- PTAB · Sep 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Remand
The Board instituted IPR of claims 1–21 on all asserted grounds after finding a reasonable likelihood of prevailing on the Nishida-based challenges.
RulingsRemand decision- Director reviewDirector review, grantedGranted
“partes review of U.S. Patent No. 8,266,749 B2 (“the ’749 patent,” Ex. 1001). Paper 1 (“Pet.”). The Petition challenges the patentability of claims 1–21 of the ’749 patent. Nike, Inc. (“Patent Owner”)2 filed a Preliminary Response to the Petition. Paper 6 (“Prelim. Resp.”). With our authorization, Petitioner filed a Reply to Patent Owner’s Preliminary Response (Paper 10) and Patent Owner filed a Sur-reply (Paper 13). We discretionarily denied institution under 35 U.S.C. § 325(d). Paper 20. Petitioner filed a request for Director Review of the Decision denying institution. Paper 21. Director Review was granted, the Decision denying institution of inter partes review was vacated, and the case was remanded to the Board. Id. at 4. Specifically, the case was “remanded to the Board with instructions to consider Petitioner’s Nishida grounds and to determine whether the Petition should be instituted.” Id. at 3–4.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the Petition and the Preliminary Response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’749” slip op. at 2
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“In support of Petitioner’s position, Dr. Adanur testifies that “Nishida discloses that the unfinished surface area 1.1 is part of the web 1 itself,” that Nishida discloses that the computer-controlled process can (using Nishida’s phrase) “put in” up to seven different textile fibers or yarns into the web of material in one operation, and that, “[t]hus, Nishida discloses simultaneously knitting its layouts 2 and tongue 40 (each a ‘textile element’) with the unfinished surface area 1.1 (a ‘surrounding textile structure’).” Ex. 1002 ¶ 216 (citing Ex. 1022, 2:12–20, 4:47–55, 5:45–49). For purposes of institution, we credit that testimony over the testimony of Dr. Pastore, because, on the current record, we regard Dr. Adanur’s testimony as more consistent with the evidence. This and the other related issues may be explored more fully during the trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSITA”) in the field of the ’749 patent in March 2004 would have been someone with at least a few years of experience in knit materials and knitting methods and machines that can be used in making footwear, or a bachelor’s degree in textile-related sciences, engineering, or industrial product design, or equivalent academic or work experience, including in the footwear industry. EX1002, ¶68. Such a person of ordinary skill would have at least a general understanding of general construction processes and materials used in the manufacturing process of fabric-based articles. For individuals with a lower educational level, a person could still be of ordinary skill in the art provided that person’s working experience compensates for any such lower educational level, or vice versa. See id. Pet. 23–24. Patent Owner states that, “[f]or purposes of this Preliminary Response, Nike applies Skechers’ definition for a person of ordinary skill in the art.” Prelim. Resp. 14. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - PTAB · Sep 4, 2024 · IPR2023-00693 · APJ Cynthia L Murphy · IPR · Final written decision
The Board canceled challenged claims 1–5, 9–10, 12–17, and 23–25, and denied substitute claims 26–41 for lack of written-description support for the amendments.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“A. Written Description The test for sufficiency of a written description is whether the disclosure “clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). The disclosure must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351.” slip op. at 13
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“The RMTA is non-contingent, and, therefore, Patent Owner is making two requests: 1) cancel the claims challenged in the Petition; and 2) add the substitute claims proposed in the motion. We grant in-part the RMTA by canceling the claims challenged in the Petition. We deny in-part the RMTA by not adding the proposed substitute claims.” slip op. at 2
Nonecites PhillipsPatents in suitUS 9,064,376 - PTAB · Dec 13, 2021 · IPR2020-01062 · APJ Ken B Barrett · IPR · Final written decision
The Board granted cancellation of claims 1–15, 19–20, and 22–24; allowed substitute claims 26–29, 31–38, and 40–44; and denied substitute claims 30 and 39 for lack of written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1003 ¶¶ 78–79; see Pet. 10. In the Institution Decision, we adopted Mr. Fischer’s definition for purposes of that decision. Institution Decision (Paper 7) 9–10. Patent Owner states that it “accepts that definition for the purposes of this proceeding.” Rev’d MTA 24. Mr. Fischer’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Mr. Fischer’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “code” and “Electronic Product Code (EPC).” Opp. to Rev’d MTA 6. Patent Owner asserts that “the limitations of the substitute claims do not require construction and should, instead, be construed in accordance with their ordinary meaning.” Rev’d MTA 24. According to Patent Owner, the addition of certain features of the proposed substitute claims renders moot Petitioner’s arguments concerning the meaning of the term “code.” Id. Additionally, Petitioner argues that the content of the recited codes— an EPC and a code different from the EPC—constitutes “printed matter” (non-functional descriptive material) and, therefore, are not entitled to patentable weight. Opp. to Rev’d MTA 7–10; Pet. Sur-reply 5–6. We need not reach this issue. Even if we construed the specifically recited codes as being non-functional descriptive material, Petitioner, for reasons discussed below, has not shown that the claimed subject matter is unpatentable. Also, the parties do not identify any other issue in this case that turns on whether the two recited codes are non-functional descriptive material. See, e.g., Opp. to Rev’d MTA 11–12 (Petitioner arguing that the relied-on prior art discloses codes in the form of an EPC and a TID (i.e. a code other than the EPC)). On this record, we determine that no claim terms require express construction.” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“A patent claim is indefinite when that claim, “viewed in light of the specification and prosecution history, [does not] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014).” slip op. at 12
- ScopeDecided for patent owner
“Motion to Amend, that “[c]onstruing ‘a first and second memory bank’ to mean, for example, two memories instead of ‘a memory’ also impermissibly broadens the claims.” Opp. to Rev’d MTA 4 n.1 (citing Ex. 1032 ¶¶ 3024– 3027); see also Pet. Sur-reply 1–2 (“the scope of the proposed claims is impermissibly broadened to encompass logical memory banks storing codes in more than one memory.”); Tr. 7:12–13 (“That’s improper because it enlarges the scope of claims to include two memories instead of just one.”). Petitioner’s argument appears to assume that the proposed substitute claims require two memories (as opposed to the recited “memory bank[s]”) and that, because two memories are quantitatively more than one memory, the claims have been broadened. We disagree with Petitioner’s arguments. The arguments are contingent upon a construction of two memory banks being the same scope as two memories. See Opp. to Rev’d MTA 4 n.1 (“Construing . . . impermissibly broadens the claims.”). Petitioner has not offered any persuasive argument or evidence that the two different terms—“memory” and “memory bank” are coextensive or that the more general term “memory” can encompass two of the more specific “memory bank[s].” Further, even if the proposed substitute claims required two memories rather than two memory banks, adding the requirement of a second memory (or, as written in the proposed claims, two memory banks rather than “a memory” as in the issued claim) is further limiting the claims and, therefore, is not broadening the scope. See Hockerson-Halberstadt, Inc., 183 F.3d at 1374. We agree with Patent Owner that the amended language regarding two memory banks does not impermissibly broaden the scope relative to the original claims.” slip op. at 18
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 8,134,451 - PTAB · Mar 4, 2016 · IPR2014-01368 · APJ Kalyan K Deshpande · IPR · Final written decision
Claims 1, 2, 5, and 10 of the ’469 patent were held unpatentable; the remaining challenged claims were not shown unpatentable because the cited art did not disclose the required current connection status.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In Straight Path, the Federal Circuit held that the claim language “is connected to the computer network” has a facially clear meaning, that “the query transmitted to the server seeks to determine whether the second unit is connected at that time, i.e., connected at the time that the query is sent.” Straight Path, 806 F.3d at 1360.11 The Federal Circuit held that the query asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate.” Id. The Federal Circuit further explained that “[i]t is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Id. The Federal Circuit explained, “[w]hen claim language has as plain a meaning on an issue as the language does here, leaving no genuine uncertainties on interpretive questions relevant to the case, it is particularly difficult to conclude that the specification reasonably supports a different meaning. The specification plays a more limited role than in the common situation where claim terms are uncertain in meaning in relevant respects.” Id. at 1361. Accordingly, the Federal Circuit construed the limitation “is connected to the computer network” as “is connected to the computer network at the time the query is transmitted to the server.” Id. at 1363.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“and NetBIOS fail to determine whether a computer or process is connected to the computer network. PO Resp. 35, 49–51. In view of our construction of this claim limitation, we agree with Patent Owner. Microsoft Manual discloses that once a computer is registered with the WINS server (which is a NetBIOS Name Server (NBNS)) as active and on-line, the WINS server maintains a database of names and addresses as active and on-line by (1) releasing names once a computer is shut down properly and (2) requiring a renewal time period in which a computer must reregister. Ex. 1012, 62– 63, 68–69. Microsoft Manual discloses that in response to User Datagram Protocol (UDP) name queries, “a mapping in the database does not ensure that the related device is currently running.” Id. at 68. Microsoft Manual further explains that a “local WINS database should periodically be cleared of released entries and old entries that were registered at another WINS server but did not get removed from this WINS database for some reason.” Id. at 150. In other words, Microsoft Manual discloses that the WINS database may include entries of computers that are not currently connected to the WINS network. Accordingly, a query to as to whether a second process “is connected to the computer network” in Microsoft Manual will not determine whether the second process is connected to the WINS network at the time that the query is transmitted to the server. As discussed above in our claim construction analysis above (see Section I.E.1), a query as to whether a process “is connected to a computer network” or has an “on-line” status asks “whether the device ‘is’ connected, not whether it was connected or whether it is still registered as being connected even if that registration information is no longer accurate. It is not a reasonable interpretation of the claim language . . . to say that it is satisfied by a query that asks only for registration information, regardless of its current accuracy.” Straight Path, 806 F.3d at 1360. Microsoft Manual discloses that the WINS server has information that a process “was” connected to the computer network, and that information may no longer be accurate. See Ex. 1012, 68, 150. As such, we determine that Microsoft Manual does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible,” as construed herein. Similarly, NetBIOS discloses a registration process for resources or nodes to receive a unique name by registering a name. Ex. 1014, 379. During a name query (discovery), a datagram is sent requesting the name and address of another resource. Id. at 396. The NBNS maintains a database of resource names through explicit name deletion, where the node specifies a deletion function and implicit name deletion, which occurs when a node ceases operation. Id. at 379. NetBIOS explains that implicit name deletion “is a frequent occurrence.” Id. Implicit name deletion is managed by assigning nodes a specified lifetime for registered names, where a name is silently released if a node fails to refresh the registered name before the lifetime expires. Id. NetBIOS further discloses a mechanism where the NBNS may correct the information stored after an incorrect response is provided to a requesting node. See id. at 409. However, similar to Microsoft Manual, NetBIOS discloses that the information stored by the NBNS may be incorrect, and, therefore, will not determine whether a second process is connected to the computer network at the time that the query is transmitted to the server. Therefore, NetBIOS also does not disclose the claimed “is connected to the computer network,” “on-line status,” or “is accessible.” Given that the combination of Microsoft Manual and NetBIOS fails to teach or suggest the claims as construed, we need not reach the remaining arguments presented by Petitioner and Patent Owner.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner contends that “WINS is an implementation of NetBIOS” and, therefore, Petitioner contends that “one having skill in the art would have known about and been motivated to combine Microsoft Manual with NetBIOS.” Id. at 34 (citing 67 Ex. 1004 ¶¶ 88–89). We are persuaded by Petitioner that the combination is reasonable because Microsoft Manual demonstrates that Microsoft TCP/IP has combined the elements of NetBIOS and Microsoft Manual in the same manner in which Petitioner proposes to combine NetBIOS and Microsoft Manual. See 67 Ex. 1012, 3, 11. Microsoft Manual discloses that Microsoft TCP/IP for Windows NT provides support for application interfaces, including NetBIOS for establishing logical names and sessions on the network. Id. at 11. Microsoft Manual describes that “[w]hen WINS servers are in place on the network, NetBIOS over TCP/IP resolves names on a client computer by communication with the WINS server.” 67 Pet. 34 (quoting 67 Ex. 1012, 62). We are persuaded that Microsoft TCP/IP for Windows NT utilizes NetBIOS features for name resolution, as disclosed by Microsoft Manual, and a person with ordinary skill in the art would have readily combined the disclosures of Microsoft Manual and Microsoft Manual.” slip op. at 25
- BurdenFwd mixedUnpatentable
“8. Conclusion We have reviewed the Petition and supporting evidence and find that Petitioner has shown by a preponderance of the evidence that claims 1, 2, and 5 of the ʼ469 patent are obvious over Microsoft Manual and NetBIOS, and claim 10 is unpatentable because it depends from a cancelled claim. Accordingly, we determine that Petitioner has demonstrated by a preponderance of the evidence that claims 1, 2, 5, and 10 of the ʼ469 patent are unpatentable.” slip op. at 29
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 6,131,121 - PTAB · Sep 17, 2015 · IPR2015-00531 · APJ Patrick M Boucher · IPR · Order
The Board terminated the proceedings as to MediaTek Inc. and MediaTek USA, Inc., vacated the scheduling orders, and continued the proceedings as to Bandspeed, Inc.
RulingsOther- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“IPR2015-01581, and IPR2015-01582 (“the related proceedings”). In each of the related proceedings, a petition was filed by Qualcomm Incorporated on July 12, 2015, with a motion to join a respective one of these proceedings. Papers 1, 2 in each of the related proceedings. We note that the joinder motions in the related proceedings were filed before the instant motions to terminate were filed in these proceedings. Patent Owner opposes the joinder motions in the related proceedings. Paper 8 in each of the related proceedings. If the joinder motions are not granted, the related proceedings are barred under 35 U.S.C. § 315(b). See 35 U.S.C. § 315(c). Patent Owner has not yet filed a preliminary response in any of the related proceedings, the deadline for which is October 28, 2015, nor sought to expedite the related proceedings by filing a waiver under 37 C.F.R. § 42.107(b). It is thus 2 Citations are to IPR2015-00314. premature to decide the joinder motions in the related proceedings. See 35 U.S.C. § 315(c). Nevertheless, we discern no compelling interest to be served by delaying termination of these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc., both of which have settled with Patent Owner. See 35 U.S.C. § 317 (“An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner unless the Office has decided the merits of the proceeding before the request for termination is filed” (emphasis added)). These proceedings are at an early stage, and no motions are pending in any of these proceedings. Under these circumstances, we determine that it is appropriate to terminate these proceedings with respect to MediaTek Inc. and MediaTek USA, Inc. We exercise the discretion afforded under 35 U.S.C. § 317(a) to decline, at this time, to terminate these proceedings with respect to Patent Owner. Because no petitioner remains in these proceedings, we vacate the Scheduling Order in each proceeding (Paper 13 in IPR2015-00314, IPR2015-00316, and IPR2015-00531; and Paper 15 in IPR2015-00315). If necessary, we will revisit scheduling for these proceedings after decisions on the joinder motions are made in the related proceedings. If appropriate, we will also revisit the Motions to Terminate as to Patent Owner after ruling on the motions for joinder in the related proceedings.” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted in part
“The Joint Motions to Seal are granted to the extent that they request that the agreement be treated as business confidential information and be kept separate from the patent files under 37 C.F.R. § 42.74(c) but otherwise denied. The requests should not have been filed as “Motions to Seal,” which has other meaning, under 37 C.F.R. § 42.14, with respect to the underlying document in the context of the proceeding, e.g., expungement or made public under certain circumstances.” slip op. at 3
NonePatents in suitUS 8,542,643 - PTAB · Jan 30, 2014 · IPR2014-00078 · APJ Grace Karaffa Obermann · IPR · Order
The Board granted the parties’ joint motion and terminated the proceeding before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“On January 24, 2014, pursuant to 35 U.S.C. § 317(a), the parties filed a joint motion to terminate this proceeding. Paper 9. Accompanying the motion, the parties filed a true copy of a settlement agreement (Ex. 2001-02) along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 (Paper 8). We authorized the filing of these papers in an email of January 21, 2014. This case is in a preliminary stage; no decision whether to institute a trial has been made. Based on the facts of the case, it is appropriate to terminate the proceeding. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 2
NonePatents in suitUS 6,953,703 - PTAB · Jan 21, 2014 · IPR2014-00072 · APJ Grace Karaffa Obermann · IPR · Order
The Board granted the parties’ joint motion to terminate the proceeding before deciding whether to institute trial.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“motion to terminate this proceeding. Accompanying the motion, the parties filed a true copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. We authorized the filing of these papers during a conference call conducted January 13, 2014. See Order entered January 14, 2014. This case is in the preliminary proceeding stage; no decision whether to institute a trial has been made. Based on the facts of the case, it is appropriate to terminate this proceeding. Therefore, the joint motion to terminate the proceeding is granted. Accordingly, it is ORDERED that the parties’ joint request that the settlement agreement be treated as business confidential information, to be kept separate from the patent file, is granted; FURTHER ORDERED that the joint motion to terminate the proceeding is granted; and FURTHER ORDERED that the proceeding is terminated.” slip op. at 2
NonePatents in suitUS 5,686,738 - Seoul Semiconductor Co., Ltd. / Seoul Semiconductor, Inc. et al. v. Trustees Of Boston UniversityOtherPTAB · Jan 21, 2014 · IPR2013-00392 · APJ Grace Karaffa Obermann · IPR · Order
The Board granted the parties’ joint motion to terminate the instituted inter partes review and ordered the proceeding terminated.
RulingsOther- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“motion to terminate this proceeding. Accompanying the motion, the parties filed a true copy of a settlement agreement along with a joint request to treat the settlement agreement as business confidential, to be kept separate from the patent file pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74. We authorized the filing of these papers during a conference call conducted January 13, 2014. See Order entered January 14, 2014. A Decision to Institute an inter partes review in this case was entered by the Board on December 30, 2013. An initial conference call is scheduled for January 30, 2014. This case is in a preliminary stage; no significant activity has occurred since entry of our Decision to Institute. Based on the facts of the case, it is appropriate to terminate the proceedings. Therefore, the joint motion to terminate the proceeding is granted.” slip op. at 2
NonePatents in suitUS 6,953,703
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.