- Catalyst Orthoscience Inc. v. Shoulder Innovations, Inc.Institution deniedPTAB · Apr 24, 2025 · PGR2025-00001 · APJ James A Tartal · PGR · Institution
The Board denied institution of post-grant review of claims 1–22, exercising its discretion under § 324(a) based on the Fintiv factors.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv 5−6. We consider these factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“parties, we do not find the merits to be particularly strong on the current record. For example, limitation [1-4] recites, in part, “a locking nut having . . . an external thread on an outside surface of the locking nut.” Ex. 1001, 9:46–47. In alleging obviousness based in part on Orphanos, Petitioner equates the claimed “locking nut” to Orphanos’s collet 230 in a first embodiment of Orphanos, or Orphanos’s collet portion 1052 in a second embodiment of Orphanos. Pet. 37–38. Petitioner acknowledges that the collet and collet portion do not have external threads, but rather are designed to have a snap-fit engagement with the inner sidewall of the baseplate’s central throughbore. Id. at 38. Petitioner argues that modifying the collet and collet portion to have external threads would have been obvious to the skilled artisan in view of Orphanos’s teachings and the knowledge of a person having ordinary skill in the art. Pet. 38–42 (arguing, inter alia, that it would have been “a substitution of a known part for a known problem” and “obvious as a matter of design choice”). Petitioner does not allege that replacing the snap-fit coupling with external threads would either: (1) result in any advantages; or (2) preserve any of Orphanos’s stated benefits of its snap-fit arrangement. See Pet. 34–37. That Petitioner describes no advantages to making its proposed modification potentially undermines Petitioner’s case that the skilled artisan would have done so. Cf. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”).” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITANot reached
“Petitioner’s arguments regarding the central post and locking nut include an implicit claim construction argument that these components need not be separate structures. Pet. 74, 76–81. Patent Owner, on the other hand, would have us interpret the claim to require that they be separate structures. Patent Owner raises credible evidence to support its theory. Specifically, Patent Owner directs us to the language of claim 1, which separately recites “a central screw” and “a locking nut.” Prelim. Resp. 51; see Ex. 1001, 9:44–53. Patent Owner further contends, in view of the claim language, that the claimed central post and locking nut are separate and distinct components. According to Patent Owner, however, Lefebvre’s main head and anchor rod portions are parts of a single monolithic anchoring screw. Prelim. Resp. 53–58. Where a claim lists elements separately, there is a rebuttable presumption that these elements have separate and distinct physical structures. See Google LLC v. EcoFactor, Inc., 92 F.4th 1049, 1058 (Fed. Cir. 2024) (citing Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1231–1232 (Fed. Cir. 2011)). The presumption may be rebutted by the intrinsic record. Id. At this stage, however, Petitioner does not address that claim 1 appears to separately recite a central post and a locking nut, and does not direct us to any portion of the intrinsic record that might rebut the presumption that these elements are, therefore, separate and distinct structures. See Pet. 73–77. Petitioner also argues that the claim terms “baseplate central channel” and “central channel . . . configured to interface with the baseplate” are indefinite. Pet. 95–102. Patent Owner argues that the plain and ordinary meaning of the terms is clear and that Petitioner “had no problem” arguing how the asserted art purportedly rendered the claims obvious. Prelim. Resp. 69–77.” slip op. at 17
- Disclosure Requirements (§112) › Definiteness (Nautilus)Not reached
“Petitioner also argues that the claim terms “baseplate central channel” and “central channel . . . configured to interface with the baseplate” are indefinite. Pet. 95–102. Patent Owner argues that the plain and ordinary meaning of the terms is clear and that Petitioner “had no problem” arguing how the asserted art purportedly rendered the claims obvious. Prelim. Resp. 69–77. In sum, even if Petitioner’s contentions show it is more likely than not that at least one of the claims challenged in the Petition is unpatentable, we find Patent Owner’s arguments identify credible weaknesses in Petitioner’s contentions. Accordingly, we find that that the sixth Fintiv factor is neutral and does not weigh against discretionary denial.” slip op. at 18
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialPatents in suitUS 12,023,254 - PTAB · Mar 14, 2025 · IPR2024-01324 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR on claims 1–57 on all petitioned challenges, 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
“Pursuant to 35 U.S.C. § 314(a), institution of review requires the information in the record to show a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that claims 1–57 are unpatentable, considering all challenges in the Petition.” slip op. at 2
- BurdenNot reached
“deficient for failing to identify how or why Deaton would have been modified. See Prelim. Resp. 38 (section title). In Patent Owner’s view, “Petitioner tries to capture the universe of whatever reconfigurations would have been necessary ‘to meet the claimed system,’ apparently using the claimed system as a road map for the modifications.” Id. (citing Pet. 21). Patent Owner asserts “[t]his catch-all generalization flies in the face of the statutory requirements for IPRs, which must identify challenges ‘with particularity.’” Id. at 38–39 (citing 35 U.S.C. §§ 312(a)(3) & 313). We agree with Patent Owner. The Petition fails to identity “with particularity . . . the grounds on which the challenge to [claim 1] is based.” 35 U.S.C. § 312(a)(3) (emphasis added). Instead, the Petition presents a catch-all theory of obviousness that, in the event the Board finds “a particular configuration in Deaton differs from the claimed system,” it would have been obvious “to reconfigure the various components of the system in Deaton to meet the claimed system[.]” Pet. 21. That argument is deficient because it does not specify any particular limitation(s) of claim 1 that is or are at issue for obviousness, or any particular feature of Deaton that would have been modified, or any particular reason for the modification. Therefore, we conclude the preliminary record fails to show a reasonable likelihood that Petitioner would prevail with respect to challenging claim 1 as having been obvious over Deaton alone. (iii) Patent Owner’s Second Argument — Dr. Mowry is Not Qualified as an Expert Witness Regarding Coupon Processing Business or Technology” slip op. at 36
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Deaton’s UPC server 12 does not satisfy the Validation Limitation of claim 1 because it is performed only after Deaton’s POS terminal 36, 38, or 40 has redeemed the coupon or incentive. We conclude, based on the present record, that Deaton’s disclosure at column 10 (line 63) through column 11 (line 18) is equivocal on this point. It does refer to “verifying the price at which the product was purchased,” in the past tense, which tends to support Patent Owner’s argument. Ex. 1004, 11:8–9 (emphasis added). However, the remainder of the passage is in the present tense or perhaps an indeterminate tense, i.e., “verifying that that the product associated with the coupon is actually purchased” (id. at 11:7–8 (emphasis added)), and “the identity of the person receiving a discount may be verified” (id. at 11:9–12 (emphasis added)). We decline, on the present record, to read this passage as being limited to describing that UPC server 12 validates coupons only after the coupons have been redeemed by a POS terminal 36, 38, or 40. That seems like an unusual limitation to place on Deaton’s validation process, and Patent Owner’s position on this issue at this time does not appear to be supported by sufficient expert witness testimony or persuasive explanation as to why Deaton might be so limited.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“deficient for failing to identify how or why Deaton would have been modified. See Prelim. Resp. 38 (section title). In Patent Owner’s view, “Petitioner tries to capture the universe of whatever reconfigurations would have been necessary ‘to meet the claimed system,’ apparently using the claimed system as a road map for the modifications.” Id. (citing Pet. 21). Patent Owner asserts “[t]his catch-all generalization flies in the face of the statutory requirements for IPRs, which must identify challenges ‘with particularity.’” Id. at 38–39 (citing 35 U.S.C. §§ 312(a)(3) & 313). We agree with Patent Owner. The Petition fails to identity “with particularity . . . the grounds on which the challenge to [claim 1] is based.” 35 U.S.C. § 312(a)(3) (emphasis added). Instead, the Petition presents a catch-all theory of obviousness that, in the event the Board finds “a particular configuration in Deaton differs from the claimed system,” it would have been obvious “to reconfigure the various components of the system in Deaton to meet the claimed system[.]” Pet. 21. That argument is deficient because it does not specify any particular limitation(s) of claim 1 that is or are at issue for obviousness, or any particular feature of Deaton that would have been modified, or any particular reason for the modification. Therefore, we conclude the preliminary record fails to show a reasonable likelihood that Petitioner would prevail with respect to challenging claim 1 as having been obvious over Deaton alone. (iii) Patent Owner’s Second Argument — Dr. Mowry is Not Qualified as an Expert Witness Regarding Coupon Processing Business or Technology” slip op. at 36
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,098,855 - PTAB · Mar 14, 2025 · IPR2024-01323 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–35 on all petitioned grounds; Paul and Brown showed a reasonable likelihood of prevailing on at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), institution of review requires the information in the record to show a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that claims 1–35 are unpatentable, considering all challenges in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“meaning “active” and “available,” because this construction is contradicted by the ’133 patent disclosures cited by Petitioner and Dr. Mowry. See Pet. 30 (citing Ex. 1001, 6:29–33, 9:16–17); Ex. 1003 ¶ 144 (further citing Ex. 1001, 4:40–46, 9:19–24).” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“justify institution, Petitioner’s obviousness contentions based on Paul and the general knowledge of a person of ordinary skill in the art. In particular, Petitioner and Dr. Mowry do not cite any evidence to support Dr. Mowry’s opinion that a person of ordinary skill in the art would have been motivated to modify the operation of Paul’s central server 290 to check the validity of coupons retrieved from a customer’s account “before sending any coupons” to POS terminal 235, for example as part of step 520 in Figure 10. Ex. 1003 ¶ 148 (emphasis added); see Pet. 31. We appreciate that Dr. Mowry posits a reason for this modification, which is “to avoid sending invalid coupons leading to a waste of resources or improper coupon redemptions.” Ex. 1003 ¶ 148; see Pet. 31. However, in light of Dr. Mowry’s lack of education and experience in the coupon processing arts, as Patent Owner has pointed out,4 as well as Dr. Mowry’s failure to cite any evidentiary support in this particular testimony in paragraph 148, his conclusion appears on the present record to rest on improper hindsight bias. Dr. Mowry also does not explain why Paul’s existing coupon validation processes, for example in steps 530–575 of Figure 10, lead to a waste of resources or improper coupon redemptions that would be avoided by validating coupons earlier in Paul’s process.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“objective evidence to support Dr. Mowry’s opinions that is missing in Petitioner’s first challenge (obviousness over Paul alone), because it shows that it was known for a server to determine the validity of coupons before transmitting the coupons to a POS terminal. Dr. Mowry then testifies as to three reasons why a person of ordinary skill in the art would have been motivated to modify Paul’s process, in light of Brown’s disclosure, to determine the validity of Paul’s coupons before transmitting them to a POS terminal, for example in the process of Figure 10 at step 520 rather than later at steps 530–575. Dr. Mowry’s first two reasons — to reduce message sizes exchanged between the server and the POS terminal to conserve network bandwidth, and to reduce the processing required at the POS terminal — are rooted in his computer science experience. See Pet. 20; Ex. 1003 ¶ 83 (pg. 43); id. ¶¶ 4–12 (“QUALIFICATIONS”). Patent Owner’s countervailing arguments are not supported by opposing expert testimony in the present preliminary record, and provide little reason to set aside Dr. Mowry’s experience before developing the record further regarding the merits of his testimony. We conclude that Dr. Mowry’s unrebutted testimony in this regard provides a reasonable likelihood that Petitioner would prevail per 35 U.S.C. § 314(a). It may turn out that Dr. Mowry’s testimony will not stand up to cross-examination and/or opposing expert witness testimony, but we leave those issues for trial.” slip op. at 45
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,070,133 - Quotient Technology, LLC v. Intelligent Clearing Network Inc.Institution deniedPTAB · Feb 21, 2025 · IPR2024-01325 · APJ Lisa L Tsang · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim would have been obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented shows there is not a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’729 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not expressly proffer a different level of skill in the art, but faults Petitioner for relying on the testimony of a declarant who allegedly lacks experience relating to coupon processing. See Prelim. Resp. 15–21. According to Patent Owner, “[t]he Petition repeatedly contends that a POSITA would require a deep and specific understanding of various aspects of the business and technology of validating, redeeming, and clearing coupons to reach the proposed obvious determinations.” Id. at 17; see also id. at 18–19 (citing examples from the Petition that allegedly rely on 9 The current record does not include allegations or evidence of objective indicia of nonobviousness. a skilled artisan “having extensive knowledge [of] coupon processing business practices and technologies”). In this regard, Patent Owner contends that Dr. Mowry does not identify any education or experience relating to coupon processing. Id. at 20. As a consequence, Patent Owner urges us to disregard Dr. Mowry’s opinions relating to the coupon-processing industry. Id. at 21. For purposes of this Decision, we adopt the level of ordinary skill in the art as articulated by Petitioner because, based on the current record, it is not expressly disputed, and it does not impact our analysis below.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner and Patent Owner agree that no claim terms need construction. Pet. 4; Prelim. Resp. 12. Patent Owner further argues, however, that “in the [co-pending litigation], Petitioner has advanced numerous limiting constructions that are inconsistent with Petitioner’s invalidity theories.” Prelim. Resp. 11–12. We acknowledge that Petitioner has proposed specific claim constructions for various ’729 patent claim limitations in the co-pending litigation. See Ex. 2001, 2–14. However, Patent Owner does not advance specific arguments as to why we should apply those constructions here and how Petitioner’s challenges to the claims would fail thereunder. See Prelim. Resp. 11–12. Moreover, after reviewing the evidence and argument presented by the parties, we determine that it is not necessary to expressly construe any claim terms because doing so would not change the outcome of our analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“1. Independent claim 1 Patent Owner contends, inter alia, that the combination of Aggarwal and Deaton does not teach or suggest limitation [1d]. Prelim. Resp. 26–29. For the reasons discussed below, we agree with Patent Owner that Petitioner has not shown sufficiently that limitation [1d] would have been taught or suggested by Aggarwal and Deaton. This issue is dispositive so we do not provide analysis on the other challenged claim limitations. (a) Limitation [1d] Limitation [1d] recites, “receiving, at the ICN server from the retail server, redeemed coupon related information indicating successful redemption of a coupon, wherein the redeemed coupon related information comprises identification information from a product purchased, customer identification information, an application identifier, and retailer identification information.” Ex. 1001, 52:52–58 (emphasis added).” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,846,729 - PTAB · Jan 28, 2025 · PGR2024-00040 · APJ James A Tartal · PGR · Institution
The Board instituted PGR on claims 1–3, 5–7, 10, 12, 14, 16, and 17 on all asserted grounds, finding the Llop ’126 and Sichuan combination more likely than not to render claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “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). Because claims 11 and 13 were disclaimed, our determination of whether to institute review considers only Petitioner’s allegations directed to claims 1–3, 5–7, 10, 12, 14, 16, and 17 of the ’209 patent (the “Challenged Claims”). See 37 C.F.R. § 42.207(e). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one of the Challenged Claims. Accordingly, we” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“in compliance with § 1.321(a), disclaiming one or more claims in the patent,” and “[n]o post-grant review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.207(e). A disclaimer under 35 U.S.C. § 253(a) is “considered as part of the original patent” as of the date on which it is “recorded” in the Office. 35 U.S.C. § 253(a). For a disclaimer to be “recorded” in the Office, the document filed by the patent owner must:” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art as of the earliest priority date of the ’209 patent “would at least have had a doctoral degree in dentistry and at least three to four years of experience working with guided dental surgery for installing dental implants and prostheses.” Pet. 13 (citing Ex. 1003 ¶ 49). Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage. See generally Prelim. Resp. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the ’209 patent and the asserted prior art. Accordingly, we adopt Petitioner’s definition for purposes of this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“base” require construction “to resolve certain of the unpatentability grounds presented.” Pet. 13–14. In particular, Petitioner proposes that “drill guide” means “drill guide made from metal or metallic alloy without traditional plastic or acrylic,” and that “fixation base” means “fixation base made from metal, metallic alloy or other strong material without traditional plastic or acrylic.” Id. Patent Owner contends that we need not address the constructions proposed by Petitioner because the issues addressed by Petitioner’s proposed construction only concern allegations of unpatentability directed to claims 11 and 13, which Patent Owner disclaimed. Prelim. Resp. 12; Disclaimer 1. The issue of whether the claimed drill guide and fixation base is limited to certain materials only concerns Petitioner’s contentions with respect to the moot grounds of lack of written description support and indefiniteness asserted against disclaimed claims 11 and 13. See Pet. 36–44; 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)). Accordingly, we agree with Patent Owner that we need not explicitly construe the claim terms “drill guide” or “fixation base” for purposes of this Decision.” slip op. at 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,806,209 - Catalyst Orthoscience Inc. v. Shoulder Innovations, Inc.Institution deniedPTAB · Dec 19, 2024 · PGR2024-00042 · APJ Lisa L Tsang · PGR · Institution
The Board denied institution of PGR challenging claims 1–16, finding the first five Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“during the conference and in the Minute Entry, and in the court’s subsequent Order Regarding Schedule. We also note that the evidence shows the district court may intend to reschedule the trial to a date substantially earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1029, 10−11. However, given that the Order does not unambiguously set a trial date for December 1, 2025, or even sometime in December 2025 or January 2026 (see Ex. 1028), we decline to speculate as to what date the court may ultimately select for trial. Moreover, the record shows that Petitioner has consistently opposed moving the trial to a date earlier than March 9, 2026. See Ex. 2010, 5; Ex. 1026, 2−4; Ex. 1029, 11. We view Petitioner’s opposition as creating yet more ambiguity as to the trial date in the co-pending litigation. Therefore, we find that factor 2 is neutral because the exact trial date in district court is uncertain.” slip op. at 14
- BurdenNot reached
“if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4. This standard is only met “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102 at 49 (Vidal Oct. 4, 2022) (precedential) (citing Guidance Memo 4). We have reviewed Petitioner’s challenges and Patent Owner’s arguments. For the reasons explained below, we determine that Petitioner’s challenges have not risen to the threshold of compelling merits. Before addressing the parties’ arguments regarding the asserted grounds, we address: (a) the level of ordinary skill in the art, (b) claim construction, and (c) relevant principles of law; and we provide (d) overviews of the asserted art.” slip op. at 18
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We agree with Patent Owner that its proffered additional level of ordinary skill in the art appears consistent with the experience Petitioner describes. See Pet. 16. For purposes of this Decision, we adopt the level of ordinary skill in the art articulated by Petitioner and supplemented by Patent Owner, because, based on the current record, it is consistent with our review and understanding of the technology and descriptions in the ’561 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In this regard, Mr. Fallin testifies that I have decades of experience working directly with joint replacement systems, including hip joint replacement systems, knee replacement systems, and facet joint replacement systems. My work on these joint replacement systems included my direct engagement or supervision of and professionals in the inventing, designing, fabricating, testing, obtaining regulatory approvals, ensuring regulatory compliance, commercializing, and patenting of these systems. Ex. 1002 ¶ 10. Mr. Fallin also testifies that his experience “includes working directly with supervising professionals whose responsibilities included designing, developing, and commercializing joint replacement systems and similar device[s].” Id. ¶ 67 As such, Mr. Fallin identifies “decades” of experience with joint replacement systems. Ex. 1002 ¶ 10. Moreover, Patent Owner does not persuasively explain why Mr. Fallin’s “direct engagement” and “working directly with,” as well as “supervision” of, other individuals designing joint replacement systems, does not at least imply personal design experience. See Prelim. Resp. 10–11. Therefore, we determine that the current record reflects that Mr. Fallin is qualified to testify as to the knowledge of a person of ordinary skill in the art.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · Graham · NautilusPatents in suitUS 11,771,561 - PTAB · Nov 22, 2024 · IPR2024-00687 · APJ Lisa L Tsang · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–12, finding a reasonable likelihood that claims 1–4 and 9 are anticipated by Winkler.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized when “the information presented in the petition . . . and any 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.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108. Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’017 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends a person of ordinary skill in the art (“POSITA”) “would have had at least a bachelor’s degree in electrical engineering or a similar field and at least two years of experience working with electrical circuits or electrical connectors, including power connectors. Additional relevant work experience can compensate for less education, and vice versa.” Pet. 19 (citing Ex. 1003 ¶¶ 24–26). At this juncture, Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 7. For purposes of this Decision, we adopt the level of ordinary skill in the art as articulated by Petitioner because, based on the current record, it is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’017 patent and prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“At this juncture, we preliminarily agree with Patent Owner’s proffered claim construction. In particular, we agree with Patent Owner’s argument that the insulating barriers would be unable to be configured to “block[] substantially all through-air arcing paths between the first and second electrical contacts,” as claimed, unless they were electrically insulating. See Ex. 1001, 4:36–44. Moreover, as Patent Owner avers, our interpretation of “insulating” as it applies to the first and second insulating barriers should be the same as for the first and second housings. See Digital Biometrics, 149 F.3d at 1345 (“whatever interpretation we assign [to a word used in a claim] should encompass both uses because the same word appearing in the same claim should be interpreted consistently” (citation omitted)). Although “a patent’s written description can set forth more than one definition of a claim term,” we do not discern that to be the case here. See Pitney Bowes, 182 F.3d at 1310. The portions of the Specification of the ’017 patent that Patent Owner cites use “insulating” and its associated tenses to mean suppressing electrical arcing and protecting from electrical burns, i.e., electrically insulating. See, e.g., Ex. 1001, code (57), 1:58–2:3, 2:42–44, 3:2–6, 3:30–40, 3:63–4:10, cited in Prelim. Resp. 12–14. Accordingly, for purposes of this Decision, we interpret “insulating” as recited in the claims to mean “electrically insulating.”” slip op. at 11
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Petitioner’s reliance on the modified Figure 2 diagram not explicitly shown in Winkler is not per se improper, so long as the skilled artisan would have reasonably understood that that is what Winkler discloses. See Acoustic Tech., Inc. v. Itron Networked Solutions, Inc., 949 F.3d 1366, 1373 (Fed. Cir. 2020) (“In an anticipation analysis, the dispositive question is whether a skilled artisan would ‘reasonably understand or infer’ from a prior art reference that every claim limitation is disclosed in that single reference. . . . Expert testimony may shed light on what a skilled artisan would reasonably understand or infer from a prior art reference.” (citations omitted)). Dr. Eldering testifies that the diagram was “created based on FIG. 2 of Winkler and developed by taking the components of each half of the connector and recreating them in a separated state.” Ex. 1003 ¶ 80. On the current record, Patent Owner does not dispute Dr. Eldering’s testimony or that Petitioner’s diagram reflects what the skilled artisan would have reasonably understood by looking at Figure 2 of Winkler. See generally Prelim. Resp.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,808,017 - PTAB · Sep 10, 2024 · IPR2024-00668 · APJ Lisa L Tsang · IPR · Institution
The Board instituted IPR on claims 1 and 4 on all four §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Patent Owner must produce some evidence to place in dispute the issue of whether an unnamed real party in interest renders the petition timebarred, but Petitioner bears the burden of persuasion on this issue. See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242–44 (Fed. Cir. 2018) (holding that an “IPR petitioner bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest.”). Based on the arguments and evidence of record, we determine that Patent Owner has not 13 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. produced sufficient evidence to place in dispute the issue of whether STMicro should be named a real party in interest to this proceeding. Rather, at this stage, Patent Owner’s contentions regarding any relationship between Petitioner and STMicro constitute mere attorney argument because they are unsupported by any evidence of record. See Prelim. Resp. 19–21. For example, beyond self-serving allegations in Patent Owner’s district court complaint against Petitioner for infringement (see Ex. 2007 ¶¶ 46–56, 63– 74, cited in Prelim. Resp. 20), we are not apprised of any evidence to support the argument that STMicro is a supplier of Petitioner. To the contrary, Patent Owner’s evidence demonstrates that STMicro repeatedly asserts in the district court litigation that “ST[Micro] did not design, manufacture, or sell any STMicro IMU Components to [Petitioner].” See Ex. 2014, 13–18. Moreover, the evidence shows that STMicro does not acknowledge the existence of an indemnification agreement or any communications between it and Petitioner relating to the litigation, Patent Owner, or the ’648 patent. See id. at 18–20, 24–25. At best, Patent Owner’s evidence and arguments at this juncture establish only that Patent Owner previously filed a complaint against STMicro, asserting infringement of patents including the ’648 patent (see generally Ex. 2012); and that Patent Owner served a subpoena to compel STMicro to testify and produce documents in Patent Owner’s infringement suit against Petitioner (see generally Ex. 2014). The record before us is insufficient to demonstrate a relationship between Petitioner and STMicro sufficient to show that STMicro is a real party in interest. See Worlds, 903 F.3d at 1244.” slip op. at 16
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“Patent Owner must produce some evidence to place in dispute the issue of whether an unnamed real party in interest renders the petition timebarred, but Petitioner bears the burden of persuasion on this issue. See Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242–44 (Fed. Cir. 2018) (holding that an “IPR petitioner bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b) based on a complaint served on an alleged real party in interest.”). Based on the arguments and evidence of record, we determine that Patent Owner has not 13 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. produced sufficient evidence to place in dispute the issue of whether STMicro should be named a real party in interest to this proceeding. Rather, at this stage, Patent Owner’s contentions regarding any relationship between Petitioner and STMicro constitute mere attorney argument because they are unsupported by any evidence of record. See Prelim. Resp. 19–21. For example, beyond self-serving allegations in Patent Owner’s district court complaint against Petitioner for infringement (see Ex. 2007 ¶¶ 46–56, 63– 74, cited in Prelim. Resp. 20), we are not apprised of any evidence to support the argument that STMicro is a supplier of Petitioner. To the contrary, Patent Owner’s evidence demonstrates that STMicro repeatedly asserts in the district court litigation that “ST[Micro] did not design, manufacture, or sell any STMicro IMU Components to [Petitioner].” See Ex. 2014, 13–18. Moreover, the evidence shows that STMicro does not acknowledge the existence of an indemnification agreement or any communications between it and Petitioner relating to the litigation, Patent Owner, or the ’648 patent. See id. at 18–20, 24–25. At best, Patent Owner’s evidence and arguments at this juncture establish only that Patent Owner previously filed a complaint against STMicro, asserting infringement of patents including the ’648 patent (see generally Ex. 2012); and that Patent Owner served a subpoena to compel STMicro to testify and produce documents in Patent Owner’s infringement suit against Petitioner (see generally Ex. 2014). The record before us is insufficient to demonstrate a relationship between Petitioner and STMicro sufficient to show that STMicro is a real party in interest. See Worlds, 903 F.3d at 1244.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Petition states, however, that “Petitioner provides a Sotera stipulation that, in the event of IPR institution, Petitioner will not pursue in district court any grounds of invalidity against the challenged claims that were or reasonably could have been asserted in IPR.” Pet. 5. The Director’s Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)14 (“Interim Procedure”) states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim 14 Available at www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_de nials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. Accordingly, we decline to discretionarily deny the Petition in view of related district court litigation.” slip op. at 18
- Skill levelSkill level patent owner adoptedOther
“Relying on the Declaration of Dr. Young for support, Petitioner contends a person of ordinary skill in the art (“POSITA”) would have possessed a bachelor’s degree in electrical engineering or similar degree, with two to three years of practical experience designing and/or implementing systems that include sensors for measuring movement, such as acceleration and rotational position. . . . A skilled artisan could also have had more formal education and less practical experience, or vice versa. Pet. 5 (citing Ex. 1002 ¶¶ 12–14). Patent Owner counters that the skilled artisan would have had “at least a ‘Master’s Degree in Electrical or Electronics Engineering, and approximately five years of relevant experience in the development of control systems for inertial navigation, MEMS semiconductor processing, and analog circuit design.’” Prelim. Resp. 32 (citing Ex. 2008 (Declaration of Dr. Lawrence E. Larson) ¶ 57). On this preliminary record, we are persuaded for the reasons discussed below that Petitioner has shown a reasonable likelihood that it would prevail in demonstrating the unpatentability of at least one challenged claim of the ’648 patent, at least under Patent Owner’s proffered level of ordinary skill in the art. We recognize that Petitioner and its declarant, Dr. Young, propose a different level of ordinary skill in the art, and we expect the parties to address this issue and its implications on the merits of the asserted grounds during trial.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,671,648 - PTAB · Sep 10, 2024 · IPR2024-00667 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1 and 3, finding a reasonable likelihood they are obvious over Fujiyoshi, Kumar, Cox, and Townsend, or over Mitamura and Townsend.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“other things, it “identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). However, “an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” Id. at 1242, 1244 (footnote omitted). “[T]he two questions lying at [the] heart [of the real party in interest inquiry] are whether a non-party ‘desires review of the patent’ and whether a petition has been filed at a non-party’s ‘behest.’” RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 at 26–27 (PTAB Oct. 2, 2020) (precedential) (citing Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018) (“AIT”)); see also Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1336 (Fed. Cir. 2018).” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“other things, it “identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). “[T]he IPR petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018). However, “an IPR petitioner’s initial identification of the real parties in interest should be accepted unless and until disputed by a patent owner,” who, in turn, “must produce some evidence that tends to show that a particular third party should be named a real party in interest.” Id. at 1242, 1244 (footnote omitted). “[T]he two questions lying at [the] heart [of the real party in interest inquiry] are whether a non-party ‘desires review of the patent’ and whether a petition has been filed at a non-party’s ‘behest.’” RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 at 26–27 (PTAB Oct. 2, 2020) (precedential) (citing Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018) (“AIT”)); see also Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1336 (Fed. Cir. 2018).” slip op. at 6
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we apply the higher level of ordinary skill proposed by Patent Owner as commensurate with the subject matter of the ’122 patent and the references. Although it is not clear that the parties’ disagreement as to the level of ordinary skill in the art is material to this Decision, applying Patent Owner’s description of a person of ordinary skill in the art suggests that such a person would have a deeper understanding of the technology and be able to infer more from the teachings of the references than one having the skill set proposed by Petitioner. The parties may want to address this issue further at trial.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Both parties agree that no claim construction is required. Pet. 6, Prelim. Resp. 35. We note, however, that claim 1 recites the following three elements: (i) “an angular rate sensor unit” that receives certain signals and outputs other signals, (ii) “central circuitry” that receives certain signals and outputs other signals, and (iii) “a digital signal processing system” that analyzes certain signals and feeds back certain signals to the angular rate sensor unit. Ex. 1001, 9:39 – 54. Claim 3 depends from claim 1 and recites additional “control circuitry” and “angle rate signal loop circuitry.” Although neither claim 1 nor claim 3 recite any further structure and both claims employ nonce words, such as “unit,” “system,” and “circuitry” to carry out recited functions, neither party proposes that any claim term be construed as a means-plus-function limitation. Well-known nonce words can operate as a substitute for “means” in the context of § 112, para. 6. A claim that does not include the term “means” creates a rebuttable presumption that the claim is not written in means-plus-function format; this presumption may be overcome if the claim limitation “fails to recite sufficiently definite structure” or recites a “function without reciting sufficient structure for performing that function. See Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359 (Fed. Cir. 2004). Generic terms such as “mechanism,” “element,” “device,” and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word “means” because they “typically do not connote sufficiently definite structure” and therefore may invoke § 112, para. 6. Williamson v. Citrix OnLine, LLC, 792 Fed 1339, 1348–1359 (Fed. Cir. 2015). At this stage of the proceeding, we do not explicitly construe any term or limit the claims to the structure disclosed in the Specification or its equivalent; we further consider the implications of the claim language in our substantive analysis below.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,508,122 - PTAB · May 22, 2024 · IPR2024-00821 · APJ Scott A Daniels · IPR · Institution
The Board instituted review of claim 23 under the § 103 ground based on Spain-I, Hunzinger, and Nanda, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In light of our Decision in the ’154 IPR, the similarity of independent claims 1 and 23 and considering again Spain-I, Hunzinger, and Nanda, along with Petitioner’s arguments and evidence in this proceeding, which are basically the same as in the ’154 IPR, we are persuaded to also institute trial as to claim 23 in this proceeding. Compare, Samsung, Paper 12, 12–19, with Pet. 6–46. As discussed above, in this proceeding Patent Owner has affirmatively waived its right to file a Patent Owner Preliminary Response. Paper 6. The parties have also requested “that the Board expedite consideration of the petition in IPR2024-00821 and consolidate IPR2024- 00821 with IPR2024-00154.” Ex. 2001. Considering these facts and the parties requests, as well as the record at this stage of the proceeding, including all the arguments and evidence set forth in the Petition and the sole challenge to claim 23 based on Spain-I, Hunzinger, and Nanda, we find Petitioner has shown a reasonable likelihood of prevailing at trial. Pet. 6–46. Accordingly, for the same reasons we instituted trial in the ’154 IPR, including our analysis of independent claim 1, the relevant portions of which we incorporate by reference as they pertain to the same and similar limitations in independent claim 23, we also institute trial in this proceeding as to independent claim 23.” slip op. at 8
NonePatents in suitUS 8,594,698
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.