 4. That disclosure, at this stage, persuades us that Hong teaches or suggests how its flat-knitting process closes the tubular knitted fabrics depicted in the figures. The parties are free to explore this issue further at trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In sum, based on the preliminary record, lululemon sufficiently demonstrates that the asserted Dua-Hong-Lockwood combination teaches or suggests a “domed, three-dimensional structure” that is formed during the “flat knitting process,” as required by claims 1 and 11. Nike does not dispute lululemon’s showing as to the other elements of claims 1 and 11, nor does Nike dispute lululemon’s reason to combine the asserted references. See Prelim. Resp. 26–30. After reviewing lululemon’s showing, we conclude that the record evidence demonstrates a reasonable likelihood that claims 1 and 11 are unpatentable as obvious over the combined teachings of Dua, Hong, and Lockwood. Thus, lululemon meets the threshold for institution.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,730,484 - PTAB · Feb 23, 2024 · IPR2023-00960 · APJ Kevin C Trock · IPR · Institution
Instituted IPR of claims 1–16 and 18–30 on both §103 grounds because Petitioner showed a reasonable likelihood of prevailing on claim 1 over Shraga and Togami.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“The problem with the parties’ briefing on the trial date issue is that it appears that in the District Court: 1) a stay (Ex. 3006) has been issued in the Fujitsu case (the “pending” May trial date (See Ex. 1032)); 2) NextGen Innovations has filed another patent infringement suit against Nokia (Nokia II) (Paper 17, 2); and 3) Nokia has jointly moved (Ex. 3007) to deconsolidate Nokia I from the Fujitsu case and to consolidate Nokia I with Nokia II, which the District Court has granted (Ex. 3008). Based upon our review of these documents, none of which were provided to the Board by the parties, it appears that there no longer is a pending District Court trial date in May 2004 involving Nokia. Given the lack of notice of these developments by the parties to the Board on an issue that is material to the Board’s Fintiv analysis and the decision in this case, the Board no longer has confidence that the parties have provided the Board with accurate, timely factual information that the Board needs in order to render a fair, just determination of the Fintiv issue and this case. Accordingly, pursuant to 37 C.F.R § 42.11 (d)(3), the parties are Ordered to Show Cause why they should not be sanctioned under 37 C.F.R. § 42.12 (a) (2), (3) and to file briefs addressing this issue, not to exceed 10 pages, within 10 days of this Decision. G.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Section 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art (“POSITA”) as a person having at least “(1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with optical data communications or a comparable field of work.” Pet. 15 (citing Ex. 1003 ¶¶ 30–31). Petitioner’s declarant, Dr. Paul Prucnal, testifies to substantially the same level of ordinary skill in the art (Ex. 1003 ¶ 30) but adds that a person of ordinary skill in the art “would have been familiar with MSA optical modules, including SFP, XFP, and XENPAK, . . . networking protocols such as Ethernet, and the technologies that enable it, as well as the miniaturization of those technologies into what are commonly known as Small Form-Factor Pluggable (SFP) module” (Ex. 1003 ¶ 31). In its Preliminary Response, Patent Owner does not dispute the Petitioner’s description of a person of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’754 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Prucnal. See Ex. 1003 ¶¶ 30–31. We agree Petitioner’s assessment of a person of ordinary skill for purposes of this Decision, with the exception of the qualifier “at least,” to keep the description from being vague and extending to a level reflecting that of an expert. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,238,754 - Alivecor, Inc. v. Apple Inc.InstitutedPTAB · Jan 9, 2024 · IPR2023-00950 · APJ Robert L Kinder · IPR · Institution
Instituted inter partes review of claims 1–22 on all petitioned grounds; the Board found a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Markel – to accomplish Markel’s goal of a concealed electrode – is a reasonably sufficient basis or reason to combine the references. On this record, Petitioner demonstrates that a person of ordinary skill in the art would have reason to apply Nissilä’s electrode structure having a distinct exterior surface to the teachings of Markel because of the similarities in electrode structure and to achieve a stated goal of Markel. Nissilä’s electrode structure uses an external layer of “metal, electrically conductive plastic or a similar conductive material.” Ex. 1006, 5:32–37; Ex. 1003 ¶ 355 (“both references disclose an intermediate conductive material made of conductive plastic”). Petitioner has shown this structure could be adopted by Markel’s “hidden” electrode having a main body portion formed from conductive plastic and a person having ordinary skill in the art would be motivated to do so in order to achieve Markel’s stated goal of an electrode that is substantially concealed (or hidden) from a user. See Ex. 1003 ¶ 354. Even if a goal of Nissilä’s device is for the user to be aware of the electrodes to place them on their chest, as Patent Owner alleges, Petitioner shows that Markel’s concealment objective could be suitably achieved by use of Nissilä’s structure, even if Nissilä does not share a similar concealment objective. Id. ¶ 355 (“Markel’s hidden electrode is desirable because it increases aesthetics of the device while protecting the electrode from bumps or other damage.”). Based on the record before us, Petitioner has also shown sufficiently that a POSITA would be motivated to combine Markel and Nissilä to satisfy limitations [1.c.i], [1.c.ii], and [1.c.iii].” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ recitations are similar in scope. Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in education. Petitioner’s definition is consistent with both the scope of the claimed invention and 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 Petitioner’s definition of the person of ordinary skill in the art. We note, however, that our decision would be the same adopting either proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for petitioner
“With respect to the preamble “[a]n electronic device for detecting a user’s cardiac signal,” as recited in elements [1.pre] and [15.pre], Petitioner submits that the language provides antecedent basis that defines language in the claim body. For example, [1.pre] and [15.pre] each recite “a user’s cardiac signal,” which is referred back to later in the claim bodies as “the user’s cardiac signal” . . . The phrase “a user” in [1.pre] and [15.pre] is referred back to in the claim bodies as part of “the user’s skin’s contact” . . . As another example, [15.pre] recites “An electronic device,” which is referred back to later in the claim body as “the electronic device” . . . Consequently, a person of ordinary skill in the art would have understood that the language “An electronic device for detecting a user’s cardiac signal” in [1.pre] and [15.pre] is limiting and should receive its plain and ordinary meaning. Pet. 5 (citing Ex. 1003 ¶ 77). We find Petitioner’s contentions with respect to the preamble of claims 1 and 15 persuasive. Petitioner has shown that the claim preamble, when read in the context of the entire claim, recites limitations of the claim, and is necessary to give life, meaning, and vitality to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - PTAB · Nov 6, 2023 · IPR2023-00643 · APJ Matthew S Meyers · IPR · Institution
The Board instituted review of claims 1–7 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Willner and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We are not persuaded by Patent Owner’s arguments. In our previous decision in the 1197 IPR, we exercised our discretion to deny institution under § 314(a) based on our consideration of the Fintiv factors. 1197 IPR, Paper 13, 23. The decision in the 1197 IPR noted that although “there does appear to be some strength to the merits of Petitioner’s challenges,” this determination was based particularly on the fact that “the ’393 patent’s claims share some of the same claim limitations addressed by the Board previously in the ’119 patent’s IPRs.” See id. at 20–21. Therefore, we did not fully address the substantive merits of any of Petitioner’s grounds of unpatentability. 10 We also are not persuaded that the changes between the Petition in the 1197 IPR and the present Petition demonstrates “ample evidence” of road-mapping. Instead, we agree with Petitioner that “[t]hese changes are not road-mapping because they are unrelated to the record in the earlier [1197] IPR.” Pet. Reply 2–3. And, as we explained above, our earlier decision did not fully address the substantive merits of any of Petitioner’s grounds of unpatentability, nor did we address the substantive merits of any of Patent Owner’s counterarguments. See General Plastic, Paper 19, 17 (warning against allowing “petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap.”) (emphasis added); see also id. at fn.14 (citing Butamax Advanced Biofuels LLC v. Gevo, IPR2014-00581, Paper 8, 12–13 (PTAB Oct. 14, 2014) (criticizing petitioner’s use of “our prior decision as a roadmap”) (emphasis added). In addition, Patent Owner acknowledges that the present Petition challenges “the same claims 1–7 based on identical prior art references and substantially similar grounds.” Prelim. Resp. 1 (emphasis omitted). Thus, we find Patent Owner’s “road-mapping” concerns to be minimized based on the similarity of the unpatentability challenges between those raised in the 1197 IPR Petition and the present Petition. For these reasons, we agree with Petitioner that factors 1–3 weigh in favor of institution. See Code200, Paper 18 at 5 (“Where the first-filed petition under factor 1 was discretionarily denied or otherwise was not evaluated on the merits, factors 1−3 only weigh in favor of discretionary denial when there are ‘road-mapping’ concerns under factor 3 or other concerns under factor 2.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 17–27; see Fintiv, Paper 11, 12 (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue the same invalidity grounds against the challenged claims of the ’393 patent in the parallel litigation [or] any 14 grounds that could have been reasonably raised in this petition” (Pet. 85)7, we do not discretionarily deny institution under Fintiv.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“At the outset, we note that the exercise of discretion in Advanced Bionics did not turn on mere citation in an IDS of the art asserted in the petition. Rather, the Board’s exercise of discretion in that case turned on the Examiner’s application and discussion of that art. Specifically, the Board 18 found in Advanced Bionics that the asserted art, Zimmerling, “is the same art previously presented to the Office” because “the Examiner rejected [the claims] as anticipated by Zimmerling” and “Zimmerling was discussed during prosecution.” Advanced Bionics, Paper 6, 13. In other words, the criteria adopted by the Board for denying the petition in Advanced Bionics included not only the fact that the art was made of record, but also the fact that it was applied and discussed during prosecution. Anything less disregards the express reasoning behind the Board’s exercise of discretion in that case. Here, Patent Owner has not shown that any Petitioner’s cited art (i.e., Willner, Park, Schoenith, Kessler, Hirschman) was applied by the Examiner or discussed during prosecution. Instead, during examination of the ’393 patent, the record shows that the Examiner allowed the pending claims over “Wu (2006/0252537) in view of Willis (2014/0274394).” Ex. 1009, 26–29. In doing so, the Examiner stated that a “[g]ame controller with structural bridge is well known in the art” (id. at 27), but found that “Wu in view of Willis is silent on” the subject matter claim 1. See id. at 27–28 (quoting the subject matter of independent claim 1 in its entirety). However, on this record, Petitioner demonstrates that the Examiner overlooked the combination of Willner and Park’s teachings of the limitations that were the basis for allowing the challenged claims. Id. As discussed in more detail below, Petitioner’s evidence demonstrates a reasonable likelihood that at least independent claim 1 of the ’393 patent is unpatentable over the combination of Willner and Park. See Pet. 19–41 (citing Exs. 1002, 1003, 1004).” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Petitioner has shown sufficiently that the combination of Willner and Park teaches all limitations of claim 1. Petitioner also has put forth sufficient reasons for combining these references with a reasonable expectation of success. Pet. 20–21 (citing Ex. 1002 ¶¶ 133–139, 150–157; Ex. 1003 ¶ 50; Ex. 1004 ¶¶ 39–46). For example, Petitioner asserts that “Park’s adjustable bridge ‘would greatly expand the number of devices that [Willner’s] product would support, leading to the predictable result of having a larger base of customers.’” Id. at 20 (citing Ex. 1011, 19; Ex. 1018, 185 Ex. 1003 ¶ 138). Based on the present record, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of claim 1 would have been obvious over the combination of Willner and Park.” slip op. at 37
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,391,393 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Oct 16, 2023 · IPR2023-00745 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–4 and 8–22 for all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties’ recitations are similar in scope. Patent Owner’s proposed level of ordinary skill in the art is somewhat broader in both education and proposed work experience. This proposed work experience is somewhat vague and potentially outside the scope of the claimed invention. For example, the requirement that the person of ordinary skill in the art have experience with the “capture and processing of data or information, including but not limited to physiological information,” would seemingly encompass data processing areas that do not relate to the scope of the claimed invention. Petitioner’s definition is consistent with both the scope of the claimed invention and 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 Petitioner’s definition of the person of ordinary skill in the art. We note, however, that our decision would be the same adopting either proposed level of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for the terms “embedded” (recited in claims 1, 9, and 15), “lead” (recited in the independent claims), “pad” (recited in claim 1 and some of its dependent claims), and “pocket” (recited in dependent claim 8). Pet. 7–12. Patent Owner, at this time, “discerns no need to construe explicitly any claim language because doing so would have no effect on analyses of Masimo’s asserted grounds, and would not assist in resolving the present controversy between the parties.” Prelim. Resp. 6.” slip op. at 13
- BurdenOther
“We agree with Patent Owner that Petitioner’s citation to Mills (Ex. 1006, 5:18–19), which is “[y]et another VLSI chip . . . SRAM chip 38,” does not necessarily disclose a processor standing alone. Petitioner’s position, however, does not rely just on SRAM chip 38, but instead a VLSI comprising other circuit components, including a distinct processor. See Pet. 31 (citing Ex. 1006, 2:3–6). Petitioner first cites to Mills column 2 to support its position that “housing 12 comprises a very-large scale integrated (VLSI) circuit chip that includes an ‘ECG signal and abnormal event detection circuitry, analog-to-digital (AD) and digital-to-analog (DA) conversion circuitry, memory and processor circuitry.’” Id. (quoting Ex. 1006, 2:3–6). Petitioner next relies on Mills’ disclosure that “microprocessor and associated electronics, including firmware executed thereby, employs a digital bandpass filter reliably to detect ECG signals.” Id. (quoting Ex. 1006, 2:20–23). Petitioner next cites to Mills (Ex. 1006, 4:55–5:3), which describes “circuitry shown schematically in FIG.4, including on [PCB 50’s] bottom side a microcontroller (with integral ROM) chip 42.” Pet. 31. It is unclear from this citation whether Petitioner is relying on microcontroller 42 (on PCB 50’s bottom side) as a processor because Petitioner then quotes Mills’ discussion of SRAM chip 38, which states “that the VLSI is surface-mounted on the top side of printed circuit board (PCB) 50.” Pet. 31 (quoting Ex. 1006, 5:18–19). We understand Petitioner’s position as relying on the “very-large scale integrated (VLSI) circuit chip that includes” several components, including “memory and processor circuitry.” Pet. 31 (quoting Ex. 1006, 2:3–6). Notably, this section of the specification is labeled, “Background and Summary of the Invention,” and the paragraph describing this VLSI circuit chip is “summarizing the invention.” Ex. 1006, 1:7–8, 1:60. This VLSI circuit chip does not appear to us to be the same as VLSI SRAM chip 38, which is characterized by Mills as “[y]et another VLSI chip.” Ex. 1006, 5:18. Mr. Oslan testifies that “the VLSI is a processor coupled to the heart sensor (first and second electrodes 14 and 16, respectively) and is configured to receive and process the detected cardiac signal.” Ex. 1003 ¶ 65. Mr. Oslan relies on Mills’ disclosure of a microprocessor and associated electronics, including firmware employing a digital bandpass filter for detecting ECG signals. Id. (citing Ex. 1006, 2:20–23). This cited sentence of Mills further discloses characterizing ECG signals (processing) based on QRS complexes or pacer and defibrillator pulses, but ignoring noise and motion artifacts. Ex. 1006, 2:20–25. Patent Owner makes additional arguments, such as alleging that the” slip op. at 28
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,076,257 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Oct 5, 2023 · IPR2023-00734 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Masimo would prevail on claims 1, 7, and 14 as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’491 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’491 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“We discern no material difference between the parties’ definitions. Petitioner’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 Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 21
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for certain terms concerning the cover material—“a cover formed from a dielectric material,” “a transparent substrate,” and “a cover comprising a non-conductive material”—and window terms such as “defines at least one window” and “window defined.” Pet. 7–10. Patent Owner states: “While not agreeing with Petitioner’s proposed constructions (or lack thereof) for certain claim terms . . . , solely for purposes of this Preliminary Response, Patent Owner does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 24. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,942,491 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Sep 25, 2023 · IPR2023-00634 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds after finding a reasonable likelihood that claims 1, 9, and 15 are obvious over Kotanagi and Honda.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’783 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’783 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We discern no material difference between the parties’ definitions. Petitioner’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 Petitioner’s definition of the person of ordinary skill in the art. We note, however, that were we to adopt Patent Owner’s assessment, the outcome of this Decision would be the same.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “a ceramic cover,” “biosensor module,” and “ceramic cover defines a [first/second] opening to [transmit/receive] the light.” Pet. 13–16 (alterations in original). Patent Owner states: “While not agreeing with Petitioner’s proposed constructions (or lack thereof) for certain claim terms (see Petition, 13–16), solely for purposes of this Preliminary Response, Patent Owner does not object to the constructions proposed by Petitioner at this time.” Prelim. Resp. 17. On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,627,783 - Masimo Corporation v. Apple Inc.InstitutedPTAB · Sep 20, 2023 · IPR2023-00664 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–24 and all asserted grounds, finding a reasonable likelihood of success at least for claims 1, 9, and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review, under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the Director.”). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A POSITA [person of ordinary skill in the art] of the ’352 patent would have had at least a bachelor’s degree in a discipline related to human-computer interaction, such as Human Factors, Computer Science, Computer Engineering, or an equivalent discipline, and at least two years of experience working with touchscreen user interfaces. More education could substitute for less work experience, and vice-versa. Pet. 12 (citing Ex. 1003 ¶ 34). Petitioner’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 Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Although we see no error in Petitioner’s proposed claim constructions, we do not believe it necessary to adopt them because the surrounding claim language sufficiently defines the scope for each of the respective “user interface” limitations.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Petitioner next addresses the claim term “input that is directed to a portion of” a user interface. Pet. 24–25. Petitioner explains that “[n]umerous claims recite navigational actions invoked by ‘input that is directed to a portion of’ the current screen,” such that “the input is directed to part of the screen, rather than a physical button, keyboard, or other input device external to the screen.” Pet. 24. According to Petitioner, “[t]he claim language does not require the input to be directed to a predefined location on the screen, such as a location marked by a virtual home button or other indicator.” Id. (citing Ex. 1003 ¶ 53). Referring to Figure 5GC of the Specification, Petitioner notes that “a user navigates from a wake screen to a home screen by an upward swipe ‘at location that corresponds to home affordance 552, as indicated by focus selector 5244.’” Id. (quoting Ex. 1001, 53:4–10). Petitioner next relies on other embodiments, which describe the swipe gestures being directed to a part of the screen without regard to a predefined location. Pet. 25 (citing Ex. 1001, 79:64–80:22) Considering Petitioner’s supporting arguments and evidence, and based on the limited record before us, we construe “input is directed to a portion of” the screen to mean the user input is directed to part of the screen (but not necessarily at a predefined location) rather than through another physical input device external to the screen. See id. (citing Ex. 1003 ¶ 54).” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,106,352 - PTAB · Sep 1, 2023 · IPR2023-00658 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on the sole claim and all petitioned grounds, finding a reasonable likelihood of unpatentability, including anticipation and obviousness over Iannaccone.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of the challenged claim. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claim.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not, on this record, point to specific evidence of copying or quality. Id. And, Patent Owner’s contention that the claimed design resulted from “substantial and sophisticated design expertise,” is similarly unsupported by corroborating evidence at this point. We have before us at this point in the proceeding mainly the testimony of Petitioner’s declarant, Mr. Hatch, who testifies that without a bachelor’s degree in furniture design, “a little more than two years of practical design experience . . . is appropriate given the relatively simple nature of the design at issue, which involves little more than two boards forming a tabletop.” Ex. 1002 ¶¶ 34–35. Based on the present record, we adopt the Petitioner’s articulation of a designer of ordinary skill, which is supported by the testimony of Mr. Hatch. As of yet, Patent Owner has not provided any evidence to rebut Petitioner’s or Mr. Hatch’s assertions. We also note that, under the present record, our analysis of this case would be the same under either party’s definition. The parties are free to address this issue at trial if they so wish.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“At this stage of the proceeding, we agree with Patent Owner that a verbal construction is not necessary to describe the overall ornamental nature of the ’012 design as Figures 1–23 clearly show the claimed table top and that the best description of the ornamental features of the ’012 design comes from the drawings themselves. For example, Figures 1–23 clearly depict a table top having two rectangular portions/planks having different widths.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“analysis discussed above, we recognize in the test for design patent obviousness articulated in Durling and Rosen that a primary reference must be found, “the design characteristics of which are basically the same as the claimed design.” Durling, 101 F.3d at 103 (quoting Rosen, 673 F.2d at 391). And, that we must both “(1) discern the correct visual impression created by the patented design as a whole; and (2) determine whether there is a single reference that creates ‘basically the same’ visual impression.” High Point Design, 730 F.3d 1301, 1311–12 (Fed. Cir. 2013) (quoting Durling, 101 F.3d at 103). As to part (1), in our claim construction we have determined that the correct visual impression created by the patent design as a whole is “that the solid lines illustrating the design in Figures 1–23 of the ’012 patent provide an accurate representation and understanding of the claimed table top and that a verbal construction is not necessary.” Section II.D.; see also In re Borden, 90 F.3d 1570, 1574 (Fed. Cir. 1996) (The obviousness “inquiry focuses on the visual impression of the claimed design as a whole and not on selected individual features.”). That said, we recognize that some description of the claimed design may be helpful.” slip op. at 31
Claim construction§ 102 anticipation§ 103 obviousness - PTAB · Jul 10, 2023 · IPR2023-00438 · APJ Josiah C Cocks · IPR · Institution
The Board instituted inter partes review of claims 1–5, 7, 9, 12–14, and 17–19 on all petitioned grounds, finding a reasonable likelihood of success based on Amano and related combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“including Ceci, applied by the Petitioner as a part of its proposed grounds are cumulative of subject matter previously considered by the Examiner, we do not find them availing. In that regard, Patent Owner attempts to equate some selected teachings of prior art that previously were presented during prosecution of the ’072 application (e.g., Lubell, Henry,14 and Fabrizio15) with new prior art relied on in the Petition, and proceeds to argue that the new prior art teachings are inadequate to account for certain features of the challenged claims. See Prelim. Resp. 18–29. In effect, Patent Owner’s arguments, although presented under the guise of a request for discretionary denial, essentially amount to direct challenges to the merits of Petitioner’s proposed grounds. That is not a scenario that warrants dispositive exercise of discretion, which would foreclose actual evaluation of the merits of the proposed grounds. Rather, in our view, the situation suggests that the appropriate course of conduct is to consider whether Petitioner’s proposed grounds are persuasive, or not, in conveying a reasonable likelihood that the challenged claims are unpatentable. Moreover, as discussed below, we conclude that, with respect to at least some of the proposed grounds, including grounds based on prior art that was not presented during prosecution of the ’072 application (e.g., Amano), Petitioner actually has shown a reasonable likelihood of success that the challenged claims are” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the proposed prior art. We analyze the asserted grounds with the above-noted principles in mind.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A Person of Ordinary Skill in the art (“POSITA”) for the technology of the ’413 patent would have had (1) a bachelor’s degree in engineering, computer science, industrial design, biomechanics, or a related field, and (2) at least two years of experience researching, developing, designing, and/or testing fitness or physiological sensors, wearable devices, physiological or biomechanical devices, remotely-controlled systems or interfaces, network-based applications and/or equipment, or the equivalent experience or education. Pet. 18 (citing Ex. 1009 ¶ 41). Patent Owner indicates that “[f]or purposes of this Preliminary Response only, Nike applies lululemon’s proposed level of skill in the art.” Prelim. Resp. 14. For purposes of this Decision, we adopt Petitioner’s proposal of the level of ordinary skill in the art as reasonable and consistent with the prior art. See also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose claim construction for any term. See Pet. 17. Patent Owner also indicates that no claim construction is necessary at this time. Prelim. Resp. 15. We conclude that, for purposes of deciding whether to institute an inter partes review, it is unnecessary to make explicit the meaning of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. v. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“W]e need only construe 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 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,620,413
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.