- PTAB · Jun 11, 2025 · IPR2025-00139 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–10 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“d. Overlap of Issues “[I]f the petition includes the same or substantially the same claims, grounds, arguments, and evidence as presented in the parallel proceeding, this fact has favored denial.” Fintiv, Paper 11 at 12. “Conversely, if the petition includes materially different grounds, arguments, and/or evidence than those presented in the district court, this fact has tended to weigh against exercising discretion to deny institution under NHK.” Id. at 12–13. Concerns about the degree of overlap may be mitigated where a petitioner agrees not to pursue in the parallel district court litigation the grounds advanced in the petition. Sand Revolution II, LLC v. Cont’l Intermodal Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 11–12 (PTAB June 16, 2020) (informative). The Board suggested that a broader stipulation such as one stipulating that the petitioner “would not pursue any ground raised or that could have been reasonably raised in an IPR, i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patents or printed publications” would better address concerns relating to overlapping issues. Id. at 12 n.5. Here, Petitioner’s stipulation is broader—Petitioner stipulates that, if the Board institutes IPR in this proceeding on the grounds presented in the Petition, Petitioners will not pursue an invalidity defense in the [Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the grounds that were raised or any grounds Petitioner[] reasonably could have raised in the IPR. Prelim. Reply 3. Petitioner’s stipulation is similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, 18–19 (PTAB Dec. 1, 2020) (precedential in relevant part), which was found to obviate much, if not all, of any potential overlap between the issues in the proceeding and the district court proceeding. See Prelim. Sur-reply 3 (acknowledging that “Petitioner[] offered a Sotera stipulation.”) Accordingly, the facts underlying this factor weigh strongly against exercising our discretion to deny institution.” slip op. at 13
- Other 314aDenied
“Patent Owner argues that the Petition improperly presents voluminous and excessive grounds challenging the claims of the ’878 patent. Prelim. Resp. 10–14. Patent Owner argues that the twenty distinct grounds set forth in the Petition alone is reason to deny institution. Id. at 11. Patent Owner argues that Petitioner’s showing regarding the VFD, switchgear, and enclosure recitations of claim 1 require us to “pick-and-choose” which “prior art evidence” is being applied. Id. at 14. We are not persuaded that the Petition sets forth such voluminous or excessive grounds asserting unpatentability that we should deny institution. Although Petitioner does set forth twenty grounds, sixteen of the grounds are directed to a single dependent claim. See Pet. 16–17. And of the four grounds challenging independent claim 1, Petitioner relies primarily on the combined teachings of Morris and Oehring IV to disclose or teach most of the claim recitations, relying on Premset Catalog and Premset Brochure to teach front-aligned, shielded cable connections and on Payne to provide an alternate teaching of using a common support structure. See Pet. 48–51, 70–74. The instant Petition is quite unlike those in the decisions cited by Patent Owner, which dealt with petitions asserting challenges containing multiple instances of “and/or” that resulted in hundreds of challenges or asserting multiple challenges grouped together in an indiscernible claim chart. See Prelim. Resp. 10 (citing Adaptics Ltd. v. Perfect Co., IPR2018-01596, Paper 20 (PTAB Mar. 6, 2019) (informative); Uber Techs., Inc. v. Surgetech LLC, IPR2023-00738, Paper 8 (PTAB Oct. 23, 2023); EnergySouce Mins., LLC v. TerraLithium LLC, IPR2019-01607, Paper 10 (PTAB May 4, 2020)). And although we agree that the Petition is not the epitome of clarity, we are able to interpret Petitioner’s arguments as set forth below. Accordingly, we determine that the circumstances presented weigh against exercising discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the number of challenges presented in the Petition.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 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.”). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds. slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the effective filing date would have had either “a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field, as well as at least 2 years academic or industry 2 At this stage of the proceeding, the parties have not directed us to any such objective evidence. experience in the oil and gas industry, including well drilling, completion, or production” or “at least four years industry experience in the oil and gas industry including well drilling, completion, or production.” Pet. 17 (citing Ex. 1003 §§ V.A, VII). “Patent Owner applies the same skill level proposed by Petitioner.” Prelim. Resp. 9. We find Petitioner’s uncontested definition to be consistent with the problems and solutions disclosed in the ’878 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,208,878 - PTAB · Jun 10, 2025 · IPR2025-00170 · APJ Eric C Jeschke · IPR · Institution
Instituted IPR on claims 1–36 on all asserted grounds; the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states that it “does not dispute” the definition of one of ordinary skill in the art proposed by Petitioner and “notes that it substantially tracks” Patent Owner’s definition. Prelim. Resp. 20; see also id. at 20–21 n.7 (defining one of ordinary skill in the art as having “at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of machines, or have had equivalent knowledge and experience”). Petitioner’s proposed definition of the level of ordinary skill in the art appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579. Patent Owner’s proposal is the same, except for use of the term “machines” instead of “vehicles.” Furthermore, Patent Owner does not argue at this stage of the proceeding that Petitioner’s proposal for the level of ordinary skill leads to an improper understanding of how a skilled artisan would understand either the challenged patent or the prior art. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the Texas District Court stayed the Texas Litigation pending the resolution of this inter partes review and the related inter partes reviews. See Ex. 1037 at 6; Prelim. Reply 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Specification. We first address the sentence highlighted in the Board’s request for additional briefing on claim construction: “As used herein, the term ‘mainframe’ generally refers to a single weldment to which the loader 8 is attached, optionally through one or more pivotal linkages.” Ex. 1001, 4:5–8, quoted at Paper 6 at 3. In the request, the Board sought briefing on whether this sentence is (1) a lexicographical definition of “mainframe” or, in the alternative, (2) merely a description of an embodiment. Paper 6 at 3. The parties both responded that this sentence is not lexicographical, but rather, merely describes an embodiment. See PO Init. CC Br. 1–5; Pet. Init. CC Br. 1–4; PO Reply CC Br. 1 (noting agreement); Pet. Reply CC Br. 1 (same). For the reasons below, we agree with the parties. “To act as a lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ and ‘clearly express an intent to redefine the term.’” Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (quoting Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)). As argued by both parties, the presence of “generally” in the sentence at issue shows a lack of clear intent to redefine “mainframe.” PO Init. CC. Br. 3; Pet. Init. CC Br. 2; cf. ParkerVision, Inc. v. Vidal, 88 F.4th 969, 976–77 (Fed. Cir. 2023) (finding definitional the sentence “[s]torage modules and storage capacitances, on the other hand, refer to systems that store non-negligible amounts of energy from an input EM signal” (emphasis added)); Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007) (finding definitional the sentence “[a] ‘controlled amount’ of protic material is an amount up to that which inhibits the reaction of aniline with nitrobenzene, e.g., up to about 4% H2O based on the volume of the reaction mixture when aniline is utilized as the solvent” (emphasis added)). Because the sentence at issue is not lexicographical, we also agree with the parties that “mainframe” is not limited to a single weldment. Pet. Init. CC Br. 1; PO Init. CC Br. 1–2. Instead, a single-weldment “mainframe” is merely one disclosed embodiment. See Pet. Init. CC Br. 3 (stating that “by including the term ‘generally’ in a statement, the feature (i.e., single weldment) is expressly identified as merely included in some, but not all embodiments”); PO Init. CC Br. 3 (“This language is merely exemplary, using reference numerals to refer to the embodiment’s features and qualifying ‘single weldment’ as referring ‘generally’ to specific embodiments.”). The Iowa District Court reached the same conclusion. See Ex. 1020 at 4 (holding that “‘mainframe’ will be given its plain and ordinary meaning and does not require a single weldment” (emphasis added)), cited” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,975,750 - PTAB · Jun 10, 2025 · IPR2025-00171 · APJ Eric C Jeschke · IPR · Institution
Instituted IPR on claims 1–16 and 19–28 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (internal quotation marks and citation omitted).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the Texas District Court stayed the Texas Litigation pending the resolution of this inter partes review and the related inter partes reviews. See Ex. 1037 at 6; Prelim. Reply 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). 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. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357, 362–63, 369–70 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes 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.”).” slip op. at 2
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,202,266 - PTAB · Jun 10, 2025 · IPR2025-00169 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 50–63, 68, 69, and 80–85 under all asserted grounds after finding a reasonable likelihood of unpatentability for at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” After considering the Petition, the Preliminary Response, the additional briefing, 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 claims 50–63, 68, 69, and 80–85 of the ’386 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the District Court stayed the Parallel Litigation pending the resolution of this inter partes review and the related inter partes review. Ex. 1037, 6; Pet. DD Br. 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (“POSITA”) at the time of invention. Graham, 383 U.S. at 17. Petitioner proposes the following definition for a POSITA: [A] POSITA in February 2015 (the earliest effective filing date claimed) would have had at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of vehicles, or have had equivalent knowledge and experience. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 16–17 (citing Ex. 1003 ¶¶ 17–20). Patent Owner does dispute this definition in its Preliminary Response. Prelim. Resp. 21–22. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it is consistent with the ’386 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - PTAB · Jun 10, 2025 · IPR2025-00168 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 31–49, 70–79, 86, and 87 on all asserted grounds, finding a reasonable likelihood of unpatentability based on the petition’s obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On March 19, 2025, however, the District Court stayed the Parallel Litigation pending the resolution of this inter partes review and the related inter partes review. Ex. 1037, 6; Pet. DD Br. 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id. For part one of the Advanced Bionics framework, we evaluate the following factors: (a) the similarities and material differences between the asserted art and the prior art involved during examination;” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” After considering the Petition, the Preliminary Response, the additional briefing, 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 claims 31–49, 70–79, 86, and 87 of the ’386 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A] POSITA in February 2015 (the earliest effective filing date claimed) would have had at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of vehicles, or have had equivalent knowledge and experience. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 18 (citing Ex. 1003 ¶¶ 17–20). Patent Owner does dispute this definition in its Preliminary Response. Prelim. Resp. 33. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it is consistent with the ’386 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - PTAB · Jun 10, 2025 · IPR2025-00167 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–13, 15, 17, 19–30, and 64–67 on all asserted grounds, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” After considering the Petition, the Preliminary Response, the additional briefing, 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 claims 1–13, 15, 17, 19–30, and 64–67 of the ’386 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“On March 19, 2025, however, the District Court stayed the Parallel Litigation pending the resolution of this inter partes review and the related inter partes review. Ex. 1037, 6; Pet. DD Br. 1. “A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. Factor 1 strongly weighs against discretionarily denying the Petition.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If part one of Advanced Bionics is unsatisfied, discretionary denial is unwarranted, and we need not proceed to part two of Advanced Bionics. Id.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (“POSITA”) at the time of invention. Graham, 383 U.S. at 17. Petitioner proposes the following definition for a POSITA: [A] POSITA in February 2015 (the earliest effective filing date claimed) would have had at least a Bachelor of Science degree in Mechanical or Agricultural Engineering and two years of experience in the design of vehicles, or have had equivalent knowledge and experience. Lack of professional experience can be remedied by additional education, and vice versa. definition in its Preliminary Response. Prelim. Resp. 21. For purposes of this decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as it is consistent with the ’386 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,321,386 - Sram, LLC v. Fox Factory, Inc.All claims unpatentablePTAB · Jun 6, 2025 · IPR2024-00216 · APJ Frances L Ippolito · IPR · Final written decision
Claims 1–9, 11–15, and 19 are unpatentable, including by anticipation over Gartner and Nakaya and obviousness over Gartner and Kodama and Nakaya and Kodama.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (“POSITA”) at the time of the invention of the ’223 patent “would have a degree in Mechanical Engineering and at least three years’ experience in vehicle suspension technology, or a Master’s degree in Mechanical Engineering with a concentration in design of vehicle suspension technology and/or shock absorbers.” Pet. 5–6, n.1. Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. See PO Resp. Based on the complete record, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As Petitioner discerns, claim 1 does not recite “dampening only at the end portion of a compression stroke.” Rather, claim 1 expressly requires “a fluid flow path formed in the bottom out cup for providing fluid communication from the cup to the compression portion of the chamber during a compression stroke of the damper[.]” Ex. 1001, 7:44–47 (emphasis added). In this way, claim 1 contemplates that the bottom out cup operates “during a compression stroke of the damper,” rather than only at the end portion of a compression stroke or only near an end of a compression stroke. Similarly, independent claims 11 and 19 do not require that the bottom out cup provide damping only at the end or near the end of a compression stroke. See Ex. 1001, 8:8–23, 8:61–9:5. Claim 11 recites “a bottom out cup in fluid communication with the damper chamber” and “an adjustable fluid flow path formed in the cup, the flow path providing fluid communication between the cup and the primary compression chamber in a compression stroke of the damper.” Id. (emphasis added). Claim 19 also recites “in a compression stroke of the damper” and does not limit damping to the end, or near the end of a compression stroke. See id. at 8:61–9:5 (“in to the compression chamber at a first rate with the valve in a first position and at a second rate with the valve in a second position where the first rate is greater than the second rate and the valve includes an adjuster accessible from an exterior of the shock absorber.”) (emphasis added). The ’223 patent as a whole also does not describe the bottom out cup as damping or providing dampening only at the end or near the end of the compression stroke, but more broadly as during the compression stroke. With reference to Figure 3A, the ’223 patent discloses that bottom out piston 250 enters “the bottom out cup 275 during a compression stroke of the shock absorber.” Ex. 1001, 3:38–50 (emphasis added). Additionally, we observe that the ’223 patent discloses “[a]s the piston completely engages the cup 275, dampening is increased.” Id. at 3:64–65 (emphasis added). We understand this to mean that bottom out dampening occurs at the end of the compression stroke, but may also occur “during” the compression stroke and “increase” as the piston completely engages the bottom out cup.” slip op. at 16
- Expert testimonyPetitioner expert creditedPatent owner expert creditedDecided for petitioner
“Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Id. code (57) (emphases added). Though Gartner does not explicitly employ the term “bottom out cup,” it is not lost upon us that the internal shock absorber, e.g., shock absorber 400, functions during/in a compression stroke (e.g., after the initial portion of the compression stroke), to provide dampening while protecting from bottoming out. Considering Gartner’s disclosure, we credit Dr. Wang’s testimony because his testimony is better supported by the reference. Dr. Wang configured for providing damping . . . [and] bottom out cup 260, 460 (pink) is formed at the end of compression portion 26.4 (light red) and provides additional damping to reduce bottoming out[.]” Ex. 1019 ¶ 58 (citing Ex. 1010, Abstract, annotated Fig. 12A, 1:15–33, 9:33–48; Ex. 1002 ¶¶ 179– 180, 188–190; Pet. 108–110). As discussed above, internal shock absorber 400 contains cup-shaped compression volume 460.4 that provides additional damping after the initial portion of the compression stroke. See Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24. Gartner further discloses these features as accommodating or protecting from bottoming out. See id. code (57). Patent Owner’s position and Dr. Slocum’s testimony otherwise, requires Gartner to expressly invoke the term “bottom out cup” instead of compression volume. See Ex. 2010 ¶¶ 104–106. We disagree that is necessary. The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). We find that Gartner discloses a “cup-shaped feature configured for providing dampening at the end of a compression stroke.” Gartner discloses that internal shock absorber 400 provides damping after the initial portion of the stroke and as compression continues, compression volume 460.4 reduces as part of that damping. Ex. 1010, 7:49–51, 7:55–56, 7:62–67, 9:20–24.” slip op. at 31
Patent outcomesUS 8,550,223 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Enfish · Phillips · KSR · GrahamPatents in suitUS 8,550,223 - Google, LLC. v. Escapex IP LLCInstitutedPTAB · May 28, 2025 · IPR2025-00337 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–24 based on five § 103 grounds involving Fuloria and Andler with additional references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless 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.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We, therefore, grant Petitioner’s request to institute inter partes review of the challenged claims on the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art would have had “a bachelor’s degree in computer science or a similar field and three years of professional computer programming experience, including experience with networked media and databases, where additional education can substitute for experience or vice versa.” Pet. 20 (citing Ex. 1002 ¶¶ 27– 31). The level of ordinary skill in the art is usually evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, and thus, we apply Petitioner’s definition for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “to the extent that [the term “engagement”] requires construction, it should be construed as ‘an indication that a user should be distinguished with respect to the content over another user.” Pet. 11 (citing Ex. 1001, 5:53–55; Ex. 1002 ¶ 41). Based on the record before us, we see no need for express construction of any term for the purposes of this Decision. 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 controversy’”).” slip op. at 9
- BurdenInstituted
“We are persuaded by Petitioner’s arguments and evidence. Fuloria teaches “a mechanism for user to promote social networking objects to other users.” Ex. 1004 ¶ 1. Fuloria displays a news feed containing social media content items. Id. at code (57), ¶¶ 6, 27. Users in Fuloria may like a piece of content or “for a given price” the user may turn their like into a “super-like.” Id. ¶ 37. “The ‘super-liked’ story is priced and directed toward users in a similar manner as a social ad. In particular embodiments, sponsored story system 304 may also add a weight to the story to alter its direction toward users.” Id. ¶ 39. Petitioner argues that “[t]his functionality represents uncapped engagement . . . because Fuloria places no limitation on how many times a user can super-like a piece of content.” Pet. 24–25. Dr. Bederson supports Petitioner by noting that Fuloria does not “place any limitation on how many credits a user can spend to increase the reach of the content.” Ex. 1002 ¶ 76. Further, Dr. Bederson states that “[m]ultiple different users can also promote the same content item. By allowing users to promote or ‘super-like’ content which also increases engagement with that content by other users, Fuloria’s system also facilitat[es] uncapped engagement with that content.” Id. ¶77. We find these arguments to be persuasive. The ’687 patent states that “[s]o long as the user has sufficient resources, the user may promote herself or others with uncapped (i.e., unlimited) engagements, which may facilitate getting noticed by other users, whether with respect to a social media content item.” Ex. 1001, 2:6–10. Similarly, Fuloria allows users to expend their resources and to have the super-like displayed according to the amount paid for the super-like. Ex. 1004 ¶ 57 (“In particular embodiments, the advertisement system adjusts the display of the ‘super-liked’ story based upon social factors as well as the real-world value of the credits paid.”); see also id. ¶ 38 (“[T]he social networking system may deduct the credits based on a cost per impression (CPM), effective cost per impression (eCPM), cost per click (CPC), or cost per action (CPA) pricing model”). Fuloria teaches likes from any number of users which is argued to disclose the multiple users recited in the claim. See Ex. 1002 ¶ 82 (discussing Fuloria’s display of engagement by a user and pointing out that Figure 9A shows 1,884 likes); see also id. ¶ 87 (“Fuloria teaches that ‘super-likes’ are available to users in general (and thus to first, second, third, etc. users).”). As to the number of engagements displayed by the first, second, and” slip op. at 16
Claim constructioncites PhillipsPatents in suitUS 10,474,687 - Microsoft Corporation v. Eyesmatch Ltd.InstitutedPTAB · May 28, 2025 · IPR2025-00296 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–18 on all petition grounds and granted Microsoft’s motion to join IPR2025-00296 with IPR2024-00810.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. DECISION The challenges to the ’110 patent’s claims in this Petition are identical to the challenges in the ’810 IPR’s petition. See, e.g., Pet. 6; ’810 IPR, Paper 1, 8. Additionally, in this proceeding, Patent Owner has not argued that the Petition’s challenges lack sufficient merit to institute trial. See, e.g., Notice 1. For the same reasons we explained in the ’810 Institution Decision, we institute inter partes review of all challenges in the Petition.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Joinder is a matter within the Board’s discretion based on the particular circumstances of each proceeding. In this proceeding, we are persuaded that Petitioner has demonstrated that joinder with the ʼ810 IPR would avoid duplication and promote the efficient resolution of both proceedings.” slip op. at 5
NonePatents in suitUS 8,982,110 - Mediatek Inc. v. Daedalus Prime LLCInstitutedPTAB · May 19, 2025 · IPR2025-00100 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–24 on all petitioned grounds, finding a reasonable likelihood of prevailing and declining discretionary denial under Fintiv.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner or refute the testimony by Dr. Martin. On this record, we find for the reasons given that Petitioner has sufficiently demonstrated a motivation to combine Bugiel and Chou and to further combine those references with Tkacik, TLS-1.2, or both, with a reasonable expectation of success. Pet. 8– 13.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Bugiel with Chou and with Chou and TLS-1,2. Pet. 8. Petitioner asserts that “[i]t would have been obvious to implement Bugiel’s system using Chou’s HSM 20.” Id. Petitioner explains, “[a person of ordinary skill] would have understood both Chou and Bugiel relate to secure communication using cryptographic keys for encryption and decryption.” Id. Dr. Martin testifies that “[g]iven the express teachings in Bugiel and the ubiquity of the SSL/TLS communication protocol, a [person of ordinary skill] would have been motivated to review the relevant SSL/TLS protocol for more details regarding how to implement the TLS Handshake Protocol for generating cryptographic keys based on cryptographic key exchange.” Martin Decl. ¶ 77. He further testifies that a person of ordinary skill “would have understood that the SSL/TLS processes contemplated by Bugiel and TLS- 1.2 require hardware components.” Id. ¶ 78. He testifies that “[b]ecause Chou teaches an apparatus with hardware components that satisfy the requirements specified by Bugiel and TLS-1.2, a [person of ordinary skill] would have found it obvious to implement the techniques described in Bugiel, including TLS-1.2 as required by Bugiel, using Chou’s SOC apparatus.” Id. ¶ 80. He testifies that a person of ordinary skill “would have understood that the combination of Bugiel and Chou, and Bugiel and TLS-1.2 with Chou, would have been nothing more than combining known prior art elements according to understood methods to perform the well-known TLS handshake process using a secure hardware environment. This would have yielded predictable results in establishing secure, encrypted communication between a client mobile device and a server. A [person of ordinary skill] would have had an expectation of success in the result, as Bugiel contemplates using TLS-1.2 communication protocols and secure hardware to store protected keys and to encrypt and decrypt data, as taught by Chou.” Id. ¶ 81. Dr. Martin provides additional reasons motivating the combination of Bugiel and Chou, and Bugiel, Chou, and TLS-1.2. Id. ¶¶ 82–83.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv, Paper 11 at 5–6. “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent “would have had at least a bachelor’s degree in electrical engineering, computer science, computer engineer, or a similar field, and approximately two years of experience in a field related to cryptography and secure communications between network devices,” and that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Pet. 3–4 (citing Martin Decl. ¶¶ 66–68). At this stage, Patent Owner does not respond to this contention. For the purpose of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art because it is consistent with the level of skill reflected by the ’838 patent specification and the asserted prior art.” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,887,838
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.