- PTAB · Oct 8, 2024 · IPR2024-00642 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 7, 10–13, 15–18, and 20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the pre-institution filings “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.” Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’473 patent on all challenges set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedPetitioner expert creditedDecided for petitioner
“We begin by interpreting Petitioner’s proposal as to the level of skill in the art, which refers to having a bachelor’s degree and “at least 2 years of experience in product design and development in the field of griddle cooking stations and/or outdoor cooking grills” or no degree and at least 5 years of such experience. See Pet. 15. Because the proposal does not specify the source of the “experience,” we agree with Petitioner that the proposal does not require design and development experience that stems “from working for a company in the griddle or grill industry” and that “the relevant design experience can come from any source, including designing and developing griddles in academia as well as teaching students.” Prelim. Reply 5. Patent Owner does not dispute Petitioner’s arguments on these points and, as noted, adopts the wording of Petitioner’s proposal as its own. See Prelim. Sur-reply 3–4; Prelim. Resp. 12. For purposes of this Decision, we also adopt the wording of Petitioner’s proposal as our own, and note that the relevant design experience can come from any source.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“On this record, we decline to adopt Patent Owner’s proposed construction of “rib” that requires “an elongated raised piece of strong or thick material across a surface or through a structure, serving to support or strengthen the structure.” Prelim. Resp. 13. Several reasons support this conclusion. First, none of the claim language supports Patent Owner’s proposed construction. The claims require a “front rib” and “multiple lateral ribs” that define “heating regions” between the laterally-spaced ribs that “funnel” heat from the gas burners away “from a rear side of the cooking station.” See Ex. 1001, claims 1, 10. None of this language refers to the ribs as “strong” or “thick” such that they serve “to support or strengthen the structure” as required by Patent Owner’s construction. See id. Second, the specification repeatedly describes the ribs as performing the function described in the claims, i.e., a structure for “venting or channeling convection heat” from the burners. Ex. 1001, 7:3–8; see also id. at 7:54–63, 8:46–65, 9:10–29, 10:31–38, 10:51–58. Patent Owner points to portions of the specification that discuss the ribs also providing structural rigidity to prevent warping, but we agree with Petitioner that the cited portions relate to an optional embodiment where the ribs “may also serve as stabilizers.” Ex. 1001, 7:51 (emphasis added). Because we generally do not read in such optional, functional features of a claimed structure to a claim limitation, we find the portions of the specification cited by Patent Owner do not support its proposed construction. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015). For similar reasons, we are unpersuaded by Patent Owner’s argument that Figure 4 supports its construction merely because it discloses ribs that may be viewed as consistent with Patent Owner’s proposed construction. See Prelim. Resp. 13–14; Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1306–07 (Fed. Cir. 2003) (“[T]he mere fact that the patent drawings depict a particular embodiment of the patent does not operate to limit the claims to that specific configuration.”). Based on our review of the claim language and specification, we view the limitations Patent Owner seeks to add via its proposed construction as optional aspects of the claimed ribs. Because we find insufficient support for Patent Owner’s proposed construction in the intrinsic evidence, we find no reason to resort to extrinsic evidence, such as the dictionary definitions proffered by Patent Owner or the background art discussed by Petitioner. See Seabed Geosolutions, 8 F.4th at 1287. Further, even if we agreed with Patent Owner that the claimed ribs must have some thickness and provide some support and strength to the structure, we still would not adopt Patent Owner’s proposed construction because it would introduce unnecessary ambiguity into the claims. For example, Patent Owner’s construction refers to a “piece of strong or thick material,” which would mean that the rib limitation may cover strong and thin material or thick and weak material, but Patent Owner has not supported a construction that expressly covers such structures due to the inclusion of the term “or” in its construction. See Prelim. Resp. 13 (emphasis added). In addition, the references to “strong” and “thick” in the proposed construction have no reference point, and it remains unclear, based on the claim language and specification, how strong and/or thick a rib must be to provide “support” and “strength” to the structure to prevent warping or otherwise meet the proposed construction. See id. Because Patent Owner’s proposed construction lacks sufficient clarity, we do not adopt it. Based on the foregoing, we decline to adopt Patent Owner’s construction at this stage of the proceeding and apply the ordinary meaning to the term “rib” in the challenged claims.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“Based on the current record, we find Petitioner’s arguments as to these “rib” limitations persuasive. Williams discloses longitudinally extending front dam 42 corresponding to the front rib and longitudinally extending sidewalls 44 that correspond to the claimed lateral ribs. See Pet. 19–20. Williams states that “[t]he presence of the perimeter wall (front dam 42, rear dam 46, and sidewalls 44) helps create the upper zone 40 where the portion of the hot combustion gases are at least temporarily trapped.” Ex. 1005, 3:65–4:2. Based on the current record, Petitioner establishes that front dam 42 and sidewalls 44 correspond to the claimed “front rib” and “lateral ribs” limitations, respectively, and that these ribs define regions and channel convection heat and therefore fall within the scope of the claimed ribs. Patent Owner’s arguments do not directly refute Petitioner’s assertions on these points and are unavailing because they rely on Patent Owner’s proposed claim construction.6 For the reasons explained in the claim construction portion of this Decision, we decline to adopt Patent Owner’s proposed construction that requires a certain thickness or strength to meet the rib limitation. We further note that we would reach the same conclusion had we adopted Patent Owner’s construction, as we understand it. Petitioner 6 In a later section of its Preliminary Response addressing the limitation requiring a “front rib . . . integrally formed with the underside surface of the griddle,” Patent Owner argues that “[r]egardless of the construction of ‘rib,’ none of the proposed Grounds of the Petition persuasively demonstrate that such a claim element was disclosed or obvious.” Prelim. Resp. 36. Based on our reading of the Preliminary Response, this argument was meant to state that regardless of the construction of “rib,” the grounds still fail to teach a “front rib . . . integrally formed with the underside surface of the griddle.” See id. (emphasis added). To the extent that Patent Owner sought to argue that the references fail to disclose the claimed “rib” standing alone, even without resort to Patent Owner’s proposed construction, the Preliminary Response fails to explain or develop such an argument.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,660,473 - PTAB · Oct 1, 2024 · IPR2024-00692 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR of claims 1–9 and 11–21 on all asserted grounds, finding a reasonable likelihood of prevailing on obviousness over Kane and Beckley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “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 [one] of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. In our view, Petitioner’s analysis, on this record, adequately identifies where all the elements of claim 1 are found in Kane and Beckley. We also determine that Petitioner provides sufficient arguments and evidence, at this stage of the proceeding, to support its reasoning that a person having ordinary skill in the art would have been motivated to modify Kane’s compact wallet to incorporate the removable clip taught by Beckley, as Petitioner proposes.” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As explained by the Federal Circuit, [f]or objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention. A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“previously were presented to the Office.”8 Our § 325(d) analysis employs a two-prong framework: (1) whether the prior art and arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those prior art and arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,791,808 - PTAB · Sep 25, 2024 · IPR2024-00582 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–6, 14–16, and 19 on all asserted grounds, finding a reasonable likelihood Valve would show at least one claim unpatentable based on Pratt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). A claim is unpatentable under § 103 if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 21. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’738 patent. See, e.g., Ex. 1001, 1:6–61. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Valve’s proposed level of skill for this Decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION In an IPR, we construe a patent claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This generally includes “construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313, 1321. Neither party argues that we should construe any particular claim terms explicitly. Pet. 8; Prelim. Resp. 21. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of claim language is disputed, we discuss it below in the context of the prior art. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,175,738 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00638 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–11 and all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 23–35; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the associated litigation . . . the grounds raised in the Petition for IPR or any other grounds that could have reasonably been raised before the PTAB in this proceeding” (Paper 7), we do not discretionarily deny institution under Fintiv.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“surface. Patent Owner passes over the disclosure in Kim’s Figure 5b, which appear to depict the claimed big toe-to-little toe slope when the golfer is attempting a swing. Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995), a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). In addition, Figures 1, 2, and 3a of Kim appear to show an incline from the toe to heel (as is typical in shoes). See also Ex. 1005 ¶ 27 (“Except for the outsole 10 including the inclined lower surface 12, the golf shoe 100 of the present invention is substantially the same as conventional golf shoes.”). Thus, on this record, we are persuaded that Kim sufficiently discloses the slopes required by claim 1. Reviewing the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Kim.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“2. Analysis Patent Owner argues that Kim does not disclose the slopes required in independent claim 1. Prelim. Resp. 35–40. Patent Owner focuses its analysis on Figure 5a, however, which depicts the golfer standing on a hard surface. Patent Owner passes over the disclosure in Kim’s Figure 5b, which appear to depict the claimed big toe-to-little toe slope when the golfer is attempting a swing. Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes, but not always, embodies a claimed method nonetheless infringes,’ Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995), a prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). In addition, Figures 1, 2, and 3a of Kim appear to show an incline from the toe to heel (as is typical in shoes). See also Ex. 1005 ¶ 27 (“Except for the outsole 10 including the inclined lower surface 12, the golf shoe 100 of the present invention is substantially the same as conventional golf shoes.”). Thus, on this record, we are persuaded that Kim sufficiently discloses the slopes required by claim 1. Reviewing the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Kim.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes. Pet. 15 (citing Ex. 1002 ¶ 31). Patent Owner does not contest. Prelim. Resp. 17. Reviewing the ’760 patent and the cited prior art, we determine that Petitioner’s proposed level of skill is reasonable and adopt it for purposes of this Decision.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,064,760 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 12, 2024 · IPR2024-00636 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–8 and all asserted grounds, finding a reasonable likelihood that claims 1 and 5 would have been obvious over Kim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“based on the related district court matters identified above. Prelim. Resp. 22–34; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the associated litigation . . . the grounds raised in the Petition for IPR or any other grounds that could have reasonably been raised before the PTAB in this proceeding” (Paper 7), we do not discretionarily deny institution under Fintiv.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’786 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes. Pet. 15 (citing Ex. 1002 ¶ 31). Patent Owner does not contest. Prelim. Resp. 17. Reviewing the ’786 patent and the cited prior art, we determine that Petitioner’s proposed level of skill is reasonable and adopt it for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Patent Owner proposes that the term “athletic positioning” in independent claim 5 should be construed to mean “a heel section higher than the toe section and the outside edge of the toe section higher than the inside edge of the toe section.” Prelim. Resp. 20–22. However, independent claim 5 already appears to give the term “athletic positioning” this meaning, where it describes the various slopes. In particular, the claim recites that the toe section forms an angled support platform that has a first slope along the inner edge of the sole and a third slope along the outer edge of the sole, each of which extend from the toe to the heel. Accordingly, Patent Owner’s proposed construction appears unnecessary in view of the claim. In sum, we do not explicitly construe any limitations at this time.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,674,786 - Under Armour, Inc. v. Athalonz, LLCInstitutedPTAB · Sep 11, 2024 · IPR2024-00639 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–5 and 8 across all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). The Director’s Memo 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.” Director’s Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). Petitioner stipulates that it “will not pursue in the associated litigation, Athalonz, LLC v. Under Armour, Inc., Civil Action No. 2:23-cv-00193-JRG (E.D. Tex.), the grounds raised in the Petition for IPR or any other grounds that could have reasonably been raised before the PTAB in this proceeding.” Paper 7, 1. The stipulation is similar to that provided in Sotera. Accordingly, pursuant to the Director’s Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 7
- 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 Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–5 and 8 of the ’768 patent on all presented challenges. 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes.” Pet. 20–21 (citing Ex. 1002 ¶ 30). According to Petitioner, “the claims are obvious in view of any reasonable definition of a [person of ordinary skill in the art].” Id. at 21. “Patent Owner reserves the right to dispute Petitioner’s definition if an [inter partes review] is instituted” and argues that the “preliminary response establishes that Petitioner’s arguments fail even under its preferred definition of the level of ordinary skill.” Prelim. Resp. 16 (citing Pet. 20–21). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Petitioner’s quoted portion of the ’768 patent states that: The integrated sole 10 and insole 12 is comprised of one or more materials that provides a more compressible area towards the big toe/ball of foot area and increasingly less compressible away from the big toe/ball of foot area to facilitate an athletic position. . . . For example, the integrated sole and insole may include a rigid material as an outersole (e.g., a sport specific bottom) to provide a base. On top of the base, the integrated sole and insole includes one or more varying compressible materials. For example, the next layer is a single resilient material (e.g., rubber, gel, foam, synthetic material, etc.) of varying density to provide a compressible gradient. As another example, the next layer includes a plurality of materials, each having a shape to collectively provide the athletic positioning shape. In addition, at least some of the materials have a different level of compressibility to facilitate the compressible gradient. Ex. 1001, 27:47–67 (emphases added). Based on this description, one of ordinary skill in the art would have likely understood “gradient compression factor” to mean that the insole material may have varying levels of compressibility. And, when read in the context of claim 1, it means that the second material is increasingly less compressible from the inner edge to the outer edge of the forefoot platform. See Pet. 17–18. Patent Owner does not dispute that understanding of “gradient compression factor” as used in claim 1. See Prelim. Resp. 18. From our review, the parties’ agreed-upon construction of the term “gradient compression factor” appears consistent with the plain language of the claim and the Specification. Thus, we adopt it for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,375,768 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · Aug 13, 2024 · IPR2024-00557 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–8, 11, 12, and 15–21 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable over Banerjee.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Immersion argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’067 patent. Prelim. Resp. 50–56 (discussing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co- 1 Banerjee et al., US 2017/0108930 A1, published Apr. 20, 2017 (Ex. 1011). 2 Meglan et al., US 2012/0045742 A1, published Feb. 23, 2012 (Ex. 1012). 3 Rogers et al., US 2017/0354864 A1, published Dec. 14, 2017 (Ex. 1010). pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board addressed nearly exactly the same arguments and issues raised by Immersion here. We adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.”). Therefore, we do not discretionarily deny the Petition.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 12. The parties’ proposed levels of ordinary skill appear to be substantially similar, are both supported by testimonial evidence, and appears to be consistent with the asserted prior art and the types of problems and solutions in the ’067 patent. See, e.g., Ex. 1001, 1:7–53. At this stage, we discern no difference in the outcome of this decision from choosing one over the other. We adopt Valve’s proposed level of skill for this decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms explicitly. Pet. 7–9 (citing Ex. 1001, 3:1–4, 5:60–62; Ex. 1003 ¶¶ 77– 80; Ex. 1006, 4–5); Prelim. Resp. 13. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of any claim term is disputed, we discuss it below in the context of the prior art. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(g) Conclusion as to claim 1. For the above reasons, we determine that Valve has shown, sufficiently at this stage, that Banerjee discloses all the limitations of claim 1, or at least that a person of ordinary skill in the art would have had reason, in view of Banerjee, to combine features, including a sensor, as recited in claim 1. We therefore determine that Valve is reasonably likely to prevail in showing that claim 1 is unpatentable under §§ 102 or 103 based on Banerjee. 3. Other Claims Because Valve has shown a reasonable likelihood of prevailing with respect to claim 1 as discussed above, we will institute on all claims and all grounds raised in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,665,067 - PTAB · Aug 9, 2024 · IPR2024-00385 · APJ Michael L Woods · IPR · Institution
The Board instituted inter partes review of claims 1–4, 6, and 7 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board evaluates discretionary denial under § 325(d) using a two-part framework: first, the Board considers whether the same or substantially the same art or arguments were previously presented to the Office; and if so, second, the Board considers whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In determining whether the same or substantially the same art or arguments were previously presented to the Office, the Board considers the following nonexclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; and (3) the extent of the overlap between the arguments” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “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). After considering the Petition, the Preliminary Response, the Reply, the PO Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’332 patent. Accordingly, we institute an inter partes review of claims 1–4, 6, and 7 of the ’332 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“A person of ordinary skill in the art (POSITA) would have had: (i) a B.S. degree in Chemical Engineering, Petroleum Engineering, or an equivalent field and (ii) two or three years of academic or industry experience in chemical processing systems, oil and gas production and/or refining; or comparable experience. Additional work experience can substitute for educational or research experience, and vice versa. Pet. 8 (citing Ex. 1002 ¶¶ 26–29); see also Prelim. Resp. 16 (agreeing with Petitioner’s proposed definition of a POSITA). For purposes of this Decision, we adopt the parties’ assessment of the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding, we decline to adopt Patent Owner’s interpretation that cryogenic conditions occur only below 50°F. See Prelim. Resp. 19 (citing Ex. 2001 ¶ 55). For purposes of this Decision, we need not and do not formally determine the temperature at which cryogenic conditions occur, as our construction would not affect our decision to institute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with Petitioner that “[e]xplicit construction of terms is unnecessary because it is not dispositive—the art teaches the claims under any reasonable construction.” Pet. 8 (citing Vivid Techs., 200 F.3d at 803). As explained below, for purposes of institution, Petitioner has shown a reasonable likelihood that Aycaguer does not disclose subjecting the recited streams to “cryogenic conditions” at any temperature, as recited in Limitation 1.6. See Pet. 34–36; see also infra § IV.D.2.g.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,505,332 - PTAB · Aug 6, 2024 · IPR2024-00556 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–18 on all grounds, finding a reasonable likelihood that claim 1 would have been obvious over Astala and Shahoian and over Keely and Kolmykov-Zotov.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“II. DISCRETIONARY DENIAL Patent Owner argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’507 patent. Prelim. Resp. 43–49 (discussing Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co-pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board was faced with substantially similar arguments and issues raised by Patent Owner here; we adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts”). Therefore, we do not discretionarily deny the Petition.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’507 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both proposed levels of skill appear to be substantially similar and reasonable in view of the disclosures in the ’507 patent and asserted prior art. At this time, we would discern no difference in outcome from choosing one over the other. We adopt Petitioner’s proposed level of skill for purposes of this Decision because it appears to be a reasonable definition and Petitioner bears only a “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“time interval has elapsed.” Prelim. Resp. 18. We disagree that the claims preclude any particular combination of events, so long as the three conditions are satisfied in the process of determining of a press. The claim does not specify or limit the ways in which the three conditions need to be satisfied to determine a press, and Patent Owner offers no claim construction analysis that would so limit the claims. In sum, we agree with Petitioner at this stage that the three conditions of the “determining a press” limitation are independent insofar as satisfaction of one condition is not predicated on the satisfaction of another condition. In our view, however, that point is merely reciting what the claim already states: that “determining a press” is defined as the satisfaction of the three claimed conditions. Claim 1 does not set out any further requirements. Thus, we do not see the need to construe the claim beyond its plain language. We do not explicitly construe any terms in this Decision at this time because the issue of whether Petitioner has shown a reasonable likelihood can be resolved without explicitly construing the claims. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,749,507
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.