• Luxottica Of America Inc. v. E-Vision Smart Optics, Inc.All claims unpatentable
  PTAB · Dec 30, 2025 · IPR2024-01072 · APJ John D Hamann · IPR · Final written decision

  Claims 1–26 are unpatentable as obvious over the listed prior-art combinations; the Board also denied Patent Owner’s motion to strike.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Decision on Institution, we adopted the definition Petitioner proposes for one having ordinary skill in the art at the time of the invention of the ’960 patent. Dec. on Inst. 10. Namely, we found that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing eyewear and/or consumer electronics,” and that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. (citing Pet. 10–11 (citing Ex. 1003 ¶ 28)) (alteration in original). Patent Owner proposes a different definition for one of ordinary skill in the art, but does not specifically address any deficiencies in Petitioner’s proposed definition. PO Resp. 6. Because Petitioner’s definition of the level of skill in the art is consistent with the ’960 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis herein, however, does not turn on which of the parties’ definitions we adopt.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther

    “Here, neither party sets forth any term for claim construction. Pet. 11; PO Resp. 5–6; Pet. Reply 1–2. We determine that we do not need to construe any term to resolve the disputes between the parties. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). We afford the claim terms their plain and ordinary meaning.” slip op. at 9

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)). Below we focus on the first of these tests. “We determine the field of endeavor ‘by reference to explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.’” Netflix, Inc. v. DIVX, LLC, 80 F.4th 1352, 1359 (Fed. Cir. 2023) (quoting In re Bigio, 381 F.3d at 1325)). We agree with Petitioner and find that the ’960 patent is in the field of eyewear and consumer electronics. Pet. 13. The ’960 patent discloses that its “subject matter is directed to electronic eyewear modules and systems to be worn by a wearer, whereby an electronic eyewear system with a docking station can be easily joined with a plurality of electronic application modules.” Ex. 1001, 1:66–2:4; Pet. 9. We also agree with Petitioner that the ’960 patent acknowledges “a need for a single pair of fashionable eyewear capable of . . . utilizing one or more of a multitude of different application devices while the wearer is wearing the eyewear.” Ex. 1001, 1:59–62; Pet. Reply 13. Patent Owner argues that “[t]he ’960 [p]atent pertains to the field of wearable embedded electronics, namely ‘commercial eyewear comprising electronics.’” PO Resp. 24 (citing Ex. 1001, 1:24–25). We view the parties’ descriptions of the field of the ’960 patent to be substantively the same.” slip op. at 25

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

    “We also find persuasive Petitioner’s argument and Dr. Feland’s testimony that Jannard’s “application module for eyewear is one such suitable device in which to incorporate Rosenblatt’s key or its functionality.” Pet. 47 (citing Ex. 1003 ¶ 156). This argument and testimony are consistent with Rosenblatt’s teaching of a wide variety of suitable devices. Compare id. and Ex. 1003 ¶ 156, with Ex. 1007 ¶ 7. Moreover, as Petitioner argues, Rosenblatt teaches that its “key . . . may include a clip or other connecting mechanism for attaching [the] key . . . to an object that the user typically carries,” such as “a user’s wallet, cellular telephone, personal media device (e.g., an iPod), wired headset, wireless headset, watch, bag, belt, article of clothing, or any other suitable object.” Ex. 1007 ¶ 43 (emphasis added). We find persuasive Dr. Feland’s testimony that Jannard’s eyewear system is a carried object like a wired or wireless headset in the context of Rosenblatt’s teaching. See Ex. 1003 ¶ 156; Ex. 1007 ¶ 43. We also find persuasive Dr. Feland’s testimony that incorporating Rosenblatt’s key or its functionality into Jannard’s application module “desirably ‘provid[es] functional fashion having device operation capabilities,’ which is consistent with Rosenblatt recommendations.” Ex. 1003 ¶ 156 (quoting Ex. 1007 ¶ 58) (alteration in original); Ex. 1007 ¶ 58 (“[T]he key may be integrated with operation capabilities.”). We also find persuasive Petitioner’s argument and Dr. Feland’s testimony that one of ordinary skill in the art would have been motivated to incorporate Rosenblatt’s key or its functionality in Jannard’s application module to achieve the benefits disclosed in Rosenblatt, including controlling host devices responsive to wireless communication with Jannard’s application module. Pet. 47; Ex. 1003 ¶ 156. We view this as using a known technique (Rosenblatt’s teaching of incorporating a key or its functionality into an electronic device) to improve a similar device (Jannard’s eyewear and application module with wireless communication for functions) in the same way. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”); see also Pet. 48; Ex. 1003 ¶ 157.” slip op. at 14

  Patent outcomesUS 10,598,960 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,598,960
• Luxottica Of America Inc. v. E-Vision Optics, LLCSome claims unpatentable
  PTAB · Dec 23, 2025 · IPR2024-01030 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–20, 22–31, and 33–37 are unpatentable; claims 21 and 32 were not shown unpatentable, principally because the proposed combinations failed to establish motivation to combine or the required airtight seal.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find that the proposals from the parties substantially overlap, such that it remains unclear whether any substantive difference exists. Notably, neither party argues that the minor differences in the proposals lead to a different outcome on any issues in this proceeding. Based on our review of the proposals, we apply Patent Owner’s proposal because it is consistent with the problems and solutions disclosed in the ’483 patent and prior art of record. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). The outcome of the issues addressed in this Decision would not change if we applied Petitioner’s proposal.” slip op. at 9

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

    “hermetically sealed” module does not encompass waterproof modules that are not airtight. First, as Petitioner admits, as a general matter, “[s]omething that is hermetically sealed is sealed so as to be airtight.” Pet. 28 (citing Ex. 1002 ¶ 103; Ex. 1010, 269); PO Sur-reply 16. Petitioner later tries to argue that the specification puts a different spin on this meaning, but still acknowledges that “[o]utside the context of the ’483 patent, a hermetic seal is sometimes equated with an airtight seal.” See Pet. Post-hearing 2–3 (citing Ex. 1002 ¶ 103; Ex. 1010, 269). Based on our review of the record, the “ordinary meaning” of “hermetically sealed” means “airtight,” and, as noted above, “airtight” is not the same thing as “waterproof.” Second, the claims support Patent Owner’s position by including dependent claims that separately claim a “hermetically sealed” module (claims 13 and 32) and a “waterproof” module (claims 15 and 34), strongly suggesting that the terms have a different scope to avoid rendering some claims redundant. See Ex. 1001, 11: 65–66, 12:3–4, 12:52–53, 12:55–56. Petitioner argues in its Post-hearing brief that claims requiring waterproof modules are “a narrower species” of hermetic seal, but fails to explain how hermetic, airtight, and waterproof seals would not fall within the scope of both claims using its approach. Pet. Post-hearing Reply 2. Petitioner’s earlier argument in its Reply also seems to cut against this position by asserting that the specification “treats hermitically sealing as conventional and equivalent to waterproofing,” with different dependent claims directed to two allegedly “equivalent” terms making little sense. Pet. Reply 14 (emphasis added). The most natural reading of the claim language suggests that “hermetically sealed” means airtight, and does not encompass modules that are waterproof but not airtight. Third, while the specification does not define “hermetically sealed” and uses “waterproof” and “hermetically sealed” in similar contexts, it does not suggest that “hermetically sealed” does not require an airtight seal consistent with its ordinary meaning. See Pet. Reply 14–15 (citing Ex. 1001, 6:47–53, 9:15–18, 10:47–50). Instead, the specification states that hermetic seals prevent water from contacting electronics, which remains consistent with Patent Owner’s position because airtight hermetic seals are also waterproof. See Ex. 1001, 6:47–53, 9:15–18. The specification also states that “[t]he module preferably houses any of the aforementioned electrical components in a substantially water-proof and wear resistant/moisture resistant environment and is preferably hermetically sealed.” Id. at 10:47–50 (emphasis added). This passage supports Patent Owner’s position by suggesting that the preferable “hermetically sealed” module goes beyond mere water resistance. See PO Sur-reply 16–17. slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “2. Petitioner’s Anticipation Arguments and Evidence Petitioner argues that Howell-596 discloses every limitation of claims 1, 9, 10, 14, 15, and 18, and points to specific portions of Howell-596 and expert testimony to support its arguments. See Pet. 10–20 (citing Ex. 1002; Ex. 1003). We have reviewed the evidence and arguments of record and find that Petitioner has shown, by a preponderance of the evidence, that the limitations in claims 1, 9, 10, 14, 15, and 18 are disclosed by Howell-596 for the reasons set forth in the Petition, which we adopt as our own. See id.11 Accordingly, we find that Petitioner has established, by a preponderance of the evidence, that Howell-596 anticipates claims 1, 9, 10, 14, 15, and 18.” slip op. at 12

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

    “Based on these undisputed points and the parties’ arguments, we agree with Patent Owner that Petitioner fails to establish that a POSITA would have been motivated to locate Howell-596’s module housing 1700, which contains its UV detection system 1500, behind a user’s ear. Petitioner never squarely addresses the fact that placing Howell-596’s UV detection system behind a user’s ear would negatively impact its performance. Pet. 31–33; Pet. Reply 17–22. As a result, even if we accept Petitioner’s arguments and evidence as to the various advantages when placing electronics behind a user’s ear, it fails to establish a motivation to combine that requires placing Howell-596’s module housing 1700, and therefore its UV detection system, behind a user’s ear. Petitioner never acknowledges the readily apparent disadvantages of placing a UV detection system behind the ear, where it may not work at all. See Pet. 31–33. Nor does Petitioner argue that, in its combination, adjustments would be made to ensure accurate operation of Howell-596’s UV detection system. See id. Similarly, Petitioner notes that both Howell-596 and Howell-833 disclose UV sensors behind the ear of a user, but those teachings do not establish that placing Howell-596’s module behind the ear would ensure proper operation of its UV detection system housed within that module. See Pet. Reply 17–22. Instead, even though Howell-596 discloses a sensor behind the ear of a user, it maintains the UV detection system in a module toward the front of the temple, away from the ear. See id. at 18–19; PO Surreply 21–22; Ex. 1003 ¶ 205 (describing UV detection system 2102), Fig. 21 (showing UV detection system 2102 toward the front of the temple). Moreover, Petitioner’s reliance on the sensor placed behind the ear of the user in Howell-596 lacks weight because that sensor merely indicates that the device “is being worn by a user,” which serves a very different purpose than Howell-596’s UV detection system, which seeks to monitor a user’s exposure to UV radiation, a central purpose of Howell-596’s eyewear. See Ex. 1003 ¶ 205, code (57). Howell-833 also employs a UV sensor behind the ear, but Petitioner does not establish that it operates any differently than the “being worn” sensor in Howell-596, and therefore does not establish that Howell-596’s UV detection system would still work for its intended purposes in Petitioner’s proposed combination. See Pet. Reply 19–20.” slip op. at 29

  Patent outcomesUS 8,708,483 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 8,708,483
• Luxottica Of America Inc. v. E-Vision Optics, LLCSome claims unpatentable
  PTAB · Dec 16, 2025 · IPR2024-01070 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–9 and 12–19 are unpatentable; claims 10 and 11 were not shown unpatentable, because the asserted grounds failed to establish unpatentability for those claims.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The parties do not identify, and we do not discern, any material difference between the parties’ proposed definitions. Based on the record currently before us, we adopt Petitioner’s proposed definition of the level of ordinary skill. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). We note that we would reach the same conclusions under either proposed standard.” slip op. at 10

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

    “The parties agree that “constrain” means to retain the module in a fixed position. Patent Owner further interprets “constrain” not to allow minor movement. This interpretation is consistent with the ’174 patent, which states, In some embodiments, the first electrical conductor may be configured to constrain or substantially constrain the electronics module. As used in this context, “constrain” may refer to when the first electrical conductor is configured to provide support (i.e. a restraining force) for the electronics module to retain the module in a fixed position within the temple. That is, the first electrical conductor may be configured to hold the electronics module in place. . . . The term “substantially constrain” is used in this context to account for some minor movement of the electronics module within the temple, but the conductor may generally hold the electronics module within the temple in place (such that it remains in an operative position). Ex. 1001, 11:50–12:3 (emphasis added). Thus, the ’174 patent distinguishes between an electrical conductor configure to “constrain” an electronics module and an electrical conductor configured to “substantially constrain” an electronics module, with the latter allowing for “some minor movement of the electronics module.” We therefore adopt Patent Owner’s interpretation of “constrain” as used in claim 1 to mean the first and second electrical conductors are configured to provide a restraining force that retains the module in a fixed position without allowing for minor movement of the electronics module.7 This interpretation also is consistent with Petitioner’s interpretation, which includes retaining the module in a fixed position within the temple. See Pet. 20.” slip op. at 24

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “therefore, are unavailing. As correctly noted by Petitioner, Brunton discloses that “the [hearing aid] units may be provided with any suitable number of contact pins and the sockets provided with a corresponding number of tubular contacts that are positioned to receive the pins and in which the pins are frictionally retained.” Ex. 1003, 3:61–65 (emphasis added). Petitioner’s witness, Dr. Feland, testifies, Frictionally retaining the hearing aid unit’s pins in the cavity means that the socket contacts couple the hearing aid unit to the temple and constrain the hearing aid unit. Brunton’s socket contacts (corresponding to the claimed first and second electrical conductors) accordingly are configured to couple the hearing aid unit (corresponding to the claimed electronics module) to the temple to constrain the hearing aid unit. Ex. 1002 ¶ 64. We credit this testimony of Dr. Feland, which is consistent with the ordinary and customary meaning of a friction-fit connection. We give less credit to the testimony of Patent Owner’s witness, Dr. Oliver. Dr. Oliver testifies that “Brunton describes a cover plate that physically secures the sockets.” Ex. 2016 ¶ 87 (citing Ex. 1003, 3:71–4:1). However, this assertion is contradicted by the very disclosure Dr. Oliver quotes in his declaration, which explains that the material of the temple retains the sockets in place: “The sockets for the transistor and unit, such as the sockets 19 and 20, may be frictionally held in the cavity or may be embedded in the material of the temple, as may be desired.” Ex. 1003, 3:71–74 (emphases added); see also Ex. 2016 ¶ 87 (quoting same). Brunton does disclose a cover plate to cover the cavity, but Brunton does not disclose or suggest that the cover plate contacts or otherwise influences the hearing aid: “In the design shown, the temple is provided with a cover plate 31 that is secured in position over the unit 77 and the transistor 29 with screws 32.” Ex. 1003, 3:74–4:1; see also Ex. 2016 ¶ 87 (quoting same).” slip op. at 27

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We are persuaded that Petitioner has set forth adequate reasoning to combine the teachings of Eichelberger and Howell-596. Howell-596 teaches electronic circuitry having UV radiation monitoring capability that can be used within eyewear. Ex. 1015, code (57). Howell-596 discloses that the UV detection system can be activated by a switch, which can be a capacitive touch switch. Id. ¶¶ 88, 191; Ex. 1019, 172. As discussed above, Eichelberger teaches a capacitive touch switch with electronic components disposed thereon. Ex. at 3:6–14, 3:43–50. We are persuaded that using Eichelberger’s capacitive touch switch in place of Howell-596’s would have been obvious. See Pet. 83–84; Ex. 1002 ¶ 221. e. Conclusion For the foregoing reasons, we are persuaded that Petitioner has shown, by a preponderance of the evidence, that claim 15 would have been obvious in view of the combination of Howell-596 and Eichelberger.” slip op. at 55

  Patent outcomesUS 8,801,174 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,801,174
• Luxottica Of America Inc. v. E-Vision Optics, LLCAll claims unpatentable
  PTAB · Dec 16, 2025 · IPR2024-01069 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1–21 are unpatentable as obvious, including under Blum, Sikonowiz, and Howell-719; the Board rejected the separate Howell-719, Sikonowiz, and Blum ground for claims 14–21.

  RulingsFinal written decision

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

    “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that “no claim terms require construction to resolve the obviousness challenges here.” Pet. 16. Petitioner contends that, in its mappings of the challenged claims, it “identifies passages from the specification demonstrating that the prior art discloses claim terms in the manner [that] the ’355 patent uses them.” Id. at 17. Patent Owner does not oppose Petitioner’s contentions or proffer any constructions of its own. See generally PO Resp. We determine that no express construction of any term is necessary. slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “would have also had at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 15–16 (citing Ex. 1002 ¶ 32). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 16 (citing Ex. 1002 ¶ 32). Patent Owner contends that a person having ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in mechanical engineering, electrical engineering, or computer engineering, or an equivalent degree and, in addition, approximately two years of work experience with embedded electronic devices” and “[m]ore advanced degrees or training in a related discipline or both can compensate for shorter work experience.” PO Resp. 10 (citing Ex. 2004 ¶¶ 29–32). The parties do not identify, and we do not discern, any material difference between the parties’ proposed definitions. Based on the record currently before us, we adopt Petitioner’s proposed definition of the level of ordinary skill. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). We note that we would reach the same conclusions under either proposed standard.” slip op. at 9

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986)). The Supreme Court’s decision in [KSR] directs us to construe the scope of analogous art broadly, stating that “familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.” [KSR, 550 U.S.] at 402 (emphasis added).” slip op. at 16

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

    “electronic components . . . comprising . . . at least one of an accelerometer or a gyroscope.” Ex. 1001, 30:15–28. Petitioner relies on Howell-719 to disclose a switch that the user operates “to control audio while wearing the glasses.” Pet. 47 (citing Ex. 1004 ¶ 93). Petitioner relies on Blum to disclose glasses including an accelerometer or gyroscope that allows the user to control a switch, thereby “allowing the user to use a head movement to change the functionality of the glasses.” Id. at 46–47 (citing Ex. 1006, 30:39–45). Petitioner argues that it would have been obvious to an ordinarily skilled artisan to [i]ncorporat[e] [Blum’s] accelerometer- or gyroscope-based switch controls into Howell-719 [as] a simple substitution of one known alternative (accelerometer/gyroscope-based motion detector allowing for head movement to activate switch) for a component (physical switches) serving the same purpose (allowing the user to activate switch to control functionality while the user is wearing the glasses and cannot see the switches) with the added benefit of hands-free control. Id. at 47 (citing Ex. 1002 ¶ 130). Thus, Petitioner’s modification is to replace Howell-719’s “physical switch” with Blum’s “accelerometer/ gyroscope-based motion detector.” Claim 14 also recites “a capacitive touch switch operably coupled to an electronic component in the plurality of electronic components.” Ex. 1001, 30:26–28. Petitioner argues that “Howell-719 discloses a capacitive touch switch operably coupled to the speaker to control the speaker.” Pet. 48. However, as noted above, Petitioner modifies Howell-719’s glasses to replace its switch with an accelerometer/gyroscopebased motion detector. Thus, the glasses as modified by Petitioner do not include Howell-719’s switch, and it is not clear, based on the record, how the requirement for a capacitive touch switch is satisfied in this combination of references. See PO Resp. 18–20; see also PO Sur-reply 7. 2. Conclusion For at least these reasons, on this record, we are not persuaded that Petitioner has shown, by a preponderance of the evidence, that claims 14–21 would have been obvious in view of Howell-719, Sikonowiz, and Blum.” slip op. at 42

  Patent outcomesUS 10,613,355 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,613,355
• Luxottica Of America Inc. v. E-Vision Optics, LLCAll claims unpatentable
  PTAB · Dec 11, 2025 · IPR2024-01071 · APJ Richard H Marschall · IPR · Final written decision

  Claims 1–19 are unpatentable as obvious; the Board found each challenged claim unpatentable under at least one asserted § 103 ground.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We find that the proposals from the parties substantially overlap, such that it remains unclear whether any substantive difference exists. Notably, neither party argues that the minor differences in the proposals lead to a different outcome on any issues in this proceeding. Based on our review of the proposals, we apply Patent Owner’s proposal because it is consistent with the problems and solutions disclosed in the ’541 patent and prior art of record. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record). The outcome of the issues addressed in this Decision would not change if we applied Petitioner’s proposal.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Pursuant to 37 C.F.R. § 42.100(b), we apply the claim construction standard set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Under that standard, we give the words of a claim their plain and ordinary meaning as would have been understood by one skilled in the art at the time of the invention and in the context of the entire patent disclosure. Id. at 1312–13. Only terms in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, Petitioner posits that “no claim terms require construction to resolve the obviousness challenges here.” Pet. 12. Patent Owner does not oppose Petitioner’s position or proffer any constructions of its own. See generally PO Resp. We determine that no express construction of any claim element is necessary to resolve the issues in this proceeding.” slip op. at 9

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

    “Based on our review of the record, we find Petitioner’s arguments and evidence as to the motivation to combine Howell-596 and Howell-158 persuasive. Importantly, the references themselves support the combination because Howell-158 expressly teaches the advantages of using an insulating layer with metal frames and incorporates by reference Howell-596 and its embodiments that disclose all but the insulating layer limitations of claim 1. See Pet. 15–21. While Patent Owner correctly notes that the references do not expressly teach the use of the insulating layer in the Howell-596 embodiments, the references do not teach away from that approach and at least implicitly support Petitioner’s proposed combination, which involves using an advantageous design element (an insulating layer) with another embodiment incorporated into the same document. See id.; Ex. 1006 ¶¶ 3 (incorporating Howell-596), 52–53 (disclosing the use of metal frames and the advantages of using an insulating layer with metal frames). Patent Owner does not dispute that the stated advantages of the insulating layer— preventing short circuits and reducing leakage current—would apply to the embodiments of Howell-596 when those designs incorporate a metal frame. See PO Resp. 18 (arguing that the advantages of the insulating layer only apply if metal frames are implemented in Howell-596’s system). In short, the references themselves amply support Petitioner’s motivation to combine arguments and the expert testimony Petitioner relies on in support of those arguments. See Pet. 21–24; Pet. Reply 2–10; Ex. 1002 ¶¶ 63–69.” slip op. at 19

  • Obviousness (§103) › KSR rationalesMotivation foundUnpatentable

    “POSITA would have found it obvious, through routine optimization, to select a housing module with the claimed thickness of less than or equal to 0.7 mm. See Aller, 220 F.2d at 456; In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”); see also Power- Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co., 282 U.S. 175, 184–85 (1930) (“[O]bviously a mere change in proportion would involve no more than mechanical skill and would not amount to invention.”). Several reasons support Petitioner’s arguments, which we address in turn.” slip op. at 33

  Patent outcomesUS 8,905,541 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,905,541
• Straumann USA, LLC v. Smart Denture Conversions, LLCInstituted
  PTAB · Dec 10, 2025 · PGR2025-00054 · APJ Ryan H Flax · PGR · Institution

  The Board instituted PGR on claims 1–16 on all four grounds, finding at least one claim more likely than not unpatentable based on obviousness, indefiniteness, or lack of written description.

  RulingsInstitution decision

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

    “institute trial in a post-grant review. We institute a post-grant review only if the information presented in the petition filed under 35 U.S.C. § 321, if unrebutted, shows that it is more likely than not that at least one claim challenged in the petition is unpatentable. 35 U.S.C. § 324. On the existing record, we conclude that Petitioner demonstrates it is more likely than not that Petitioner would prevail in showing that at least one challenged claim of the ’781 patent is unpatentable under a presented ground. See generally Pet. Therefore, we grant institution of post-grant review. Our reasoning is discussed below.” slip op. at 2

  • PTAB / AIA Trials › Real party in interest / privityDecided for petitioner

    “STANDING Petitioner states that it certifies that: (1) the ’781 patent is available for post grant review because its earliest claimed effective filing date is October 9, 2018, and the patent issued less than nine months ago, on December 3, 2024; and (2) Petitioner is not barred or estopped from requesting a post grant review on the grounds in this petition. Pet. 5. This is sufficient. See 35 U.S.C. § 100(note)(A)–(B), § 321; 37 C.F.R. § 42.204(a). Patent Owner does not contest standing. See generally Prelim. Resp. B. REAL PARTIES-IN-INTEREST Petitioner states that “[t]he real parties-in-interest are Petitioner Straumann USA, LLC and its affiliates Institut Straumann AG and JJGC Indústria e Comércio de Materiais Dentários S.A.” Pet. 3. Patent Owner raises no objection and itself identifies “Smart Denture Conversions, LLC is the real party-in-interest.” Paper 4, 2; see generally Prelim. Resp. C.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this point, we find little meaningful difference between the two proposed definitions. In fact, neither does Patent Owner’s witness, Mr. Leinsing, who states that his “opinions would not change under either definition.” Ex. 2011 ¶ 42. And, as set forth above, Patent Owner asserts that, for the sake of its present arguments, it matters not which of the two proposed definitions we use for this proceeding. Prelim. Resp. 21. Thus, at this stage, we accept and use Petitioner’s proposed definition of the ordinarily skilled artisan, which, unlike Patent Owner’s, does not implicate reliance on the knowledge of people other than the individual ordinarily skilled artisan. Petitioner’s definition appears to comport with the level of skill in the art reflected in the prior art of record and the ’781 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). This issue may be further developed at trial by the parties, if desired. C.” slip op. at 19

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

    “same claim construction standard that is used to construe patent claims in a civil action in federal district court thus, by default, we give claim terms their ordinary and customary meaning, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” 37 C.F.R. § 42.200(b); Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Petitioner indicates that None of the claim terms of claims 1–16 need to be construed to determine the patentability issues presented in this petition. The petition applies the ordinary meaning of the claim language as it would be understood by a POSA after reading the ’781 patent. Ex. 1002, ¶130. Petitioner will propose a construction if Patent Owner argues or the Board determines that one is required for any term. Pet. 31 (citing Ex. 1002). And, Patent Owner presents no express position on claim construction at this point. See generally Prelim. Resp. At this stage of the proceeding, we do not expressly construe any claim terms; however, this position is preliminary and we may change it based on the fully developed record at trial.8 D.” slip op. at 19

  Claim construction§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 12,156,781
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Dec 8, 2025 · IPR2025-00897 · APJ John D Hamann · IPR · Institution

  The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that the Kim, Dahlman, and Kim966 combination renders claim 1 obvious.

  RulingsInstitution decision

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

    “review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). An inter partes review may be instituted if “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(a). Upon consideration of the papers, we determine that the information presented in the Petition demonstrates that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’527 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “invention of the ’527 patent “would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, along with two years of experience designing or developing wireless networks, including long-term evolution LTE/4G or 5G new radio (NR) cellular technology,” and that “[a]dditional education might substitute for some of the experience, and additional substantial experience might substitute for some of the educational background.” Pet. 12 (citing Ex. 1003 ¶¶ 40–43). Patent Owner at this stage of the proceeding does not provide an alternative definition for a level of skill in the art that one would have had at the time of the invention of the ’527 patent or identify any shortcoming in Petitioner’s formulation. See Prelim. Resp. 3–4. For purposes of this Decision on Institution, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 12. We view the definition for the level of ordinary skill is consistent with the ’527 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 6

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

    “Petitioner argues that “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. At this stage, Patent Owner agrees that no terms need construction. Prelim. Resp. 3. We determine that no express constructions are needed for us to render our Decision on Institution. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). Rather, at this stage of the proceeding, we apply the plain and ordinary meaning of the claim terms.” slip op. at 7

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

    “discloses the preamble and the remaining limitations of claim 1. Pet. 38–64. Petitioner identifies where the combination of Kim, Dahlman, and Kim966 teaches these limitations, supported with testimony from Dr. Mandayam, which Patent Owner does not specifically rebut at this stage. We determine, on this record, that the combination of Kim, Dahlman, and Kim966 teaches the preamble (whether or not limiting) and the remaining undisputed limitations of claim 1. See LG Elecs., Inc. v. Conversant Wireless Licensing S.A.R.L., 759 F. App’x 917, 925 (Fed. Cir. 2019) (nonprecedential) (“The Board is ‘not required to address undisputed matters’ or arguments about limitations with which it was never presented.”) (quoting In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016)). We also find that Petitioner has provided sufficiently articulated reasoning, which Patent Owner does not specifically address at this stage, to support combining Kim, Dahlman, and Kim966’s teachings in the manner Petitioner does. Pet. 21–38. 3. Summary In summary, based on the current record, we determine that Petitioner shows a reasonable likelihood that the combination of Kim, Dahlman, and Kim966 renders claim 1 obvious.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,944,527
• Anker Innovations Ltd. v. Powermat Technologies Ltd.All claims unpatentable
  PTAB · Dec 5, 2025 · IPR2024-00994 · APJ Ken B Barrett · IPR · Final written decision

  Claims 1–7 and 9–14 are unpatentable as obvious over the asserted combinations of Onishi, Flowerdew, Baarman392, Partovi, and Tocci.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner’s proposed experience of two years in the field of wireless/inductive charging is a bit more specific than Petitioner’s proposal of three years of experience with circuits and “familiarity with power electronics and inductive power transfer circuits.” We, however, discern little material difference between the parties’ proposed 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 9

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

    “Even if the Specification identified “linear regulation/control as being a central aim” of the ’696 patent, Patent Owner has offered no persuasive reason why a linear-control-related limitation should be read into independent claim 1, and we decline to do so. Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (“While we read claims in view of the specification, of which they are a part, we do not read limitations from the embodiments in the specification into the claims.” (citing Liebel–Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004))); cf. Ex. 1105, 40 (the District Court, in the parallel litigation, excluding a witness’s testimony that the “substantially different” term requires “allow[ance] for some incremental change (increase or decrease) in frequency while remaining in the near-linear/linear regions” because, inter alia, Powermat “fails to offer any particularized arguments explaining why the ‘allow[ance]’ construction is proper.” (alterations in original)). Patent Owner also relies on dependent claim 2, which depends from independent claim 1. PO Resp. 28–29. Dependent claim 2 adds to claim 1 the requirement that the driver be configured to increase and decrease the transmission frequency when a particular signal is received. See Ex. 1001, 28:47–54. Patent Owner asserts that this means that the driver is configured to increase/decrease the “substantially different” frequency, namely a frequency that lies within the near-linear region of a frequency-amplitude graph, and argues that, “[i]n reading claim 2 as a whole, a POSITA would understand that the ’696 Patent is directed to a linear control technique for predictably regulating power transfer.” PO Resp. 28–29 (citing Ex. 2006 ¶ 101). Even if dependent claim 2 called for linear control as Patent Owner appears to assert, we would not read such a limitation into the underlying independent claim. See Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971–72 (Fed. Cir. 1999) (“The doctrine of claim differentiation . . . normally means that limitations stated in dependent claims are not to be read into the independent claim from which they depend.”); but see PO Sur-reply 4 (arguing for a narrower interpretation of independent claim 1 because it must be read in the context of the entire patent, which includes dependent claim 2). In light of the parties’ agreement and the Specification’s description” slip op. at 15

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Dr. Woods testifies that Onishi’s “Paragraph [0180] is unambiguous that FIG. 4 does not illustrate the frequency-response of a single coil in isolation, but instead illustrates the ‘resonance characteristics of the primary coil L1 and the secondary coil L2’ when the coils are brought in electromagnetic proximity of each other for charging—i.e., in an inductively coupled state.” Ex. 1101 ¶ 18. Dr. Woods, in support of his opinion, notes that Onishi’s legend for Figure 4 describes f0 as the “RESONANCE FREQUENCY IN LOAD-CONNECTED STATE.” Id. We find Dr. Woods’s testimony more credible than Dr. Mercier’s. We disagree with Patent Owner’s argument (PO Resp. 35) that Petitioner’s reliance on Onishi’s Figure 4 is misplaced, and we find that Figure 4 discloses a resonant frequency of the inductive couple between the primary and secondary coils, as recited in limitations 1.4 and 1.7.” slip op. at 32

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

    “We do not find Patent Owner’s arguments persuasive. We agree with Petitioner that Patent Owner’s arguments are incorrectly premised on a hypothetical combination involving the bodily incorporation of the two references’ specific structures. See Pet. Reply 17. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). Rather, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Int’l Co., 550 U.S. at 417. Petitioner’s proposed combination is the application, to Onishi’s charging system, of Flowerdew’s general teaching of the technique of using an alignment mechanism in order to optimize the alignment of the inductive coils and to maximize the inductive coupling. See, e.g., Pet. 15 (“[A] POSITA would have been motivated to implement Onishi in a manner that includes an alignment mechanism as suggested by Flowerdew (e.g., a dished recess or other shaped surface feature, a directional logo/marker, or both) so that the primary and secondary coils would be more readily ‘optimized’ for alignment and the inductive ‘coupling is maximized.’”). Flowerdew teaches, for example, that, with the use of a dished charging surface, the secondary unit “tends to align in one axis” and “[t]his alignment is such that the coupling between a solenoid receive coil in secondary unit 304 and the charging coils of charger 302 is maximized.” Ex. 1005, 11:25–52. Petitioner, with the supporting testimony of Dr. Woods, contends, and we agree, that a person of ordinary skill in the art “would have been sufficiently skilled to implement [the proposed] combination given the predictable techniques disclosed in each reference and the relatively advanced state of the art at the time.” Id. at 17 (citing Ex. 1003 ¶ 55). We determine that Petitioner has shown that the proposed combination teaches or suggests the subject matter of limitation 1.3 and that Petitioner has set forth adequate and persuasive reasons with rational underpinning as to why a person of ordinary skill in the art would have modified Onishi’s system to utilize an alignment mechanism. We also determine, for the reasons stated by Petitioner, that a person of ordinary skill in the art would have had a reasonable expectation of success in making the proposed combination. See Pet. 16–17; Ex. 1003 ¶ 55.” slip op. at 23

  Patent outcomesUS 9,048,696 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,048,696
• Apple Inc. v. Apex Beam Technologies LLCInstituted
  PTAB · Dec 2, 2025 · IPR2025-00894 · APJ Scott A Daniels · IPR · Institution

  The Board instituted IPR on claims 1–20 and all petitioned grounds, finding a reasonable likelihood that Yeo and TS36 render at least claim 1 obvious.

  RulingsInstitution decision

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

    “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 at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims. slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art stating that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 2. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’767 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 9

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)No construction neededNot reached

    “under 112(f) pointing out the respective functions and structure disclosed in the ’767 patent specification. Pet. 18–20. Patent Owner does not dispute the construction of these terms, stating only “that claim construction is not required to resolve any issues.” PO Resp. 2 (citing Pet. 18–20). Where there is no dispute and our Decision does not turn on any particular construction of these terms, we need not decide at this point whether “receiver module” and “transmitter module” invoke means-plus-function under 112(f). Pet. 13; Prelim. Resp. 5. And, because there is no dispute, we conclude that no express interpretation of any claim term is necessary to determine whether to institute an inter partes review in this proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 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” slip op. at 10

  • BurdenInstituted

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1889, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 8

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,462,767
• Straumann USA, LLC v. Smart Denture Conversions, LLCInstituted
  PTAB · Nov 21, 2025 · IPR2025-00956 · APJ Ryan H Flax · IPR · Institution

  The Board instituted IPR on claims 1–12 under all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable.

  RulingsInstitution decision

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

    “institute trial in an inter partes review. We institute an inter partes review only if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314. After reviewing the parties’ submissions in view of the existing record, we conclude that Petitioner demonstrates a reasonable likelihood it would prevail in showing that at least one challenged claim of the ’992 patent is unpatentable under the presented grounds. See Pet. Therefore, we grant institution of inter partes review. Our reasoning is discussed below. A.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “These two proposed definitions of the ordinarily skilled artisan share many consistencies, for example, the types of degrees and experience such a person would have had, but differ in the number of years of experience. Petitioner proposes the ordinarily skilled artisan would have had at least five years of experience and Patent Owner proposes at least three years (which would necessarily include five years, too). Patent Owner also proposes that the ordinarily skilled artisan would have consulted a dentist, oral surgeon, prosthodontist, or periodontist with experience in dental implants and prosthetics. At this point, we find little meaningful difference between the two proposed definitions. In fact, neither does Patent Owner’s witness, Mr. Leinsing, who states that his “opinions would not change under either definition.” Ex. 2011 ¶ 40. Thus, at this stage, we accept and use Petitioner’s proposed definition of the ordinarily skilled artisan, which, unlike Patent Owner’s, does not implicate reliance on the knowledge of people other than the individual ordinarily skilled artisan. Petitioner’s definition appears to comport with the level of skill in the art reflected in the prior art of record and the ’992 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). This parties may further developed this issue at trial, if desired. C.” slip op. at 13

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

    “The Board interprets claim terms in an inter partes review using the same claim construction standard that is used to construe patent claims in a civil action in federal district court. 37 C.F.R. § 42.100(b). In construing claims, district courts and the Board here, by default, give claim terms their ordinary and customary meaning, which is “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).” slip op. at 14

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

    “Here, the first claim limitation at issue is broad, i.e., different thread pattern/profile between a definite and a temporary screw, and the Specification’s and priority applications’ disclosure is narrow and specific, asymmetric buttress style threads in a temporary screw and symmetrical threads in a definite screw (are different). Any apparent predictability in or maturity of the relevant field here must be contrasted with the fact that the Specification, considering the ’992 patent itself or any of the identified priority applications, never once even discusses the (claimed) concept of specifically differing the thread style between a temporary and a definitive screw. Any differences in thread style are not called out by the disclosure, but are described and can be discerned only in relation to the respective threads’ functionality, i.e., Fig. 75’s temporary screw 190 has buttress-style threading so it can be pulled out rather than unscrewed from the abutment; Fig. 9’s definitive screw 75 has male threads that fill the female threads of the abutment 8 for a secure permanent engagement. Ex. 1001, 15:23–30, 21:25–44, 23:3–36; Ex. 1012, 97–98, Figs. 9, 75. And, although it is possible for a single disclosed species to provide written description support for a claimed genus, “a sufficient description of a genus . . . requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350; see also Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332, 1344 (Fed. Cir. 2013). That does not appear to be the case here—the present record does not support that the described asymmetrical buttress, serrated style of different temporary screw threading (relative to that of the definitive screw and regardless of the direction of the threads for rotation) is sufficiently representative of the genus’s “different” thread patterns/profiles. See, e.g., Ex. 1006 (a buttress style thread does not function the same as a buttress reverse or 75º joint profile or rounded, or trapezoidal thread).” slip op. at 30

  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham
  Patents in suitUS 11,937,992

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.