• Google LLC v. Sandpiper CDN, LLCInstituted
  PTAB · Nov 7, 2025 · IPR2025-00826 · APJ Michael T Cygan · IPR · Institution

  The Board instituted IPR on all asserted grounds for claims 1–23, finding a reasonable likelihood of obviousness for claims 13–22 over Glines and Gupta.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of challenged claims 1–23 of the ’112 patent. Accordingly, we institute an inter partes review of the ’112 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art (“POSITA”) at the critical time “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least two years of work or research experience in the field of content delivery management or networks,” and that “additional education could substitute for work experience.” Pet. 3 (citing Ex. 1008 ¶¶ 51–53). Patent Owner does not provide any such assessment in its Preliminary Response. Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’112 patent and the prior art of record.” slip op. at 7

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

    “claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express claim construction at this stage of the proceeding. Pet. 3; Prelim. Resp. 12. Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 8

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Dr. Mowry further attests that “A POSITA would have understood Glines’s disclosure of providing content from an origin source would have included supporting more than one origin source (e.g., more than one website or content provider[)].” Ex. 1008 ¶ 262 (citing Ex. 1002, 12:11–22 (storing replica files that originate at an origin server 40), 13:21–14:3 (requesting “example.com”)). That statement, however, goes only to what Glines might be capable of doing, not to whether one would have modified Glines to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[o]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed inventions.”). Dr. “content providers” limitation, stating that it “would have been nothing more than replicating Glines’s teaching of storing and providing content associated with one origin server, with expected results.” Ex. 1008 ¶ 263. That statement, however, is unsupported, and moreover, does not explain how such replication would occur or what results would be expected. Prelim. Resp. 25–26. At this stage in the proceeding, Dr. Mowry’s testimony amounts to a “conclusory generalization” that does not provide the “reasoned explanation” sufficient to show that a limitation missing in the cited art was taught by the knowledge in the art. Arendi S.A.R.L v. Apple, Inc., 832 F.3d 1355, 1365 (Fed. Cir. 2016).” slip op. at 14

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,021,112
• Weber, Inc. v. Provisur Technologies, Inc.Some claims unpatentable
  PTAB · Oct 21, 2024 · IPR2020-01557 · APJ Jon M Jurgovan · IPR · Remand

  On remand, claims 1–4 and 8–11 were held obvious; claims 5–7 were not shown unpatentable because the asserted combinations did not establish claim 5’s drive-roller limitation.

  RulingsRemand decision

  • RemandFwd mixedMixed

    “Specifically, the Federal Circuit “reverse[d] the Board’s finding that Weber’s operating manuals do not qualify as printed publications.” Weber, 1 Patent Owner also submitted redacted versions of its Preliminary Response, Response, and Sur-Reply. Papers 8, 24, 48. The redactions relate to information subject to our Protective Orders. Papers 13, 57. 92 F.4th at 1069. The Federal Circuit further held that the prior art disclosed the “disposed over” limitation of claim 1 as properly construed, as well as the “stop gate” limitation of claim 1. Weber, 92 F.4th at 1069–1072. In addition, the Federal Circuit indicated it had considered Petitioner’s remaining arguments and found them unpersuasive. Weber, 92 F.4th at 1072. Accordingly, the Federal Circuit vacated our determinations that Petitioner failed to establish unpatentability of claims 1–11 of the ’812 patent, and remanded the case to the Board for further proceedings consistent with its opinion. Weber, 92 F.4th at 1072.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill in the art would have had “(1) a bachelor’s degree (or equivalent) in mechanical engineering (or a similar field) and at least two years of experience working on food processing and/or packaging systems (or in a similar field)” or “(2) at least seven years of experience working on food processing and/or packaging systems (or in a similar field).” Pet. 20 (citing Ex. 1003 ¶¶ 26–27). Patent Owner does not contest Petitioner’s definition or provide its own proposal. For purposes of this Decision, we adopt Petitioner’s proposal because Petitioner’s proposed definition is consistent with the level of skill demonstrated in the cited prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for petitioner

    “disposed over the food article loading apparatus.” The Federal Circuit reversed the construction set forth in the prior FWD and held that the “disposed over” limitation “requires only that the feed apparatus be generally positioned above the loading apparatus.” Weber, 92 F.4th at 1070. We follow the Federal Circuit’s construction of “disposed over” in this decision. We need not provide an express construction for any other claim terms to resolve the dispute before us. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy). We note, though, that in reaching our conclusion, we apply the ordinary and customary meaning to all claim terms. 37 C.F.R. § 42.100(b) (2019).” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingDecided for petitioner

    “We agree with Petitioner that the preamble of claim 1 is disclosed by each of the slicing machines disclosed in 2006 904 Operating Manual, Lindee, and Sandberg. Thus, we need not and do not decide whether the preamble is limiting.” slip op. at 19

  Patent outcomesUS 10,639,812 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,639,812
• Ravin Crossbows, LLC v. MCP IP, LLCInstituted
  PTAB · Sep 12, 2024 · IPR2024-00522 · APJ Arthur M Peslak · IPR · Institution

  The Board instituted IPR on claims 1–4 and 7–19 based on Darlington and Islas, finding a reasonable likelihood that at least one challenged claim is unpatentable.

  RulingsInstitution decision

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

    “determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had (i) a Bachelor of Science degree in mechanical engineering, materials science, or a similar technical field; (ii) a working knowledge of and/or experience with projectile weapon (e.g., archery bow) operation and performance; and (iii) two to four years of experience with designing and manufacturing of consumer products. Pet. 3–4 (citing Ex. 1003 at ¶¶ 25–28). Patent Owner does not challenge Petitioner’s definition. See generally Prelim. Resp. For the purposes of this Decision, we apply Petitioner’s uncontested definition because it appears consistent with the problems addressed in the ’989 patent and the prior art.” slip op. at 12

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “contemporaneous knowledge of the activities of Mr. McPherson in or around 2008 or the bows that are pictured in Exhibits 2002 and 2003. See generally Ex. 2007. Rather, Dr. Reinholtz testifies “that the 2009 model year Mission Menace bow and the 2009 Mathews McPherson Series Monster bow embodied the claim limitations of the ’989 patent” based on his comparison of the disclosure in the Krenz articles “to the claims of the ’989 patent . . . from the perspective of a” person of ordinary skill in the art. Id. ¶ 32. Due his lack of personal contemporaneous knowledge, his testimony cannot corroborate Mr. McPherson’s testimony concerning reduction to practice and we give it no weight in that regard.13 We turn first to the Krenz articles. Mr. Ozanne14 holds the position of” slip op. at 21

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date, deniedDecided for petitioner

    “reduction to practice, the applicant must have: (1) constructed an embodiment or performed a process that met all the limitations of the claim and (2) determined that the invention would work for its intended purpose.” Steed, 802 F.3d at 1318. “That is, to reduce any particular claim to practice, the applicant must have constructed an operational embodiment within the scope of that claim.” Nintendo of America Inc. v. iLife Technologies, Inc., 717 Fed. Appx. 996 (Fed. Cir. 2017) (addressing Steed’s above, two-prong standard). The Board may find an actual reduction to practice based on, for example, “testimony of the inventors, corroborating witnesses, and corroborating documentary evidence” (id. at 1002) if “[t]his evidence, taken together, is sufficient for a reasonable mind to conclude that the prototype created by the inventors . . . was within the scope of claims . . . and would work for its intended purpose” (id. at 1003). But if “[t]he prototype has not been shown to meet all the limitations of the[] claims, . . . the record thus lacks evidence sufficient to support the . . . conclusion [of an actual reduction to practice].” Id. at 1004 (citing Steed, 802 F.3d at 1318). “[A]n inventor’s testimony alone is insufficient to establish an earlier reduction to practice. Medichem[, S.A. v. Rolabo, S.L.], 437 F.3d [1157,] 1169–71.” “In the final analysis, each corroboration case must be decided on its own facts with a view to deciding whether the evidence as a whole is persuasive.” Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed. Cir. 1998) (quoting Berges v. Gottstein, 618 F.2d 771, 776 (C.C.P.A. 1980)).” slip op. at 20

  § 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,683,989
• Lululemon Athletica Canada Inc. / Lululemon USA Inc. v. Nike, Inc.All claims unpatentable
  PTAB · May 13, 2024 · IPR2023-00180 · APJ Mitchell G Weatherly · IPR · Final written decision

  Claims 11–14, 19, and 20 are unpatentable: Johnson anticipates claims 11–13 and 19; Sutton anticipates claims 11, 19, and 20; and Sutton with Fry renders claim 12 obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “does not dispute [Petitioner’s] proposed level of skill in the art” in this case. PO Resp. 9–10; see also Ex. 2001 ¶ 37 (Patent Owner’s declarant, Dr. Stone, accepting and applying Petitioner’s proposed level of ordinary skill). In determining the level of ordinary skill in the art, various factors 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) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Considering the subject matter of the ’220 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above.” slip op. at 10

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

    “then save.” PO Resp. 10 (citing Ex. 2001 ¶¶ 48–56). According to Patent Owner, “[m]erely saving data is not enough.” Id. Petitioner disagrees, contending that Patent Owner’s proffered interpretation of “record” is inconsistent with the Specification, which “repeatedly distinguishes between ‘record’ and ‘measure’” and uses “‘record’ in connection with saving/storing and ‘measure’ in connection with sensing.” Reply 2–3 (citing Ex. 1001, 2:28–34, 8:51–53, 11:61–62, 11:65–67, 13:5–6, 15:18–24, 15:41–45, 20:2– 6; Ex. 1017 ¶¶ 13–19). Based on our review of the parties’ argument and cited evidence, we find that “record” means “save” and does not encompass “measure or capture” as Patent Owner argues. The Specification describes the act of measuring as being performed by various sensors or other devices. See, e.g., Ex. 1001, 8:51–53 (“sensors for measuring”), 11:65–67 (“accelerometers . . . for measuring”), 15:18–24 (“Global Positioning Satellite (GPS) navigation device” for measuring distance traveled and an “EKG monitor” for “measuring the electrical activity of the user”). The Specification also expressly distinguishes the act of measuring from the act of recording when discussing how the location of a user is measured and recorded. The Specification states: The inclusion of GPS device 713 and accelerometer 715 in a single mobile device 700 allows device 700 to record athletic activity data in multiple workout settings. . . . If, . . . the individual is running outdoors such that the individual moves from one location to another, the GPS device 713 or recording of data therefrom (e.g., GPS device is always active, but recording is turned on and off) may be activated and used instead [of the data measured by accelerometer 715]. Id. at 19:59–20:6 (emphasis added). Even though GPS “is always active” and measuring the location of the user, “recording is turned on and off.” Accordingly, the Specification expressly distinguishes that act of measuring from the act of recording.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner

    “Petitioner persuasively contends that the Specification discloses at least six additional ways for a user to select an option to share athletic information that would be excluded under Patent Owner’s proposed interpretation. Reply 11–12 (citing Ex. 1001, Figs. 53F, 53S, 53V, 54C, 77, 82, and accompanying text at 45:22–44, 46:23–28, 47:42–44, 47:63–48:15, 53:27–52). Petitioner also persuasively argues that portion of the Specification cited by Patent Owner fails to sufficiently express intent to limit the scope of “sharing option selection” to “a user command or confirmation.” Id. at 13 (citing Thorner v. Sony Comp. Entm’t Amer. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012) (lexicography requires “clear” expression of intent to redefine the term (emphasis omitted))). Patent Owner’s attempt in the Sur-reply to cite cases for the proposition that claims need not cover all embodiments is unavailing because we discern no clear intent in the Specification to limit the claim to one specific embodiment. For all these reasons, we reject Patent Owner’s proposed interpretation of “the sharing option selection” 8 and instead read it according to its plain meaning, which encompasses, for example, the 8 The phrase “sharing option selection” is introduced in element 11D, and we conclude that phrase carries the same meaning as it does in element 11E. selection of an option to automatically share athletic information in advance of a workout.” slip op. at 15

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Patent Owner argues that Johnson’s device 601 “does not ‘record’ (i.e., measure or capture, and then save) athletic activity.” PO Resp. 23. Patent Owner contends that “Johnson’s device 601 merely receives and displays pre-recorded athletic activity data that it ‘receives’ from a separate ‘collection’ device” [501], which is the device that “records” the athletic activity. Id. at 24. Patent Owner argues that “writing” data to memory is not “recording” data because it “does not include capturing or measuring the athletic activity itself, only saving it.” Id. Patent Owner concedes that Johnson’s device 601 stores the user’s athletic activity. PO Resp. 24; Sur-reply 8. Patent Owner’s argument that Johnson fails to describe element 11C depends upon us ruling in its favor on the meaning of element 11C. As explained in Part V.A above, we reject Patent Owner’s argument that “record” as used in element 11C also requires the apparatus to “measure or capture” athletic activity. Accordingly, based on Petitioner’s argument regarding element 11C, which we adopt as our own, and the evidence cited in support, we find that Petitioner has shown by a preponderance of evidence that Johnson describes the limitations of element 11C.” slip op. at 19

  Patent outcomesUS 10,232,220 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 10,232,220
• Askeladden, L.L.C. v. Ohva, Inc.Rehearing granted
  PTAB · Mar 15, 2024 · IPR2023-00921 · APJ Amee A Shah · IPR · Rehearing

  Granted petitioner’s rehearing request and instituted IPR of claims 1–4 on all asserted grounds, finding a reasonable likelihood of prevailing based on the preliminary construction of “transaction data.”

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “institute has the burden of showing the decision should be modified, and the request for rehearing must specifically identify all matters the party believes the Board misapprehended or overlooked and the place where each matter was previously addressed in its papers. 37 C.F.R. § 42.71(d). “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c).” slip op. at 5

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “Although the ’286 patent distinguishes “account data” from “transaction data” in the embodiment of Figure 11, the “transaction data” is submitted by the user to perform a series of banking transactions after manually entering a PIN code, whereas the “account data” is stored on the server, and the token information is accepted from the smart card’s embedded token, i.e., the output interface of the transaction card. See Ex. 1001, 10:12–18, 10:30–35, 10:40–42, 11:21–22, 11:65–12:4, 12:22–36. Thus, the claimed “transaction data” that is “accepted . . . from an output interface of a transaction card” and “accepted . . . from a transaction card at an input interface of the card reader,” as recited in independent claims 1 and 3, comprises data stored on and read from a card, such as an ID number, password, authentication information, or session information, that can be used to facilitate a transaction. Such claimed “transaction data” is distinct from the “transaction data” described in connection with the Figure 11 embodiment. We therefore do not limit the claimed “transaction data” and instead preliminarily construe that term as encompassing any data involved in a transaction, including account data. As described above, the claimed transaction data must come from the output interface of a transaction card. Should either party believe that a different construction should apply in the instituted trial, it should explain the proposed construction, how the construction is supported by the record, and how the construction affects our unpatentability analysis.” slip op. at 8

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateInstituted

    “The dispute relates to whether the ’030 application describes the claimed “smart telephone” accepting transaction data and executing coded instructions to convert the analog signal to digital data representing transaction data as digital data. See Pet. 14–15, 19–27. In Petitioner’s view, that term is supported only by language added to the “Brief Summary of the Invention” during prosecution of the application resulting in the ’286 patent. Id. at 17. In contrast, argues Petitioner, the corresponding section of the ’030 application instead describes transmitting sound to a PC, not a smart telephone. Id. at 19–26. Patent Owner submits that the ’030 application describes generating sounds from a smart phone and using a “key jack sound pass generator” to communicate sounds. Prelim. Resp. 16. Patent Owner contends that the claim language is supported by disclosure of receiving the audio signal at a microphone port and converting the signal to transaction data. Id. at 16–18. Patent Owner points also to description of direct communication between a “client device” and server. Id. at 19. On the present record, we find that Petitioner, at this stage in the proceeding, has shown sufficiently how it contends that the earliest possible effective filing date for claims 1–4 of the ’286 patent is March, 3, 2015, such that the Cho, Aaron, Carpenter, and de Geer references qualify as prior art. Patent Owner has identified a factual dispute regarding the significance of the ’030 application’s disclosures, and we view that dispute as best resolved through trial.” slip op. at 9

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

    “35 U.S.C. § 312(a)(2) provides that one of the “Requirements of Petition” is that “the petition identifies all real parties in interest.” “Whether a non-party is a RPI is a ‘highly fact-dependent question’ and must be considered on a case-by-case basis.” SharkNinja Operating LLC. v. IROBOT Corp., No. IPR2020-00735, 2020 WL 6050687, at *4 (PTAB Oct. 13, 2020) (precedential) (citing Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 148 at 6 (PTAB Jan. 24, 2019) (Paper 148) (precedential) (citing Office Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012))). Here, addressing whether TCH is an unnamed RPI would not create a time bar or estoppel under 35 U.S.C. § 315. There is no allegation or evidence that TCH is “barred or estopped from this proceeding or that Petitioner purposefully omitted [TCH] to gain some advantage.” SharkNinja at *4. Rather, Patent Owner argues that for “once again willfully fail[ing] to identify TCH as a real party in interest, . . . the Petition should be denied on that basis.” Prelim. Resp. 7. In other words, Patent Owner contends only that we deny institution because of “the alleged failure of a procedural requirement that can be corrected under our precedent.” SharkNinja at *4. We understand that” slip op. at 11

  Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 9,679,286
• Draftkings Inc., A Delaware Corporation v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01446 · APJ George R Hoskins · IPR · Final written decision

  Claims 1–17 and 19–30 are unpatentable based on the listed anticipation and obviousness grounds; claim 18 was not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “Module Terms each recite a “module” that is configured to perform or to oversee certain recited functionality, without reciting sufficient structure for performing that functionality. See Pet. 32. Further, as in Williamson, the word “module” in the context of the ’205 patent claims and specification is a “nonce” word, used “in a manner that is tantamount to using the word ‘means.’” Williamson, 792 F.3d at 1350–51. We therefore agree with Petitioner’s position that the rebuttable presumption against application of § 112 ¶ 6 is overcome in this case, because the Module Terms are not understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. See Williamson, 792 F.2d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Patent Owner’s and Dr. Lane’s apparent disagreement with this conclusion in the context of the ’205 patent is unaccompanied by any argument seeking to establish that the Module Terms might be understood to recite a sufficiently definite meaning as the name for structure. See PO Resp. 6; Ex. 2005 ¶ 28.” slip op. at 55

  • ExcludeMotion to exclude, deniedDenied

    “Petitioner filed a Motion to Exclude Evidence proffered by Patent Owner (Paper 31). Patent Owner filed an Opposition (Paper 32), and Petitioner filed a Reply (Paper 33). We deny Petitioner’s Motion to Exclude Evidence, for reasons provided below.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “k) Conclusion Regarding Claim 12 Thus, based on the record presented, we conclude Petitioner has” slip op. at 32

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “Petitioner relies on Bryson as disclosing the subject matter recited in claim 1, except for limitations 1[g] and 1[h], in substantially similar fashion as discussed above in Ground One in relation to other claims. See Pet. 68–73. Patent Owner’s sole opposition in this regard is whether Bryson discloses the betting range limitation 1[j]. See PO Resp. 49–53 (Patent Owner’s opposition to Ground Four as to claim 1). We conclude a preponderance of the evidence establishes Bryson supports Petitioner’s unopposed contentions in this regard, for the reasons set forth in the Petition which we adopt as our own in this Decision. We accordingly find Bryson discloses the preamble 1[pre] and limitations 1[a]–1[f], 1[i], and 1[k]–1[m].” slip op. at 74

  Patent outcomesUS 9,978,205 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,978,205
• Draftkings Inc. v. AG 18, LLCSome claims unpatentable
  PTAB · Mar 12, 2024 · IPR2022-01448 · APJ Frances L Ippolito · IPR · Final written decision

  Claims 1–10 and 12–29 are unpatentable over the asserted anticipation and obviousness grounds; claim 11 was not shown unpatentable.

  RulingsFinal written decision

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther

    “C. Claim Construction In an inter partes review, we construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Accordingly, our claim construction standard is the same as that of a district court. See id. Under the standard applied by district courts, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).” slip op. at 11

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner

    “generally takes issue with whether Petitioner has sufficiently explained its construction of means-plus-function limitations. See PO Resp. 24–35. Nonetheless, based on the complete record, we find that the Petition “identif[ies] the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function” of this means-plus-function limitation in claim 26. 37 C.F.R. § 42.104(b)(3); see Pet. 22 (citing Ex. 1001, 3:60–66). Moreover, we apply Petitioner’s construction for our prior-art analysis because it is consistent with and supported by the complete record.” slip op. at 38

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “9–11, 20 102(e) Bryson 9, 10 11” slip op. at 110

  Patent outcomesUS 10,614,657 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,614,657
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 2, 2023 · IPR2022-00914 · APJ James A Tartal · IPR · Final written decision

  Claims 105 and 106 are unpatentable as obvious over Heller and Mastrototaro; Abbott did not prove claims 49, 80, 81, 85, or 86 unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed

    “on the general knowledge of a person of ordinary skill in the art to disclose the predictive relationship limitation of claim 49 not taught by Heller are legally deficient. Resp. 28–38. We agree in that Petitioner’s contentions in the Petition amount to no more than a conclusory assertion that a person of ordinary skill in the art “would have known” the predictive relationship limitation. See Pet. 38–39. Petitioner’s arguments in the Petition are divorced from any analysis of Heller and fail to articulate why a person of ordinary skill in the art would have understood Heller to teach the predictive relationship in light of what was purportedly known more generally in the art. Merely asserting that a particular limitation was “known in the art” does not constitute a legally sufficient basis for establishing obviousness. See, e.g., Deere, 383 U.S. at 17–18. While Petitioner purports to identify multiple references that teach a predictive relationship, Petitioner circumvents a legally sufficient obviousness analysis by choosing not to assert any of the references in combination with Heller, but to instead argue they all collectively show that “predictive relationships” were broadly known in the art. See Pet. 28–33. Rather than establish some broad understanding by persons of ordinary skill in the art concerning the predictive relationship limitation, Petitioner’s arguments make clear that each reference uniquely addressed the relationship between a particular sensor and the in vivo performance of the sensor. For example, Petitioner asserts Gross teaches a sensor for which “the pre-insertion, factory-determined in vitro performance curve and” slip op. at 32

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “level in Gross is a “measure of sensor current, not ‘analyte concentration’ is contrary to the express disclosure of Gross. Gross expressly discloses a calibration method that requires, after insertion the in vivo measurement of a saturation level G1 “which can be measured by the sensor and which is of importance for the calibration method.” Ex. 1004, 13:3–18 (further stating that a “voltage V1 (FIG. 4C) applied at time t1 gives a current I1, (FIG. 4B) which corresponds to the saturation level G1 (FIG. 4A) of the enzyme”). Gross explains that “the predetermined stimulus is adapted to saturate the sensor such that the first signal is a maximum signal,” and “[w]hen a sensor is such that it can be saturated by a sufficiently large stimulus, it can be preferable to use this phenomenon in calibrating the sensor as it enables a reproducible first predetermined stimulus, i.e. a saturation stimulus to be provided in all cases, thereby removing uncertainty as to whether the means for providing a predetermined stimulus will in fact achieve exactly the right level of uncertainty.” Id. at 3:17–26.” slip op. at 45

  • Obviousness (§103) › Objective indicia / secondary considerationsNot reached

    “of ordinary skill in the art; and (4) when in evidence, objective evidence of nonobviousness. 5 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. However, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016); see also Pers. Web Tech., LLC, v. Apple, Inc., 848 F.3d 987, 993–94 (Fed. Cir. 2017) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”) (quoting Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)) (alteration in original).” slip op. at 15

  • ExcludeMotion to exclude, deniedDenied

    “In light of the foregoing multiple critical misrepresentations, Petitioner’s MTE is denied regarding sufficiency of Dr. Baura’s qualifications because Petitioner did not timely object to the evidence on the basis asserted in the MTE, fails to refute Patent Owner’s showing that Dr. Baura is sufficiently qualified (see MTE Opp. 3–7; Ex. 2010 ¶ 30), and abandons its argument in its Reply to the MTE.” slip op. at 57

  Patent outcomesUS 11,000,213 mixed
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,000,213
• Abbott Diabetes Care Inc. v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 2, 2023 · IPR2022-00913 · APJ James A Tartal · IPR · Final written decision

  Claims 1, 20, and 21 are unpatentable as anticipated by Heller; the evidence does not establish claims 4–6, 8, or 23–26 unpatentable on the asserted grounds.

  RulingsFinal written decision

  • Expert testimonyMotion to exclude, deniedDenied

    “In opposition, Patent Owner first argues, and we agree, that Petitioner failed to timely object to Dr. Laura’s declaration with sufficient particularity. MTE Opp. 1–3 (citing 37 C.F.R. § 42.64(b)(1)). Our Rule requires that an “objection must identify the grounds for the objection with sufficient particularity to allow correction in the form of supplemental evidence.” 37 C.F.R. § 42.64(b)(1)). Petitioner’s objection to Dr. Baura’s testimony identifies hundreds of paragraphs from her declaration followed by an objection stating her “testimony is based on insufficient facts or data, is not the product of reliable principles and methods, and does not reliably apply the appropriate principles and methods to the fact of the case.” Paper 25, 2. Petitioner’s boilerplate objection is woefully insufficient to show that Petitioner objected with sufficiently particularity to allow correction in the form of supplemental information, as our Rule requires. We further agree with Patent Owner that Petitioner’s arguments in the MTE are no more than a “transparent attempt to . . . circumvent the word-count limits of its merits briefing by injecting merits arguments in its evidentiary motion.” MTE Opp. 9. In short, Petitioner’s arguments go to the weight to be afforded Dr. Baura’s testimony, not to its admissibility, and are, therefore, an improper basis for seeking the exclusion of hundreds of paragraphs Dr. Baura’s declaration. Accordingly, Petitioner’s MTE is denied.” slip op. at 63

  • Skill levelSkill level petitioner adoptedOther

    “Patent Owner does not dispute Petitioner’s proposed level of ordinary skill. Resp. 9. Dr. Baura, in support of Patent Owner, states that she applied Petitioner’s “definition of the level of ordinary skill in the art, because,” in her opinion, Petitioner’s “and Dr. Smith’s conclusions are incorrect even under this definition.” Ex. 2010 ¶ 29. Thus, Dr. Baura neither adopts as proper nor refutes Petitioner’s proposed level of ordinary skill. We find that the ’213 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 appropriate skill reflected in these references and the ’213 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 17

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

    “In view of the issues we address below, including how the claimed subject matter is alleged to have been taught or disclosed in the prior art, we determine that it is not otherwise necessary to address the express interpretation of any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 20

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner that Petitioner’s anticipation argument is insufficiently supported by Heller or the other evidence Petitioner relies upon. Petitioner directs us to no evidence in Heller expressly addressing a predictive relationship between in vitro and in vivo sensitivity, much less any disclosure in Heller of a particular relationship. Instead, Petitioner seeks to stretch a thin disclosure in Heller that “calibration data may simply be factory-determined calibration measurements” to necessarily mean “prior sensitivity information is derived at least in part from a predictive relationship between an in vitro sensor sensitivity to glucose and an in vivo sensor sensitivity to glucose,” as required by claim 23. Pet. 36; Ex. 1005, 77:14–15. Notably, Dr. Smith does not identify any “predictive relationship” disclosed by Heller. Ex. 1002 ¶¶ 148–149. We give little weight to Dr. Smith’s conclusory assertion that a person of ordinary skill in the art would have simply “recognized” Heller’s “factory determined calibration measurements” were necessarily “derived at least in part from a predictive relationship between an in vitro and an in vivo sensor sensitivity to glucose,” particularly where Heller does not expressly preclude in vitro measurements from its “factory determined calibration measurements.” See id. Further, in reply, Petitioner argues again that “(1) Heller discloses that calibration data can ‘simply be factory determined calibration measurements’ . . . and (2) a [person of ordinary skill in the art] would have recognized that this ‘discloses that factory (in vitro) determined sensitivity adequately predicts in vivo sensitivity.’” Reply 6. From Heller’s disclosure preponderance of the evidence that Heller expressly teaches any predictive relationship, even one in which in vitro and in vivo sensitivity are the same. that calibration data can “simply be factory determined calibration measurements,” Petitioner provides no more than speculation to suggest that there necessarily must be some relationship between in vitro measurements and in vivo measurements. See Reply 6–8. Because Petitioner has not shown by a preponderance of the evidence that Heller discloses all of the limitations of clam 23, we determine Petitioner has not shown that Heller anticipates claim 23.” slip op. at 31

  Patent outcomesUS 11,000,213 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,000,213
• Abbott Diabetes Care Inc v. Dexcom, Inc.Some claims unpatentable
  PTAB · Nov 1, 2023 · IPR2022-00909 · APJ Scott A Daniels · IPR · Final written decision

  Claims 1–4, 19, and 23 are unpatentable as obvious; claims 5 and 12 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “including a “predictive glucose value,” nowhere do we find the written description or drawings to have delineated such a second function expressly as “the present invention.” See, generally, Ex. 1001; see also Evolusion Concepts, Inc. v. HOC Events, Inc., 22 F.4th 1361, 1367 (Fed. Cir. 2022) (“We have repeatedly held that ‘it is not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit claims beyond their plain meaning.’”) (citation omitted). And, regardless of the exact wording, the concern we have is that without a persuasive, express, indication in the specification that the “second function” is specifically limited to “predicting glucose values,” it is a disfavored path to read limitations into the claims. Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import limitations into a claim that are not expressly part of may not be read into a claim when the claim language is broader than the embodiment. SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The facts and written description here appear to fall more squarely into the category of cases where it is not enough to simply point to embodiments in the specification including the unrecited claim limitation. See Rambus Inc. v. Infineon Techs. Ag, 318 F.3d 1081, 1094 (Fed. Cir. 2003) (Even in cases where a “present invention” statement is provided, the Federal Circuit has explained that ‘[w]hile clear language characterizing ‘the present invention’ may limit the ordinary meaning of claim terms, . . . such language must be read in context of the entire specification and the prosecution history.”) (citation omitted); see also In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.”).” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41.” slip op. at 35

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

    “second function.” PO Resp. 19. However, neither did Patent Owner provide an express construction. See generally id. is any disagreement about the meaning of “a second function” apart from the argument by Patent Owner that the second function should be understood to include “a predictive glucose value.” We are not apprised of any reason for Petitioner to provide an express construction for “second function” in this case. The plain and ordinary reading of limitation 1b is a method step of “evaluating sensor data using a second function to determine whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Ex. 1001, 48:39–41. As far as “second function” goes, the claim language is clear on its face that the second function “determine[s] whether a parameter indicative of glucose value meets one or more non user settable second criteria.” Id. Patent Owner has not offered any construction, nor apart from criticizing Petitioner, indicated in any manner that the “second function” as recited in claims 1 and 19 requires a construction. Our understanding of “second function” is consistent with the specification of the ’215 patent. A plain reading of the specification reveals that the first criteria relates to the claimed “first function,” and the “second criteria” relates to the claimed “second function.” See, e.g., Ex. 1001 3:44–49 (The ’215 Patent describing “a processor configured to: evaluate sensor data using a first function to determine whether a real time glucose value meets one or more first criteria; evaluate sensor data using a second function to determine whether a predicted glucose value meets one or more second criteria.”). The specification description is therefore mostly consistent with the recitations in claim 1 with respect to the first and second functions and relative first and second criteria. Compare id., with Ex. 1001, 48:36–41. slip op. at 34

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In our Institution Decision we determined, in accordance with Petitioner’s proposal, that a person of ordinary skill in the art at the time of the ’215 patent [w]ould have had a Bachelor’s degree in biomedical engineering, mathematics, statistics, or computer science (or a related or equivalent field), and two or more years of experience researching, developing, designing and/or evaluating (or supervising the same) medical devices for measuring analyte levels, e.g., analyte sensors, including at least some experience in researching, developing, designing and/or evaluating (or supervising the same) methods, systems, or algorithms for providing indicators (e.g., alerts, alarms or other indicators) of analyte levels to users, or equivalent experience. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Inst. Dec. 8; Pet. 9–10 (citing Ex. 1002 ¶¶ 24–26). Patent Owner states that “DexCom does not challenge Petitioner’s POSA definition (Petition, 9-10) because the Petition fails even if it is adopted.” PO Resp. 9 (citing Ex. 2008 ¶¶ 20–23). ordinary skill in the art, and because Petitioner’s assessment is consistent with the ’215 patent and the asserted prior art, we continue to rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 11

  Patent outcomesUS 10,702,215 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,702,215

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.