- Klipsta Pty Ltd v. Lindsay AlbaneseSome claims unpatentablePTAB · Jul 10, 2026 · IPR2025-00346 · APJ Annette R Reimers · IPR · Final written decision
Claim 16 is unpatentable as obvious over the asserted grounds; claims 1–15, 17, and 18 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, 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.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) “would be a regular consumer/shopper with a rudimentary knowledge of the use of magnetic clips and a basic understanding of clip construction.” Pet. 13. We find that the ’047 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of skill reflected in these references and in the ’047 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- BurdenMixed
“Petitioner’s mapping of the components of KR ’458’s fastening device is insufficient. Although Petitioner maps the center line of fastening member 115 to the recited second end, Petitioner fails to adequately map the recited first end of the second strap or explain why one of skill in the art would consider the second ferromagnetic member (convex member 117) to be disposed at the first end of the second strap as required by claim 1. that the first end is “upward to connector 117.” Pet. 24. This is not the end of the second strap. As discussed above, the end of the second strap wraps around rectangular ring 210 and is then secured to itself.7 Connector 117 is positioned below the true end of the strap, more in the middle of this segment of the strap. In other words, Petitioner arbitrarily defines the strap as only the portion of hat holder 110 between the center line and connector 117, in contradiction to what KR ’458 actually discloses. Nowhere does Petitioner explain why connector 117 is disposed at the first end of the second strap. Neither does Petitioner explain why we should disregard the true end of the strap, nor why one of skill in the art would consider only a middle portion of the strap to be the second strap. Thus, Petitioner has not satisfied its burden in this regard. Therefore, Petitioner has not shown that KR ’458 discloses “a second strap having a first end and a second end, the second strap joined to the first strap,” with “a second ferromagnetic member disposed at the first end of the second strap.” For the foregoing reasons, we determine that a preponderance of the evidence does not support that claim 1 is anticipated by KR ’458.” slip op. at 23
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The ’047 patent discloses that in addition to being separate straps, the rear strap and the front strap “can be formed from a single piece of material.” Ex. 1001, 3:40–44, 5:24–32, 10:18–25. In particular, Figures 5A–5B of the ’047 patent illustrate rear strap 510 and front strap 520 as being “formed from a single piece of material that is folded approximately in half where a first half can be the rear strap 510 and a second half can be the front strap 520.” Id. at 10:18–21, Figs. 5A–5B. Indeed, Patent Owner acknowledges “[i]t should be noted that forming the first and second straps from a single piece of material is well within the scope of the claimed invention.” Ex. 1007, 5 (citing the ’047 patent at 3:37–44). Moreover, we note the positions taken by the parties are consistent with the fact that claim second strap are formed from a single folded strap.” Ex. 1001, 14:47–48. We, therefore, adopt Petitioner’s construction of “the second strap joined to the first strap” to include “a single piece of material.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITADecided for patent owner
“Petitioner’s construction of a “hook” to include a “structure that serves to attach the hat holder to another object” is based on function, rather embodiments in the Specification of the ’047 patent. Although strap-style hook 340 of Figures 3A–3C is a flexible component rather than a more rigid component like hook 140 shown in Figures 1A–1C , both can be considered types of hooks. All of the embodiments, whether rigid or flexible, can be considered to have a hook-like structure when serving the function of attaching the hat holder to another object. Petitioner’s proposed construction would render the term “hook” meaningless, as various types of structures could be used to attach the hat holder to another object, that would not reasonably be considered to be a “hook.” For example, a snap, safety pin, ring, or button could be used to attach a hat holder to another object. Petitioner’s identification of different embodiments in the ’047 patent of hook-like structures does not show why one of skill in the art would consider almost any structure to be considered a “hook.” We, therefore, reject Petitioner’s construction of a “hook” as a “structure that serves to attach the hat holder to another object.” “wherein the first strap and the second strap are configured to retain a” slip op. at 12
Patent outcomesUS 10,413,047 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,413,047 - Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentablePTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision
Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22
Patent outcomesUS 11,333,007 mixedClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,333,007 - Prime Time Toys LLC / Prime Time Toys Ltd. et al. v. Spin Master, Inc.No claims unpatentablePTAB · Oct 10, 2025 · IPR2023-01461 · APJ Hyun J Jung · IPR · Final written decision
Claims 1, 2, 13, and 15–20 were not shown unpatentable because Petitioner failed to establish a sufficient motivation to combine Peev and Spitballs, including with Moorhouse.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties do not address the adopted level of ordinary skill in the art. See PO Resp.; Pet. Reply; PO Sur-reply. Based on the full record, we maintain and affirm that one of ordinary skill in the art would have had: a bachelor’s degree in mechanical engineering, industrial design, or equivalent, with at least one year of relevant experience designing projectile launching systems but would also be a member of a team, which would include a person with a chemical engineering), or has at least one year experience working with materials for use in consumer products and that “equivalent work experience may substitute for educational experience, and vice versa.” Pet. 21–22 (quoting Ex. 1015, 7–8); see also Ex. 1016 ¶ 55 (stating that “Patent Owner’s and Petitioner’s definitions of the [person of ordinary skill in the art] are similar, and my opinions in this Declaration would not change if I used Patent Owner’s definition of the [person of ordinary skill in the art] rather than Petitioner’s definition”). We find that the proposed level of ordinary skill in the art is consistent with the ’255 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes any interpretation for any claim term. Pet. 23; see PO Resp. Petitioner notes that the ALJ in the ITC proceeding construed two terms used in the ’282 and ’683 patents, specifically “super absorbent polymer” and “a firing mechanism that directly applies a force to the ammunition.” Pet. 23 (citing Ex. 1015, 12, 14). Based on the full record, we determine that no term requires express construction to resolve the parties’ dispute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Expert testimonyPetitioner expert discountedMixed
“we give little weight to the opinion of Dr. Courtney on whether Spitballs would have been considered liquid filled by one of ordinary skill in the art. Pet. Reply 15–16; PO Sur-reply 18; Ex. 1037 ¶ 55; Ex. 2121, 61:12–13; see also PO Sur-reply 14–15 (arguing that Dr. Courtney does not meet the adopted level of ordinary skill in the art). We agree with Patent Owner that Petitioner’s list of “rubber, cork, foam, and soft plastics, such as SAPs” “does not exclude all of the other types of materials Petitioner failed to address—e.g., the gelatin materials used to make paintballs.” PO Resp. 24 (citing Ex. 2117, 1). The “openended” list “has no meaningful evidentiary support” because the cited paragraphs from its declaration “make no reference at all to potential airsoft ammunition.” Pet. 38; PO Resp. 24; Ex. 1016 ¶ 77; Ex. 1017 ¶¶ 36–39, 46– 48. Petitioner’s declarant Dr. Reitman also “acknowledged that airsoft considerations are beyond the scope of her testimony.” Ex. 2030, 117:17– 118:20. We agree with Patent Owner that Petitioner’s list would include “countless distinct polymers.” PO Resp. 25; Ex. 2120, 27–28.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“In other words, Petitioner does not squarely address the testimonial evidence that the softness of Spitballs would not have been equated with safety, because of its higher weight and kinetic energy. Ex. 2015 ¶¶ 44–55. We agree with Patent Owner that Petitioner does not assert fragmentation and deformation would have overcome the greater kinetic energy of the heavier Spitballs, and that Petitioner’s declarant admitted such calculation was not done. PO Sur-reply 7 (citing Ex. 2121, 48:11–49:7); Ex. 2121, 48:11–49:7 (Petitioner’s declarant testifying that calculations of how much kinetic energy is absorbed when Spitballs bounce or explode were not done). Petitioner’s declarant also identified that back splatter can create an additional safety concern. Ex. 2121, 101:14–104:4. We agree with Patent Owner that Petitioner failed to discuss the deformation and fragmentation of Spitballs in its Petition and declarations. PO Sur-reply 6 (citing Pet. Reply 10–11; Ex. 1037 ¶ 43). We also agree that Petitioner did not explain how one of ordinary skill in the art could have reliably assessed the safety of Spitballs and airsoft rounds. Id.; see also Ex. 2121, 47:1–48:10 (Petitioner’s declarant testifying that experimentation would be the best way to quantify how much kinetic energy is absorbed through deformation and fragmentation of a given projectile). focused on the mass and diameter calculations provided by Petitioner’s declarant, and Petitioner has the burden to analyze a projectile other than the one disclosed in Spitballs, not Patent Owner. PO Sur-reply 10–11 (citing Pet. Reply 13; Ex. 1017 ¶ 67; Ex. 2015 ¶ 59). Petitioner failed to do such an analysis of a 6mm Spitball or SAP projectile. Regarding Petitioner’s reliance on deposition testimony from the ITC proceedings, as argued by Patent Owner, its declarant agreed that making ammunition softer would make injury less likely, if all other parameters were equal, not larger and heavier like a substitution with Spitballs. PO Resp. 16–17 (citing Pet. 37; Ex. 1004, 531:25–532:9; Ex. 2015 ¶¶ 60–61); Ex. 1017 ¶ 67 (Petitioner’s declarant opining that Spitballs can “grow up to 200 times their original size” to reach a mass of 1.844g); Ex. 1037 ¶ 39 (Petitioner’s declarant agreeing that “when all other variables are held constant, heavier is less safe, meaning injury potential is increased”); Ex. 2015 ¶¶ 54–59 (Patent Owner’s declarant opining that heavier and softer ammunition can pose more injury risk); Ex. 2016, 11 (indicating that airsoft ammunition typically comes in weights from 0.12g to 0.25g). We, thus, agree with Patent Owner that Petitioner fails to prove that” slip op. at 16
Patent outcomesUS 8,596,255 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,596,255 - Tesla, Inc. v. Iqar Inc.Some claims unpatentablePTAB · Jul 25, 2025 · IPR2024-00545 · APJ Sean P O’Hanlon · IPR · Final written decision
Claims 1–6, 8–15, 17, and 18 are unpatentable as obvious over Neiss or Neiss and Hirasago; claims 7 and 16 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering (including automotive engineering), civil engineering (transportation systems), physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of transportation systems.” Pet. 2–3. Petitioner contends that “[a]dditional education could substitute for professional experience, and vice versa.” Id. at 3 (citing Ex. 1003 ¶¶ 1–19, 24–26; Ex. 1004). Patent Owner “does not dispute” Petitioner’s definition of the level of ordinary skill. See generally PO Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree with Patent Owner’s interpretation of column 13, lines 40–44 of the ’161 patent to mean that a route may not have both an ending position or an intermediate position, but will have at least one of these positions. See PO Resp. 21. Patent Owner interprets “typically” in “[t]he route used by the power management device typically includes a starting position . . . , an ending position, . . . , and any intermediate positions between the initial and the final positions” to apply to either “an ending position” or “any intermediate positions” (that is, an intermediate destination) but not to both. We see no grammatical reason to limit “typically” in this manner. Rather, the plain meaning of the quoted sentence suggests that, although not typical, a route may not contain an ending position, be that a final position or an intermediate position.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that Petitioner has not explained adequately how a driver’s previously driven speed or the speed limit is an efficient speed. Rather than explaining how the Schramm-Clapper system would sum efficient speeds, Petitioner merely asserts that “the set speeds for the energy-optimum route’s segments correspond to a plurality of efficient speeds.” Pet. 78 (emphasis omitted). Petitioner’s witness, Dr. Papanikolopoulos, makes substantially the same assertion. See Ex. 1003 ¶ 263. But neither Petitioner nor its witness explains adequately how a previously driven speed or the speed limit is an efficient speed. Patent Owner presents persuasive arguments as to why these speeds are not efficient. See PO Resp. 32–33 (citing Ex. 2003 ¶¶ 198–204, 208–214). Patent Owner’s contentions are supported by Dr. Hoff’s testimony. See, e.g., Ex. 2003 ¶¶ 211–218. Stated differently, although Petitioner explains how the Schramm-Clapper system would select the best summation of calculated energy values required to travel at selected speeds from among Schramm’s routes, Petitioner has not explained sufficiently how the selected speeds are efficient speeds. For the foregoing reasons, on this record, Petitioner has not shown, by a preponderance of the evidence, that claim 1 or its dependent claims 3 and 6–9 would have been obvious in view of the combination of Schramm and Clapper. Petitioner relies on the same contentions regarding the identical language recited in independent claim 10 (see Pet. 93), and so, for the same reasons, has failed to show, by a preponderance of the evidence, that claim 10 or its dependent claims 12, 13, and 15–18 would have been obvious in view of the combination of Schramm and Clapper.” slip op. at 36
- Expert testimonyPatent owner expert creditedDecided for patent owner
“We agree with Patent Owner that Petitioner has not explained adequately how a driver’s previously driven speed or the speed limit is an efficient speed. Rather than explaining how the Schramm-Clapper system would sum efficient speeds, Petitioner merely asserts that “the set speeds for the energy-optimum route’s segments correspond to a plurality of efficient speeds.” Pet. 78 (emphasis omitted). Petitioner’s witness, Dr. Papanikolopoulos, makes substantially the same assertion. See Ex. 1003 ¶ 263. But neither Petitioner nor its witness explains adequately how a previously driven speed or the speed limit is an efficient speed. Patent Owner presents persuasive arguments as to why these speeds are not efficient. See PO Resp. 32–33 (citing Ex. 2003 ¶¶ 198–204, 208–214). Patent Owner’s contentions are supported by Dr. Hoff’s testimony. See, e.g., Ex. 2003 ¶¶ 211–218. Stated differently, although Petitioner explains how the Schramm-Clapper system would select the best summation of calculated energy values required to travel at selected speeds from among Schramm’s routes, Petitioner has not explained sufficiently how the selected speeds are efficient speeds.” slip op. at 36
Patent outcomesUS 8,972,161 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,972,161 - Bazooka-Farmstar, LLC v. Nuhn Industries Ltd.All claims unpatentablePTAB · Apr 14, 2025 · IPR2024-00004 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–40 are unpatentable as obvious over Puck and Bryham; the revised contingent motion to amend proposing claims 41–80 is denied as those claims are unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art We review the grounds of unpatentability in view of the” slip op. at 10
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Mr. Nuhn states that “[t]he only conclusion I can draw from the Stutsman mechanic’s explanation is that he understood Bazooka was copying Nuhn’s patented Lagoon Crawler and felt uneasy about being involved in Bazooka’s activities.” Ex. 2083 ¶ 75. However, Mr. Nuhn’s unsubstantiated conclusion is not persuasive evidence.” slip op. at 61
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“4. Motivation to Combine Puck and Bryham Petitioner asserts that “Puck describes a cumbersome, manual process” slip op. at 39
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“Mr. Nuhn states that “[t]he only conclusion I can draw from the Stutsman mechanic’s explanation is that he understood Bazooka was copying Nuhn’s patented Lagoon Crawler and felt uneasy about being involved in Bazooka’s activities.” Ex. 2083 ¶ 75. However, Mr. Nuhn’s unsubstantiated conclusion is not persuasive evidence.” slip op. at 61
Patent outcomesUS 11,491,835 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,491,835 - Cisco Systems, Inc. / Juniper Networks, Inc. v. Orckit CorporationSome claims unpatentablePTAB · Oct 22, 2024 · IPR2024-00034 · APJ Kristen L Droesch · IPR · Final written decision
Claims 1–13 and 17–20 are unpatentable over the stated obviousness grounds; claims 14–16 are not shown unpatentable because the cited art does not teach logic configured to determine concurrent failure probability.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We decline to adopt Patent Owner’s implicit construction that would require “selecting an entity pair from” all of the entity pairs of “said plurality of transport entities.” Contrary to Patent Owner’s arguments addressing the claim language, the plain language of claim 1 does not require the selection to be from all of the entity pairs of the plurality of transport entities for which an overall cost has been determined. The plain language of claim 1 also does not preclude the selection to be from a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined. Rather, dependent claim 9, through its dependence on claims 1 and 4, explicitly allows for the selection to be from a subset of the entity pairs of the plurality of transport entities. Patent Owner’s arguments advocate for the importation of limitations from the ’821 Patent Specification into the claim––namely the disclosure that all entity pairs of transport entities examined in step 220 of Figure 2 are input to the entity pair selection step 230. See PO Sur-reply 4. It is well settled that it is improper to read an extraneous limitation into a claim from the specification. See e.g., Commark Comm’s Inc. v. Harris Corp., 156 F.2d 1182, 1186 (Fed. Cir. 1998); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988). An extraneous limitation is “a limitation read into a claim from the specification wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.” E.I. du Pont de Nemours, 849 F.2d at 1433. Accordingly, we construe “selecting an entity pair from said plurality of transport entities based at least upon said overall cost” according to its plain meaning, the scope of which includes selecting an entity pair from all or a subset of the entity pairs of the plurality of transport entities for which an overall cost has been determined.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As demonstrated in the analysis below, we need not construe “working entity” and “protection entity” in order to resolve the controversy before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Other Claim Terms and Phrases As demonstrated in our analysis below, we need not construe any other claim terms or phrases to resolve the controversy before us. See, e.g., Realtime, 912 F.3d 1368, 1375.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s level of ordinary skill for purposes of this Patent Owner Response.” PO Resp. 25. We adopt Petitioner’s definition of a person of ordinary skill in the art because it is supported by declaration testimony and is consistent with the level of skill reflected by the ’821 Patent Specification and the asserted prior art. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the entire record and after having considered Petitioner’s citations to Doshi, Guichard, and Dr. Houh’s testimony (Ex. 1003) as well as Patent Owner’s citations to Doshi, Guichard and Mr. Gomez’s testimony, we are persuaded Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the conclusion that it would have been obvious to one of ordinary skill in the art to combine the teachings of Doshi with Guichard’s teachings of reoptimization of a LSP path triggered by an network change. See Pet. 20–22, 40–45; KSR, 550 U.S. at 418. Petitioner asserts that “[t]he results of the combination would have been predictable and there would have been a reasonable expectation of success since Doshi and Guichard both address the same technology.” Pet. 22 (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “a POSITA would have had a reasonable expectation of success in reoptimizing Doshi’s LSP pair selection because Guichard provides significant implementation details, including when to trigger reoptimization evaluations and how to ‘avoid network instabilities.’” Pet. 22–23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1006, 5). Petitioner asserts that a reasonable expectation of success is evidenced by other skilled artisans that reoptimized similar systems. See Pet. 23 (citing Ex. 1003 ¶¶ 63–65; Ex. 1009, 136; Ex. 1010, 1; Ex. 1023, 34; Ex. 1034 ¶¶ 27–33, claim 19; Ex. 1035 ¶ 24). In support, Petitioner contends that “the combination would be within a POSITA’s skillset since Doshi already sets forth the calculation and selection techniques that would be utilized during the reoptimization evaluation.” Id. (citing Ex. 1003 ¶¶ 63–65). According to Petitioner, “since Doshi is already ‘monitoring and updating . . . network topology’ . . . event-based reoptimization evaluation per Guichard, would be directly applicable.” Id. (citing Ex. 1003 ¶¶ 63–65; Ex. 1005 ¶¶ 270–281).” slip op. at 38
Patent outcomesUS 8,830,821 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,830,821 - Cisco Systems, Inc. / Dell Technologies Inc. et al. v. Corrigent CorporationSome claims unpatentablePTAB · Jul 3, 2024 · IPR2023-00169 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–10, 12–22, and 24–30 are unpatentable as obvious under § 103(a); claims 11 and 23 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“Relying on Dr. Houh’s testimony, Petitioner argues that a person of ordinary skill in the art “would have had a working knowledge of the networking art that is pertinent to the ’431 patent, including network communications techniques and bandwidth management methodologies,” and “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of professional experience relating to network communications including the use of logical topologies and bandwidth management. Lack of professional experience can be remedied by additional education, and vice versa.” Pet. 11 (citing Ex. 1003 ¶¶ 18–20). Patent Owner adopts Petitioner’s proposed definition of the level of ordinary skill. PO Resp. 3. Because Petitioner’s articulation of that level of skill is uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’431 patent, we adopt it for this decision. See, e.g., Ex. 1001, 1:5–6:14.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We see no significant difference between Petitioner’s proposed construction of in response to as “using” and Patent Owner’s proposed construction as “using information from.” Thus, it does not appear that the construction of in response to is genuinely in controversy. Thus, we need not construe the term for this decision. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent that we need to interpret any other claim language, we address that language below in the context of the prior art.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Considering the evidence of record on both sides, we find Petitioner’s argument persuasive that Baker teaches a “mapping” as recited in limitation 1.4. Baker’s disclosure of a “mapping” is explicit. See, e.g., Ex. 1005 ¶ 69, 83. And the evidence shows that this mapping occurs “in advance of a communication,” and may, for example, take place in the head node as part of the Administer Ring routine. See, e.g., Ex. 1005 ¶¶ 51–56, 76. That intermediate rings are ultimately configured to simply forward traffic “according to preconfigured rules” (Ex. 1005 ¶ 87) rather than to perform more complicated routing has no pertinent bearing on the process corresponding to the recited “mapping” step, which occurs “in advance” of the communication and any such forwarding (id. ¶ 76).” slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“allocating bandwidth as part of its resources and that, in light of Wright, a person of ordinary skill in the art would have had reason to make this allocation for each of the links in of the physical topology (see Ex. 1006 ¶ 18 (“bandwidth allocation at each link”)) using information from both (1) the bandwidth requirements of Baker’s logical connections and (2) the mapping between Baker’s logical and physical topologies. As Petitioner persuasively argues, we find that Wright’s teaching of further details on ensuring the availability of bandwidth, in a similar context, would have been sufficient motivation for a person of ordinary skill in the art to incorporate Wright’s teachings into Baker’s method. We also determine that whether Wright, itself, teaches a mapping step is not the determining factor because Petitioner relies on Baker, not Wright, for teaching mapping limitation 1.4. Nevertheless, Wright does teach allocating bandwidth using the same information that would be available as a result of Baker’s mapping, including the logical (“restricted”) topology and the physical links associated with that topology. In particular, we agree with Petitioner that a person of ordinary skill in the art would have understood that allocating bandwidth to the physical links (step 510 of Figure 5) requires knowing which physical links correspond to Wright’s restricted topology. See Pet. 36; Pet. Reply 22–23; Ex. 1007 ¶ 17; Ex. 1003 ¶¶ 94–96; Ex. 1036 ¶¶ 49–51. We also disagree with Patent Owner that Petitioner has failed to adequately explain how a person of ordinary skill in the art would have modified Baker’s method to apply Wright’s teachings on bandwidth allocation, such as how Baker’s head node N0 would have been modified. See PO Resp. 31–32. Based on the level of ordinary skill and the level of detail in Baker, Wright, and the ’431 patent, and crediting Dr. Houh’s testimony, we find Petitioner’s argument persuasive that such modification would have been within the capability of someone of ordinary skill in the art. See Pet. 17–20 (citing Ex. 1003 ¶¶ 42–46, 48). And we agree with Petitioner that modifying Baker with Wright’s teachings would have been “nothing more than the combination of known elements . . . according to known methods . . . to yield predictable results.” Pet. 20 (citing Ex. 1003 ¶ 47).” slip op. at 32
Patent outcomesUS 7,330,431 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,330,431 - PTAB · Feb 28, 2024 · IPR2023-01238 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR of claims 1–20, finding a reasonable likelihood that claims 1 and 11 are obvious over Van Vliet and Cable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.1” slip op. at 2
- BurdenMixed
“Petitioner does not fully address this limitation. In particular, the Petition does not include a discussion of how the reels are connected to be fed from a manifold. See generally Pet. 26–27. Rather, the Petition argues that the hoses are stored on reels and that the hoses “are connected via fluid outlets 22 to receive fuel from [the] manifold.” Id. at 27. The Petition does say that the hoses are connected to the reels (id.), but does not attempt to establish any type of relationship between the reels and the manifolds. We further note that although indisputably Van Vliet’s schematic diagram shows flow passages through manifolds 36, 38 and hoses 24, nowhere do we discern where or how Van Vliet definitively discloses the reels 30 are connected to be fed from a manifold, as required by claim 1. Indeed, according to Petitioner’s own expert, one skilled in the art would understand that Van Vliet’s schematic diagram “is a high-level representation and is not intended to depict the physical appearance or form” of the system’s components. Ex. 1003 ¶ 132 n.138. At most, the diagram indicates the hose’s flow passage as wrapping around the reel. And, while Van Vliet describes that “hoses 24 are preferably stored on reels 30,” nowhere does it mention or otherwise suggest that the hoses are fluidly connected to the reels. Ex. 1004 ¶ 15. 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. In other words, 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 are not part of the reel. In that case, the hose’s flow passage does not run through the reel, and thus the reels 30 are not connected to be fed from a manifold, as required by claim 1. c) Conclusion For the above reasons, the Petition does not sufficiently identify how Van Vliet teaches or suggests the limitations of independent claim 1. 3. Claims 11 and 12 Similar to claim 1, claim 11 requires “a plurality of reels in the container, each said reel individually connected with the at least one manifold.” Ex. 1001, 10:64–65. The Petition relies on the analysis of claim 1 to address this limitation. Pet. 31–32. As noted above, the Petition does not attempt to establish a relationship between the reels and the manifolds, such as arguing that a reel and manifold in Van Vliet are connected. Thus, the Petition fails to show how claim 11 and its dependent, claim 12, would be anticipated by or rendered obvious over Van Vliet.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“In this regard, we preliminarily agree with Petitioner that Patent Owner’s “proposed construction ignores the[] express differences in the claim language chosen by the patentee.” Prelim. Reply 2 (citing Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1370 (Fed. Cir. 2018) (“[W]hen an applicant uses different terms in a claim it is permissible to infer that he intended his choice of different terms to reflect a differentiation in the meaning of those terms”) (citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir. 2004))). Had the patentee desired to limit the claims to fluid connections, the patentee could have used the explicit language throughout, instead of only in choice locations. An example of this is claim 1 where the claim requires the “reels are connected to be fed from the [] manifold.” Ex. 1001, 10:21–23. “To be fed” limits the type of connection to a fluid connection between the manifold and reel, while the word “connected” alone does not infer any particular type of connection.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“the motivation to combine “does not provide any reason in particular that is directed to motivating a POSITA to modify Van Vliet to have a fluid connection to its reels as in Cable.” Id. at 35. Patent Owner is mostly correct, as the majority of the section titled “Rationale and Motivation for Combining Van Vliet and Cable” is directed to aspects of Cable relied on for the dependent claims. However, this section also includes the following: “Incorporating 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.” Pet. 37 (citing Ex. 1003 ¶ 1752). Petitioner’s declarant testifies that Van Vliet and Cable describe similar systems for delivering fluid from a mobile trailer via hoses to multiple destinations. Further, the elements incorporated into Van Vliet from Cable are either already present in Van Vliet (e.g., reels) or were simple elements well-known in the art at the time of the ‘955 Patent. Incorporating 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 ¶ 175. Patent Owner does not contest Petitioner’s argument that using Cable’s reel configuration in Van Vliet’s system is a simple substitution that “merely involve[s] combining prior art elements according to known methods to yield predictable results.” Ex. 1003 ¶ 175; Pet. 37.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,974,955 - PTAB · Jul 12, 2023 · IPR2023-00319 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 2, 3, 5, 12, 13, 15, 22, 23, and 25 because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art would have had at least a Master’s degree in an academic area emphasizing electrical engineering or a similar discipline, and at least two years of experience in the field working with, teaching, or researching communication systems including the use of con-stellations in transmitting signals between devices. [Ex.]1003, ¶[93]. Superior education could compensate for a deficiency in work experience, and vice-versa. Id. Pet. 28. Though Patent Owner makes arguments with reference to “a person of ordinary skill,” Patent Owner does not directly address or contest Petitioner’s level of skill. See e.g., Prelim. Resp. 3. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’700 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner asserts that no terms require express construction. Pet. 28. Patent Owner does not argue that terms in the challenged claims should be construed. We determine that no terms need to be construed at this time. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateWritten description adequateMixed
“Under the present record, we determine that Petitioner has satisfied its burden with respect to a lack of written description support for at least some of the claims. In particular, each of claims 3, 13, and 23 require QAM-16, QAM-64, QAM-256, and QAM-1024 constellations, and the beginning end points of the code rate ranges appear to have been selected for different reasons, without any discussion or support that would apply across the board. For example, Patent Owner argues that for the QAM-16 and QAM-64 constellations the first identified code rate that covers an unequally spaced constellation is important because that was “the object of the invention” and thus establishes the beginning end point. Id. at 46–47, 49–50. However, Patent Owner provides no reason why in the QAM-256 constellation the claimed range covers equally and unequally spaced constellations. See id. at 52 (locus plot of Figure 14c). Rather, Patent Owner merely asserts that the claimed range is “coextensive with the values in [the table of] Figure 15b.” Id. at 51. For the QAM-1024 constellations Patent Owner also asserts that the claimed range is “coextensive with the values in [the table of] Figure 17b,” and again makes no mention of unequally spaced constellations. Id. at 53. Not only is Patent Owner’s logic applied inconsistently across the different types of QAM constellations, but this also results in inconsistency in the logic behind claims 3, 13, and 23 which require all of the different types of QAM constellations. Thus, we preliminarily determine that Petitioner has shown that a person of skill in the art would not understand that the patentee had possession of the claimed invention of claims 3, 13, and 23 at the time of the application, as there does not appear to be a way in Barsoum for determining how to select the beginning end points of the code rate ranges. See Pet. 3 (citing Lizardtech, Inc. v. Earth Res. Mapping Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005)). Claims 2, 12, and 22 each only require a QAM-16 constellation and do not require the other QAM constellation types. Thus, these claims are not internally inconsistent in how they select the beginning end point of the code rate range. We determine, in view of the current record, the written description support for these claims is a close issue, as is the question of whether the disclosed locus plots, without more, are sufficient to disclose a range, rather than just specific points. As we have determined that claims 3, 13, and 23 have been shown preliminarily to lack written description support, we reserve these questions for trial.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“12, 13, 22, and 23 are obvious over the combination of Barsoum and ATSC322. Pet. 28–67. The Petition argues that dependent claims 5, 15, and 25 are obvious over the combination of Barsoum and ATSC327. Id. at 67– 79. Apart from the written description support arguments above, Patent Owner does not contest Petitioner’s obviousness analysis of the challenged claims. See generally, Prelim. Resp. We note that it would seem inconsistent for Patent Owner to argue that Barsoum has written description support for the claims and yet does not teach a feature of the claims. At the same time, Patent Owner also does not address ATSC322 or ATSC327, or Petitioner’s reasons to combine the references. Each of the Petition’s grounds relies entirely on Barsoum to teach or suggest each limitation of independent claims 1, 11, and 21, upon which the challenged claims depend. Pet. 39–51, 75. Concerning claims 2, 3, 12, 13, 22, and 23 the Petition relies on ATSC322 for teaching QAM-16, QAM-64, QAM-256, and QAM-1024 constellations with a code rate of 7/15 which is within the claimed ranges for each of the constellations. See e.g., id. at 54 (reproducing Ex. 1023, Tables 6.12 and 6.13 at 30–31 which show all four constellations with a code rate of 7/15). Petitioner also provides a number of reasons why one of skill in the art would look to ATSC322, which is a technical standard, for combination with Barsoum. Id. at 37–39. After review, we determine that the Petition preliminarily establishes a reasonable likelihood that claims 3, 13, and 23 are obvious over the combination of Barsoum and ATSC322. We also determine that if Barsoum is prior art to claims 2, 12, and 22, the Petition preliminarily establishes a reasonable likelihood that claims 2, 12, and 22 are obvious over the combination of Barsoum and ATSC322.” slip op. at 16
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,693,700 - Ford Motor Company v. Safe Driving Technologies LLCSome claims unpatentablePTAB · Mar 10, 2023 · IPR2021-01446 · APJ Alyssa A Finamore · IPR · Final written decision
Claims 1–4, 6, 10, 12–14, 16, 17, and 19–21 are unpatentable under §103; claim 15 was not shown unpatentable.
RulingsFinal written decision- ExcludeMotion to exclude, grantedGranted
“Our rules and Consolidated Trial Practice Guide are clear on this prohibition. And, the Consolidated Trial Practice Guide explains: “[w]here a party believes it has a basis to request relief on a ground not identified in the rules, the party should contact the Board and arrange for a conference call with the Board and opposing party to discuss the requested relief with the judge handling the proceeding.” CTPG 75. Thus, the Board identifies appropriate ways for a party to address matters that it considers to be beyond the specific procedures outlined in the rules. Merely submitting new evidence was not authorized by Board rules or guidance and Patent Owner did not seek authorization to file the new evidence. The facts warrant excluding Exhibits 2030–2032 and we grant the Motion. See CTPG 81.” slip op. at 83
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“underpinnings, why a person of ordinary skill would have been motivated to modify the prior art to achieve the claimed invention. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its burden of proving obviousness, a petitioner . . . must . . . articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” (citing KSR, 550 U.S. at 418)). Nonetheless, “a disclosure that anticipates under § 102 also renders the claim invalid under § 103, for ‘anticipation is the epitome of obviousness.’” Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (quoting In re Fracalossi, 681 F.2d 792 (CCPA 1982)); see also Application of Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]his court has sanctioned the practice of nominally basing rejections on § 103 when, in fact, the actual ground of rejection is that the claims are anticipated by the prior art. The justification for this sanction is that a lack of novelty in the claimed subject matter, e.g., as evidenced by a complete disclosure of the invention in the prior art, is the ‘ultimate or epitome of obviousness.’” (citations and footnote omitted)).” slip op. at 14
Patent outcomesUS 9,047,170 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,047,170
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.