- PTAB · Mar 19, 2025 · IPR2024-01289 · APJ Sheridan K Snedden · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–7, 11–15, 17, 19, and 27–29 were unpatentable over Cantor, Cantor and Armani, or Frisen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine that the information presented in the Petition shows “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 evidence and arguments presented in the Petition, we determine that Petitioner has not demonstrated a reasonable likelihood of success in proving that at least 1 claim of the ’022 patent is unpatentable.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not argue that any claim term requires construction. Pet. 20. Likewise, Patent Owner takes the position that “no claim terms require explicit construction” for purposes of determining whether to institute inter partes review. Prelim. Resp. 20. We determine that no express construction of any claim term is necessary to determine whether to institute inter partes review. 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.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest the level of ordinary skill in the art set forth in the Petition. Prelim. Resp. 20. Because Petitioner’s unopposed definition is consistent with the ’022 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9
- Expert testimonyPatent owner expert creditedDecided for patent owner
“In particular, we agree with Patent Owner that “[n]ot only does Cantor not teach contacting a ‘tissue sample’ with beads, but Cantor comes nowhere close to suggesting that its beads could be contacted with a tissue sample to identify spatial location.” Prelim. Resp. 50. Here, we are persuaded by the testimony of Dr. Cantor, sole inventor of Cantor (Ex. 2002 ¶ 29), that Cantor’s nucleic acid samples are made in bulk from the extraction of nucleic acids from biological material and mixed together “to create the sample nucleic acid prior to mixing that with the solid phase nucleic acids to capture molecule(s) from the sample nucleic acid.” Id. at ¶ 17. More specifically, “nucleic acids are extracted from the different types of cells within a tissue sample without preserving their spatial distribution.” Id. at ¶ 19. Thus, these types of “bulk-analysis techniques provide no information about spatial location of biological molecules in tissue samples.” Id. at ¶ 17. While we recognize that Cantor discloses “providing the beads according to an (X,Y) array” (Pet. 39, citing to Dr. Puglisi, Ex. 1100 ¶¶ 65– 66), this disclosure makes no mention of using this array to map where the nucleic acids of Cantor came from relative to the original sample, let alone when that original sample is a tissue. See e.g. Ex. 1031, 17. The only mentions of “tissue” made in Cantor are in reference to where the sample may be obtained, for example, “[t]he biological sample can be in any form, including without limitation a solid material such as a tissue.” Id. at 6. Cantor provides no teaching, however, regarding how to use a tissue sample with the probes and methods described in Cantor to identify where the target nucleic acids of Cantor were spatially located within the tissue sample itself. Incidental to the parties’ dispute is whether Petitioner’s reliance on and characterization of Cantor’s use of the terms “sample” and “nucleic acid sample” as equivalent in meaning to “tissue sample” recited in the challenged claims is persuasive. Pet. 21 (citing Ex. 1031, 6). Here, we note that Cantor discloses that “[s]ample nucleic acid may be derived from one or more samples or sources.” Ex. 1031, 5; Ex. 2002 ¶¶ 35, 149. Cantor refers to “sample” as the thing that contains the sample nucleic acid. Ex. 1031, 5. For example, Cantor discloses that “[a] sample may be collected from an organism.” Ex. 1031, 6; Ex. 2002 ¶ 42. When a “sample” comes from a living (or formerly living) source, Cantor refers to that sample as a “biological sample,” which can “be in any form, including without limitation a solid material such as a tissue, cells, a cell pellet, a cell extract, or a biopsy, or a biological fluid . . . .” Id. Those samples, however, are further processed in bulk to obtain the nucleic acid sample. For example, Cantor discloses that the “sample nucleic acid may be a result of nucleic acid purification or isolation and/or amplification of nucleic acid molecules from the sample.” Ex. 1031, 7; see also id. at 54 (The “sample nucleic acid” is derived from a sample or source “by any means commonly known in the art, including but not limited to cell lysis procedures using chemical, physical or electrolytic lysis methods.”); Ex. 2002 ¶ 39. In view of the above, we are not persuaded by Petitioner’s attempts to characterize Cantor’s “nucleic acid sample” as synonymous to “tissue sample” recited in the challenged claims. Rather, we agree with Dr. Cantor that “[a] tissue is simply the source of the sample nucleic acid used in [Cantor’s] methods”—it is not the sample nucleic acid itself. Ex. 2002 ¶¶ 36, 150. Petitioner does not direct us to any persuasive evidence to the contrary.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 10,480,022 - Motorola Solutions, Inc. v. Sta Group LLCAll claims unpatentablePTAB · Mar 17, 2025 · IPR2023-01295 · APJ Kevin C Trock · IPR · Final written decision
Claims 1–5, 7–19, and 21–24 are unpatentable as obvious over Shaffer and Saylor; the Board did not reach the alternative Gogic and Opitz ground.
RulingsFinal written decision- Skill levelOther
“1. Shaffer (Ex. 1004) Shaffer is a U.S. Patent Application Publication published on” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“1. Rationale to Combine Shaffer and Saylor Petitioner contends that a person of ordinary skill in the art “would” slip op. at 23
- BurdenFwd all claims unpatentableUnpatentable
“For the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1–5, 7–19, and 21–24 of U.S. Patent 8,994,830 B2 are unpatentable on the bases set forth in the following table. Claim(s)” slip op. at 86
Patent outcomesUS 8,994,830 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,994,830 - Motorola Solutions, Inc. v. Sta Group LLCAll claims unpatentablePTAB · Mar 14, 2025 · IPR2023-01294 · APJ Michael J Fitzpatrick · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1, 2, 6–9, 11, 12, 15–17, and 20 as obvious over Kim; claims 3–5, 13, 14, 18, and 19 over Kim and Ishibashi; and claim 10 over Kim and Goss.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“patent “would have had a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 5; see also id. (“A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard.”). Patent Owner very similarly proposes that the skilled artisan “would have [had] a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two to three years [of] experience in designing or developing telecommunication systems.” PO Resp. 24–25 (citing Ex. 2005 ¶42). Both of the parties’ proposals as to the level of ordinary skill in the art are consistent with the disclosure of the ’664 patent and the asserted prior art. The distinction between the parties’ proposals is minimal and would not change the outcome of this Decision. Thus, we adopt and apply Patent Owner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“16). We generally agree, with the one caveat acknowledged by counsel for Patent Owner during the hearing. The caveat is that, although step [a] must be performed before step [b], it is within the scope of claim 1 if step [a] continues to be performed even after step [b] begins. Tr. 25:25–26:3 (Mr. Engel: “Well, I think in practicality, there would always be monitoring because there’s multiple media streams. So, you could have multiple alerts come in and the system could decide which one is more important. So, I don’t think you stop monitoring per se.”). We agree that continued performance of step [a], even after step [b] begins, is within the scope of claim 1. Second, Patent Owner proposes that “endpoint” means “end-user device,” as agreed to in district court. PO Resp. 10 (citing Ex. 2004, 16). We adopt this construction. However, as will become evident below, this construction does little to address the actual dispute between the parties regarding application of “endpoint” to the prior art asserted in Ground 7 (Kim). Third, Patent Owner proposes that “media stream” means “audio or video or both, which may include associated data,” as adjudicated in district court. PO Resp. 11 (citing Ex. 2004, 42). We adopt this construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner argues that a person of ordinary skill in the art would have combined Kim and Ishibashi because the former teaches “that a goal of emergency warning broadcast systems is to ensure that the viewer receives the emergency warning information” and the latter teaches a means to achieving that goal. Pet. 80–81 (citing Ex. 1008, 3:13–19; Ex. 1002 ¶304; Ex. 1009 ¶¶5, 15, 17). More specifically, Petitioner argues that a person of ordinary skill in the art “would have been motivated to implement Ishibashi’s audio output-switchover circuit in Kim’s controller system . . . to ensure that an emergency warning broadcast is received by the viewer even in situations where a headphone jack is left plugged in but unattended (e.g., not being worn) by the viewer.” Pet. 81 (citing Ex. 1002 ¶305). Petitioner argues that the skilled artisan would have had a reasonable expectation of success in making such a combination and the result would have been predictable. Id. at 82 (citing Ex. 1002 ¶306). We are persuaded by Petitioner’s stated reasons for the combination as well as that there would have been a reasonable expectation of success in making the combination. Further, Patent Owner does not dispute these factual assertions underlying the obviousness analysis. PO Resp. 57.” slip op. at 29
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artUnpatentable
“2. Combination of Kim and Ishibashi Petitioner argues that both references are from the same field of endeavor as the ’664 patent, namely emergency communication systems. Pet. 80 (citing various portions of Exhibits 1001, 1008, and 1009). We are persuaded of this fact, which, in any event, Patent Owner does not dispute. See PO Resp. 57 (arguing against Ground 8 solely on the basis of its Ground 7 arguments). Petitioner argues that a person of ordinary skill in the art would have combined Kim and Ishibashi because the former teaches “that a goal of emergency warning broadcast systems is to ensure that the viewer receives the emergency warning information” and the latter teaches a means to achieving that goal. Pet. 80–81 (citing Ex. 1008, 3:13–19; Ex. 1002 ¶304; Ex. 1009 ¶¶5, 15, 17). More specifically, Petitioner argues that a person of ordinary skill in the art “would have been motivated to implement Ishibashi’s audio output-switchover circuit in Kim’s controller system . . . to ensure that an emergency warning broadcast is received by the viewer even in situations where a headphone jack is left plugged in but unattended (e.g., not being worn) by the viewer.” Pet. 81 (citing Ex. 1002 ¶305). Petitioner argues that the skilled artisan would have had a reasonable expectation of success in making such a combination and the result would have been predictable. Id. at 82 (citing Ex. 1002 ¶306). We are persuaded by Petitioner’s stated reasons for the combination as well as that there would have been a reasonable expectation of success in making the combination. Further, Patent Owner does not dispute these factual assertions underlying the obviousness analysis. PO Resp. 57.” slip op. at 29
Patent outcomesUS 8,831,664 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,831,664 - Duration Media LLC v. Rich Media Club LLCAll claims unpatentablePTAB · Mar 7, 2025 · IPR2023-00953 · APJ Michael J Fitzpatrick · IPR · Remand
On remand, the Board held claims 1–10 unpatentable as obvious over Krassner, Badros, and Harkins; it did not reach the alternative Badros and Harkins ground.
RulingsRemand decision- RemandOther
“On August 16, 2024, Petitioner filed a Request for Director Review of the Final Written Decision. Paper 73 (“Req.”). Patent Owner opposed the Request. Paper 77. On December 12, 2024, Director Vidal granted the Request and entered a Director Decision. Paper 78 (“Director Dec.”). The Director Decision states that “Petitioner persuasively shows that Badros discloses the viewability test.” Director Dec. 9. Accordingly, the Director Decision vacated the Previous FWD, and remanded back to us for further proceedings. Id. at 13. We have jurisdiction under 35 U.S.C. § 6 and pursuant to the Director’s Decision. For the reasons discussed below, we determine that Petitioner has met its burden to prove, by a preponderance of the evidence, that claims 1–10 of the ’329 patent are unpatentable.” slip op. at 3
- Skill levelSkill level patent owner adoptedDecided for patent owner
“We find Patent Owner’s argument persuasive. Indeed, it is unclear how Petitioner’s proposal accounts for the types of problems encountered in the art or prior art solutions to those problems. See Daiichi Sankyo, 501 F.3d at 1256 (identifying these factors, among others, as “a guide to determining the level of ordinary skill in the art”). Nor does Petitioner, in its Reply, address, let alone rebut, Patent Owner’s arguments that a person of ordinary skill in the art would have had some experience and/or knowledge in internet advertising. See generally Pet. Reply. Patent Owner proposes that a “person of ordinary skill in the art would have a bachelor’s degree in computer science or a similar major involving computer programming (or at least four years of practical computer programming experience) and at least two years of experience (in or out of college) in the field of internet advertising.” PO Resp. 12 (citing Ex. 2045 ¶54). We agree that a person of ordinary skill in the art would have some experience in internet advertising, although we fail to see why one year would not be enough to familiarize sufficiently a computer scientist and/or programmer with the types of problems encountered in the art or prior art solutions to those problems. Based on the competing proposals, arguments, and evidence before us, we adopt and apply the following level of skill in assessing Petitioner’s would have had a bachelor’s degree in computer science, computer engineering, or electrical (or similar) engineering with about three years of experience in computer programming with at least one year of said experience being in the field of internet advertising.” slip op. at 11
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artReference not prior artDecided for patent owner
“Krassner clearly is a patent. It issued on August 13, 2019, far too late to be § 102(b) prior art. Even if we assume Krassner is also a “printed publication” withing the meaning of § 311(b), the same date would apply: August 13, 2019. Petitioner has not presented any evidence that the document that is Krassner was published prior to when it issued on August 13, 2019. That another document (the Krassner publication), which published much earlier, may contain the same or similar disclosure is not relevant to when Krassner was patented or published. In sum, Krassner is not prior art under 35 U.S.C. § 102(b). b) Whether Krassner is Prior Art Under 35 U.S.C. § 102(e) Although Krassner is not prior under 35 U.S.C.§ 102(b), we” slip op. at 15
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“subject matter [sought to be patented] pertains,’ this determination is frequently couched in terms of whether the art is analogous or not, i.e., whether the art is ‘too remote to be treated as prior art.’” In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)). “Whether a reference in the prior art is ‘analogous’ is a determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 658–59.” slip op. at 19
Patent outcomesUS 11,443,329 unpatentable§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,443,329 - Motorola Solutions, Inc. v. Sta Group LLCSome claims unpatentablePTAB · Mar 6, 2025 · IPR2023-01292 · APJ David C Mckone · IPR · Final written decision
Claims 1–4, 6–10, and 17–21 are unpatentable over Ohel; claims 5 and 11–16 were not shown unpatentable over Ohel or Nigawara.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Skill in the Art Petitioner, relying on the testimony of Mr. Williams, contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a similar field, and would have had approximately two years industry experience in networking or communication systems.” Pet. 3 (citing Ex. 1002 ¶¶ 55–58). Patent Owner does not dispute Petitioner’s proposal. PO Resp. 9. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. On the complete record, we adopt this level of skill.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We have considered the parties’ citations to the specification and find examples that support Petitioner’s view that the term “entity” is broad enough to encompass dispatchers and individual users. See e.g., Ex. 1001, 3:52–4:5, 7:18–20, Fig. 1). However, we find no disclosure that redefines “entity” or excludes dispatchers and individual users from the category of “entity.” Patent Owner’s best examples (e.g., Ex. 1001, 1:15–21, 3:59–62) are no more than non-limiting examples. On the complete record, we conclude that “entity” is broad enough to include dispatchers and individual users.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot reached
“have used a queue with Ohel’s system. This is insufficient because it does not provide evidence of a reason why a skilled artisan would have implemented Ohel’s system with a queue. See Auris Health, Inc. v. Intuitive Surgical Operations, Inc., 32 F.4th 1154, 1158 (Fed. Cir. 2022) (“The motivation-to-combine inquiry asks whether a skilled artisan ‘not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.’” (quoting Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (emphasis omitted))).” slip op. at 35
Patent outcomesUS 7,324,802 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,324,802 - Novartis Pharmaceuticals Corporation v. Regents Of The University Of Michigan And University Of South FloridaAll claims unpatentablePTAB · Mar 5, 2025 · IPR2023-01346 · APJ Sheridan K Snedden · IPR · Final written decision
Claims 10, 11, and 18 are unpatentable because Hickey anticipates each claim; the Board did not reach the alternative Almarsson grounds.
RulingsFinal written decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“For a functionally-defined genus, “the written description requirement [can be met] when the art has established a correlation between structure and function.” Ariad, 598 F.3d at 1350. Here, the challenge claims recite two types of functional limitations. First, independent claim 10 requires the coformer to have a second chemical functionality, which is defined as being complementary to the first chemical functionality via non-covalent hydrogen bonding. That is, the co-former’s second chemical functionality must be complementary to either a carboxamide, carbonyl, or amine functionality of an API via non-covalent hydrogen bonding. Second, the non-covalent hydrogen bonding between the first chemical functionality of the API and the second chemical functionality of the co-former must result in the formation of supramolecular synthons.” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artDecided for petitioner
“We therefore find that the parent ’956 application lacks written description support for the challenged claims, and thus, on the record before us, we determine that the effective filing date of the challenged claims is February 13, 2014, the filing date the ’344 patent. Thus, the references relied upon by Petitioner (Hickey, Almarsson, and Martindale) qualify as prior art to the ’344 patent. Pet. 33, 45.” slip op. at 26
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“III. ANALYSIS A. Principles of Law To anticipate a claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008). Accordingly, “‘the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)).” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7–8. “Patent Owners do not contest the level of ordinary skill in the art set forth in the Petition.” PO Resp. 11. Because Petitioner’s unopposed definition is consistent with the ’344 patent and the prior art of record, we adopt that definition. See Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579–80 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 8
Patent outcomesUS 10,633,344 unpatentable§ 102 anticipation§ 112 disclosurecites KSR · GrahamPatents in suitUS 10,633,344 - Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCAll claims unpatentablePTAB · Feb 26, 2025 · IPR2023-01236 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–18 are unpatentable as obvious; the Board did not reach the alternative Van Vliet, Shoap, and Hosecraft ground for claims 12–13.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Permian submits that one skilled in the art would have had either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production, or (2) at least four years of industry experience in the oil and gas industry including well drilling, completion, or production. Pet. 16–17 (citing Ex. 1003 ¶¶ 75–78). FAS responds that it “does not dispute Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 11. Permian’s proposed definition appears consistent with the 1 US 2011/0197988 A1, published Aug. 18, 2011 (Ex. 1004, “Van Vliet”). 2 COXREELS, INC., Coxreels 1125 Series “Competitor” Hand Crank and Motorized Hose Reels, https://web.archive.org/web/20140408035634/ http://www.coxreels.com/products/hand-crank/1125-series, published Apr. 08, 2014 (Ex. 1005, “Coxreels”). 3 US 7,819,345 B2, issued Oct. 26, 2010 (Ex. 1006, “Shoap”). 4 HOSECRAFT USA, Clamps Accessories, https://web.archive.org/web/ 20130702084457/http:/www.hosecraftusa.com/accessory-category/ Hose_Clamps, published July 2, 2013 (Ex. 1007, “Hosecraft”). problems and solutions described in the challenged patent and the prior art of record. As such, we adopt the level of skill in the art as defined by Permian.” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Here, the specification of the ’118 patent does not suggest that the tube and sleeve are anything but physically separate and distinct structures— [T]he tube 62 may be a flexible elastomeric tube and the sleeve 64 may be a flexible fabric sleeve. The sleeve 64 is generally loosely arranged around the tube 62, although the sleeve 64 may closely fit on the tube 62 to prevent substantial slipping of the sleeve 64 relative to the tube 62 during use and handling. * * * In this example, the [sensor communication] line 66 is routed 40 through the hose 40 between (radially) the tube 62 and the sleeve 64. The sleeve 64 thus serves to secure and protect the line 66, and the sleeve 64 may limit spill and spewing if there is a hose 40 rupture. Ex. 1001, 5:21–44. Those descriptions in the specification—(1) that the tube and sleeve are made of different materials, one being “elastomeric” and the other “fabric,” (2) that the sleeve is “arranged around” the tube, (3) that a sensor line is routed “between” the tube and sleeve, and (4) that the sleeve “limit[s]” spillage in the event a rupture in the tube—clearly support that the tube and sleeve are physically separate structures such that the sleeve serves as a protective cover for the tube. Nowhere do we discern, nor does Permian explain, where the specification indicates that the tube and sleeve might also be one and the same structure. Thus, in light of the specification, we maintain that the only reasonable construction is that the tube and sleeve, as recited in claims 5, 10, and 15, are separate and distinct structures.” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We agree with FAS. Although indisputably the schematic of Van Vliet’s fuel delivery system shows the flow passage running through manifolds 36, 38 and hoses 24, nowhere do we discern that Van Vliet definitively discloses or otherwise suggests that the flow passage runs through reels 30, as required by claim 1. Indeed, even Permian’s expert acknowledges that Van Vliet’s schematic “is a high-level representation and is not intended to depict the physical appearance or form” of the various components. Ex. 1003 ¶ 112 n.146. At best, Van Vliet discloses that “hoses 24 are preferably stored on reels 30,” but is otherwise silent insofar as any flow stream or passage running through the reels. Ex. 1004 ¶ 15 (emphasis added). Indeed, in order for the reel to be a part of the system’s fluid stream, there would need to be some disclosure or suggestion in Van Vliet that hose 24 is actually connected to the reel as opposed to being merely stored on the reel. But there is no such disclosure. To the contrary, Van Vliet explains that “each hose 24 is connected to a fuel outlet 22 by a dry connection 60 and to a cap 26 by a dry connection 62.” Id. ¶ 22 (emphases added). In other words, the flow stream through Van Vliet’s hose 24 cannot be connected to reel 30 if the ends of the hose are connected to dry connections 60 and 62, which indisputably are not part of the reel. Thus, we reject the notion that Van Vliet’s reel 30 is “part of a single fluid stream that includes manifolds 36/38, fluid outlet 22, and hose 24,” as Permian surmises from simply looking at Van Vliet’s schematic. See Pet. Reply 3–4. As such, we find that Permian fails to demonstrate that Van Vliet’s discloses or otherwise suggests a flow passage “running through a respective one of the reels” or being connected “via a respective one of the reels,” as required by claim elements 1(e) and 1(f).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We disagree that one skilled in the art would have deemed Coxreels’s teachings to be unsuitable or unacceptable for Van Vliet’s fuel delivery system. In our view, FAS’s unsuitability argument focuses improperly on the physical incorporation into Van Vliet’s system of every component and material described in Coxreels. But the test for obviousness is whether “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention,” not whether the physical features of one reference may be bodily incorporated into the structure of another reference. See Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Indeed, whether one reference can be incorporated in another is “basically irrelevant” since the test for obviousness asks only “whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). Here, rather than relying on every feature of Coxreels, Permian makes clear that it is relying on Coxreels’s teaching of “a reel for storing hoses that has a built-in ‘fluid path.’” Pet. 36–38 (citing Ex. 1003 ¶¶ 149–152). More specifically, according to Permian, one skilled in the art “would have recognized advantages of the flow passage in Coxreels’ reels (e.g., ‘a non-crimping, flat smooth hose wrap’) to facilitate connection to the manifolds and hoses of Van Vliet’s system.” Pet. Reply 7. Thus, FAS’s argument of physical incorporation of an ancillary feature of Coxreels’s reel is irrelevant to Permian’s reliance on incorporating Coxreels’s teaching of a built-in flow passage running through a hose reel with Van Vliet’s system that already includes flow path connections suitable for diesel fuel. Moreover, “[a] person of ordinary skill is also a person of ordinary” slip op. at 14
Patent outcomesUS 10,815,118 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 10,815,118 - Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCAll claims unpatentablePTAB · Feb 26, 2025 · IPR2023-01237 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–22 are unpatentable as obvious over Van Vliet and Cable because the combination teaches the claimed arrangement, and the secondary-consideration evidence does not outweigh that showing.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Permian proposes that one skilled in the art would have had either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field and at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production, or (2) at least four years of industry experience in the oil and gas industry including well drilling, completion, or production. Pet. 12–13 (citing Ex. 1003 ¶ 105). FAS responds that it “does not dispute Petitioner’s definition of the level of ordinary skill in the art.” PO Resp. 11. 1 US 2011/0197988 A1, published Aug. 18, 2011 (Ex. 1004, “Van Vliet”). 2 US 3,810,487, issued May 14, 1974 (Ex. 1005, “Cable”). 3 AFD PETROLEUM LTD., AFD Onsite Refueling Systems, http://web.archive.org/web/20150922012312/https://www.afdpetroleum.com /fuel/onsite_refuelling (Sept. 22, 2015), published Sep. 22, 2015 (Ex. 1007, “AFD”). 4 COXREELS, INC., Coxreels 1125 Series “Competitor” Hand Crank and Motorized Hose Reels, https://web.archive.org/web/20140408035634/ http://www.coxreels.com/products/hand-crank/1125-series, published Apr. 08, 2014 (Ex. 1008, “Coxreels”). 5 US 2018/0057348 A1, published Mar. 1, 2018 (Ex. 1006, “Lowrie”). Permian’s proposed definition appears consistent with the problems and solutions described in the challenged patent and the prior art of record. As such, we adopt the level of skill in the art as defined by Permian.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Permian applies “the ordinary and customary meanings of the claims terms,” and, thus, maintains that “[e]xpress constructions are not required here.” Pet. 20–21. FAS likewise submits that “no constructions are necessary in order to resolve the issues at hand and that the claim terms be given their ordinary and customary meanings.” PO Resp. 8. The specification and prosecution history of the ’805 patent, as well as the asserted prior art, adequately inform us as to the plain and ordinary meaning of the claim terms. Thus, we need not construe any claim terms expressly, as we can decide patentability without further construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where construction is not material to controversy).” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Though Cable and Van Vliet may have some different concerns and focuses, the mere existence of such differences does not alone negate Permian’s reason to combine Van Vliet and Cable. In fact, it is expected that different references would have different concerns and focuses. But, [w]hen a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. KSR, 550 U.S. at 401. Here, FAS does not contend that Van Vliet and Cable are in meaningfully different fields, but merely identifies several differences in focus and application. That is not enough to defeat Permian’s reason for the asserted combination. As Permian’s expert credibly testifies, one skilled in the art would consider that “[i]ncorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 140.” slip op. at 12
- Expert testimonyPetitioner expert creditedDecided for petitioner
“focus and application. That is not enough to defeat Permian’s reason for the asserted combination. As Permian’s expert credibly testifies, one skilled in the art would consider that “[i]ncorporating Cable’s . . . reel configuration into Van Vliet’s mobile fuel delivery system would merely involve combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 140.” slip op. at 13
Patent outcomesUS 9,586,805 unpatentableClaim construction§ 103 obviousnessPatents in suitUS 9,586,805 - Permian Global Inc. / Manticore Fuels, LLC v. Fuel Automation Station, LLCAll claims unpatentablePTAB · Feb 26, 2025 · IPR2023-01238 · APJ Brent M Dougal · IPR · Final written decision
Claims 1–20 are unpatentable: claims 1–5, 11, and 12 as obvious over Van Vliet and Cable; claims 6–10 and 14–20 as obvious over combinations including LCR references; and claim 13 as obvious over Van Vliet, …
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Patent Owner notes the discrepancies between these two levels of skill and argues for that of Petitioner’s declarant. PO Resp. 10–13. Petitioner does not respond to Patent Owner’s arguments. See generally, Reply. We are persuaded, on the present record, that Petitioner’s declarant’s proposal is consistent with the problems and solutions in the ’955 patent and prior art of record. We adopt this definition of the level of skill for the purposes of this Decision.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe “those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.” Realtime Data, LLC v. Iancu, & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Here, though the parties dispute the construction of certain claim terms (see PO Resp. 13–16; Reply 1–4; Sur-reply 1–3), resolution of these disputes is unnecessary to resolve the present controversy.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Differences in [Cable and Van Vliet’s] exemplary applications would not have discouraged a POSITA from combining their teachings. Reply 8. And: a POSITA is “a person of ordinary creativity, not an automaton,” and would consider Cable’s arrangement of equipment and reel components potentially useful in Vliet. See EX1003, ¶¶172-175; KSR, 550 U.S. at 421 (cannot assume “that a [POSITA] attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem”). Id. at 9. We agree. Though the inventors of Cable and Van Vliet may have had different concerns and focuses, this does not negate Petitioner’s argument that the combination is a simple substitution with predictable results. In fact, it is expected that different references would have different concerns and focuses. But, this fact does not of itself render the combination non-obvious. The Supreme Court’s guidance in KSR is instructive as to why Petitioner has the better argument. When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill. A court use of prior art elements according to their established functions.” slip op. at 14
Patent outcomesUS 10,974,955 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,974,955 - PTAB · Feb 25, 2025 · IPR2024-01294 · APJ Michael J Fitzpatrick · IPR · Institution
The Board instituted IPR on claims 1, 12, 25, and 26 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Zwinkels.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion Regarding Claim 1 Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1 as unpatentable under 35 U.S.C. § 102 as anticipated by Zwinkels. D. Remaining Claims of Ground 1 and Grounds 2 and 3 The threshold for institution is a reasonable likelihood of Petitioner prevailing as to any single claim. 35 U.S.C. § 314(a). “Once that single claim threshold is satisfied, it doesn’t matter whether the [P]etitioner is likely to prevail on any additional claims.” SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2018). Thus, because we have decided to grant review of claim 1, we do the same for all claims challenged and all grounds raised. Id.; see also 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.”). III. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in establishing that at least one of the challenged claims is unpatentable. IV. ORDER In consideration of the foregoing, it is hereby ORDERED that the Petition is granted and inter partes review is hereby instituted as to claims 1, 12, 25, and 26 of U.S. Patent No. 10,434,394 B2 on the grounds presented; and” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“to move forwardly and rearwardly relative to the frame. Pet. 33–38. For example, paragraph 20, as cited by Petitioner, discloses that the rollers “are movably suspended in the frame in vertical direction, wherein the suspension of said roll or rollers is arranged to convert relative horizontal movements of the roll or rollers into vertical movements thereby compensating and/or attenuating said horizontal movements by gravity.” Ex. 1004 ¶20 (cited at Pet. 34). Further, Zwinkels attributes the forward and rearward movement to the use of the bicycle by the person exercising on it. See Ex. 1004 ¶27 (describing the “horizontal movements induced by the accelerations and decelerations of the training cyclist”) (cited at Pet. 35). Petitioner also cites multiple figures that illustrate forward and rearward movement. Pet. 35–37 (reproducing Ex. 1004, Figs. 3, 5, and 6). There is a reasonable likelihood Zwinkels teaches “wherein the movable interconnection of the upper member with the lower member is configured to enable the upper member to move forwardly and rearwardly in the fore-aft direction relative to the lower member in response to fore-aft forces that are transferred to the upper member from the item of exercise equipment in response to use of the item of exercise equipment,” as recited in claim 1. e) “wherein the movable interconnection of the upper member with the lower member is further configured to provide upward and downward movement of the upper member relative to the support surface during movement of the upper member forwardly and rearwardly in the fore-aft direction relative to the lower member.” Petitioner argues that Zwinkels’s pendulum arms 6 enable the rollers to move upward and downward relative to the frame while the rollers are also moving forwardly and rearwardly relative to the frame. Pet. 39–42. For example, paragraph 24, as cited by Petitioner, discloses that the pendulum arms connecting the rollers at fixed pivoting points on the frame “provides an easy and effective solution for absorbing and attenuating horizontal movements by converting these horizontal movements to vertical movements.” Ex. 1004 ¶24 (cited at Pet. 39). Petitioner also reproduces Figures 5 and 6, which illustrate the displacement of rollers in both the vertical and horizontal directions. Pet. 40 (citing Ex. 1004, Figs. 5–6). Figure 5 is reproduced below. Figure 5, reproduced above, “shows the embodiment in which there are two rollers 4 for the bicycle back wheel.” Ex. 1004 ¶34. Figure 5 shows two configurations of the embodiment on left and right sides. Ex. 1004 ¶34, Fig. 5. The configuration “at the left of FIG. 5 shows the pendulum arms 6 in a resting position, whereas the [configuration] on the right shows the pendulum arms 6 after they have due to the connecting link 7 concertedly moved to the right due to a force FH, causing that the rollers 4 have moved vertically upwards.” Ex. 1004 ¶34. There is a reasonable likelihood Zwinkels teaches “wherein the movable interconnection of the upper member with the lower member is further configured to provide upward and downward movement of the upper member relative to the support surface during movement of the upper member forwardly and rearwardly in the fore-aft direction relative to the lower member,” as recited in claim 1. f) “wherein the upper member is oriented parallel to the support surface plane during movement of the upper member relative to the lower member in the fore-aft direction and during upward and downward movement of the upper member relative to the support surface” Petitioner argues that Zwinkels’s rollers are oriented parallel to the ground or floor at all times. Pet. 42–44. Petitioner argues that this is clearly shown in Figure 5, which we reproduced in the immediate section above. See Pet. 43 (citing and annotating Ex. 1004, Fig. 5). We agree. There is a reasonable likelihood Zwinkels teaches “wherein the upper member is oriented parallel to the support surface plane during movement of the upper member relative to the lower member in the fore-aft direction and during upward and downward movement of the upper member relative to the support surface,” as recited in claim 1. 3. Conclusion Regarding Claim 1 Petitioner has demonstrated a reasonable likelihood of prevailing on its challenge to claim 1 as unpatentable under 35 U.S.C. § 102 as anticipated by Zwinkels.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“1. Zwinkels (Ex. 1004) Zwinkels was filed November 4, 2010, and published June 9, 2011. Ex. 1004, codes (22), (43). Petitioner argues that, based on its filing date, “Zwinkels is thus prior art under at least 35 U.S.C. § 102(a)(2).” Pet. 15. On the record presented, we agree. In addition, the current record supports that, based on its publication date, Zwinkels is prior art also under 35 U.S.C. § 102(a)(1).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose an express construction of any term of claim 1. See Pet. 14 (“Petitioner submits that for the purposes of this proceeding, the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.”). At this stage of the proceeding, we discern no need to provide an express construction of any term of any claim.” slip op. at 8
Claim construction§ 102 anticipationPatents in suitUS 10,434,394
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.