• Tanklogix, LLC v. Sitepro, Inc.Institution denied
  PTAB · Oct 10, 2025 · IPR2025-00653 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution on all claims because the Petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [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) (2024). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The parties’ proposed levels of ordinary skill in the art are similar, although Patent Owner proposes two years of experience along with a bachelor’s degree whereas Petitioner proposes “significant” experience. Patent Owner also proposes an alternative with more extensive experience in lieu of a bachelor’s degree. Although we find Petitioner’s proposed qualifications acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of ordinary skill necessary to understand and implement the teachings of the ’504 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Our analysis and findings herein, however, do not turn on any differences in the parties’ proposed qualifications.” slip op. at 12

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

    “Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). The parties assert that each claim term should be construed in accordance with its plain and ordinary meaning. Pet. 9; Prelim. Resp. 4 (citing Ex. 2009 ¶ 72); see Ex. 1002 ¶ 22 (opining the same). And, in the respective claim construction sections of their briefs, the parties do not propose any claim terms for express construction. We agree with the parties that no claim terms require express construction to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 13

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1002 ¶ 47. As reflected above, Dr. Wooley’s testimony as to element [1.2] does not even assert that Cardamone discloses a tank, let alone one or more sensors disposed at a tank as recited in element [1.2]. Thus, Dr. Wooley’s testimony does not support Petitioner’s argument on this issue.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,726,504
• Tanklogix, LLC v. SiteproInstitution denied
  PTAB · Oct 10, 2025 · IPR2025-00650 · APJ Sheila F Mcshane · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 18–32 and 34 were unpatentable over Kahn or Kahn and Gutierrez.

  RulingsInstitution decision

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

    “information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has not established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’871 patent. Accordingly, for the reasons that follow, we decline to institute an inter partes review of claims 18–32 and 34 of the ’871 patent.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “The respective proposed levels of qualifications for a person of ordinary skill in the art are similar, with Patent Owner proposing two years of experience compared to Petitioner proposing significant experience with remotely controlling fluid-handling devices, like SCADA systems. Patent Owner also proposes more extensive experience in lieu of educational experience. While we find Petitioner’s proposed qualifications to be acceptable, we adopt Patent Owner’s proposed qualifications for the purposes of this Decision because they offer a wider range of qualifications that nonetheless comport with the level of skill necessary to understand and implement the teachings of the ’871 patent and the asserted prior art. Our analysis and findings herein, however, do not turn on any differences in the qualifications adopted.” slip op. at 8

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

    “We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “actuators and the remote control of fluid handling devices, including the receipt with the user-interface module of “a user command to actuate an actuator via a presented control interface” (limitation [18.7]) and “account authorized to send commands to remotely control fluid handling devices” (limitation [18.11]). We agree with Patent Owner that the Petition fails to demonstrate that Kahn discloses or teaches these limitations because the evidence does not provide support that there is remote control of fluid handling devices or the use of a user command on a control interface to send a command to a fluid handling device, for instance. Kahn is directed to providing access to fluid sensing data and analyzing and providing visual information on that data, but we do not discern that it teaches or discloses the capability to remotely control fluid handling devices. See, e.g., Ex. 1005, code (54), 1:27–36, 2:50–3:2. More specifically, the Kahn disclosures that Petitioner repeatedly relies upon for allegedly teaching this control are deficient. See Ex. 1005, 10:62–67, 14:35– 15:2, 15:62–16:32; see also Pet. 12–14, 16–18. Kahn discloses that “the communication unit 112B can include on-site alerts such as optical (indicator lights), audible alerts (e.g., alarm sounds), tactile (e.g., vibration of the unit) or can be interfaced to an appropriate control valve for simply shutting off the supply of fluid upon the detection of emergency events, for instance.” Ex. 1005, 10:62–67. Communication unit 112B is part of the local “sensor unit,” wherein the detection conditions determined by the sensor are communicated to remote devices by communication unit 112B. See id. at 3:31–33, 5:62–6:2, 6:27–35, 7:33–37, 13:7–12, Figs. 1A–1C. Kahn discloses that the sensor units, which include communication units 112B, can be located near shut-off valves and can communicate with distant locations. See id. at 11:1–13. There are no disclosures, however, in the above passages that there is remote control of fluid handling devices, that there is a user command on a control interface that actuates an actuator, or that there is a command sent to the facility actuators via a network connection, as required in limitations [18.5]–[18.7] and [18.9]–[18.12], respectively. Rather, the disclosure indicates that the communication unit 112B includes on-site alerts and that the local (non-remote) communication unit 112B can be interfaced with the control valve.” slip op. at 18

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,488,871
• Intel Corporation / Lenovo (United States) Inc. et al. v. Collision Communications, Inc.Institution denied
  PTAB · May 28, 2025 · IPR2025-00301 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution of review for claims 1–11, 16, and 21 under § 314(a), finding the Fintiv factors favored discretionary denial, and denied joinder.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “2026. This date is nearly five months prior to the date on which the final written decision would be due if trial were instituted in this proceeding. And, even if we assume Petitioner’s alleged February–March 2026 trial date, this date too is several months prior to the projected final written decision deadline. As such, it is unlikely that a final written decision in this proceeding would issue before trial in the district court, unless the trial was delayed or rescheduled for a later time. Thus, we find this factor weighs in favor of exercising our discretion to deny institution. See ARM Ltd. v. Daedalus Prime LLC, IPR2025-00207, Paper 10 at 2 (May 16, 2025) (Before the Office of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) (exercising discretion to deny institution with the same relative timing between district court trial and final written decision deadline).” slip op. at 13

  • PTAB / AIA Trials › Motions to amend / substitute claimsNot reached
  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “presented in the petition . . . and any [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). Institution of inter partes review, however, is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, we exercise discretion pursuant to 35 U.S.C. § 314(a) not to institute inter partes review. Additionally, for the same reasons and because institution was denied in IPR2024-01248, we deny Petitioner’s Motion for Joinder. See 35 U.S.C. § 315(c) (“[T]he Director . . . may join as a party . . . any person who properly files a petition under section 311 that the Director . . . determines warrants the institution of an inter partes review under section 314.”).” slip op. at 3

  Discretionary denial
  Patents in suitUS 9,814,071
• Arthrex, Inc. v. Medshape, Inc.Institution denied
  PTAB · Apr 25, 2025 · IPR2025-00053 · APJ James A Tartal · IPR · Institution

  The Board denied institution of IPR challenging claims 1–10, exercising § 314(a) discretion because the Fintiv factors, considered holistically, favored denial.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). However, institution of inter partes review is discretionary. Upon consideration of the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we exercise our discretion to deny institution of inter partes review under 35 U.S.C. § 314(a) in view of the co-pending district court litigation.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “7. Balancing the Fintiv Factors As discussed above, factors 1 and 3–5 each favor denial. Factor 2 is the only factor that favors institution because there is no trial date in the Parallel Proceeding and the evidence presented of a median time-to-trial for civil trials in that district suggests a potential trial date after the statutory deadline for a final written decision in this proceeding. However, Patent Owner also shows that discovery and any dispositive motions will be completed in the Parallel Proceeding well before the statutory deadline for a final written decision in this proceeding, which presents a risk of duplicated efforts given the unmitigated overlap in issues between proceedings. On balance, considerations concerning an uncertain trial date in the Parallel Proceeding under Factor 2 do not outweigh the more substantial reasons identified under the other Fintiv Factors. Thus, considering all of the factors holistically, we find on balance that the factors on this unique record weigh in favor of discretionary denial of the Petition. Accordingly, we exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 15

  Discretionary denial
  Patents in suitUS 7,985,222
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01250 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–5, 7, 9–16, or 20 unpatentable over the asserted grounds.

  RulingsInstitution decision

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

    “An inter partes review may be instituted only if “the information presented in the petition . . . and any [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) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Min’s testimony, proposes that a person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s [degree] in [electrical engineering, computer engineering, or computer science], physics, or equivalent, and two years of experience with cellular telecommunications, radio-access network architectures, protocols and signal propagation in wireless networks.” Pet. 3 (citing Ex. 1003 ¶ 59). Dr. Min testifies that “[a]dditional education could substitute for professional experience and vice versa.” Ex. 1003 ¶ 59. Additionally, Petitioner contends that Dr. Min “exceeded this level of experience by the priority date.” Pet. 3 (citing Ex. 1010 (curriculum vitae of Dr. Min)). In its Preliminary Response, Patent Owner does not take a position on the relevant level of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’946 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

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

    “Neither party contends that any claim terms require an express construction to resolve the present controversy. Pet. 8 (“For purposes of this Petition only, Petitioner does not believe any terms require a formal construction.”); see generally Prelim. Resp. Nonetheless, Petitioner explains that the Petition is structured such that “Ground 1 is based on Patent Owner’s infringement contentions in the district court litigation, where the claimed ‘MUD module’ is generally mapped to multiple-input multiple-output (MIMO) receivers in a wireless network.” Pet. 2. Petitioner contends that “[u]nder this broad interpretation of a ‘MUD module,’ Walton’s MIMO receiver renders every challenged claim obvious.” Id. In contrast to Ground 1, the Petition states that “Ground 2 is based on the plain meaning of ‘MUD module,’ which is a component that detects, separates, and decodes signals from multiple users transmitting simultaneously over the same frequency band.” Id. Petitioner contends that, “[a]pplying the correct meaning of the term, Walton’s MIMO receiver does not necessarily comprise a MUD module.” Id. Therefore, Petitioner explains that “Ground 2 combines Walton with Learned, which expressly discloses [a] multi-user detector, and thus renders every challenged claim obvious in combination with Walton.” Id. at 2–3.7 In other words, the Petition presents Ground 1 and Grounds 2/3 as alternatives depending on the meaning of 7 Although not specifically relevant to claim construction, Petitioner explains that “Ground 3 further combines Walton and Learned with Quigley, to the extent Patent Owner argues Walton does not disclose providing a burst control input.” Pet. 3. “MUD module,” where Ground 1 is based on Petitioner’s understanding of Patent Owner’s interpretation of the term and Grounds 2 and 3 are based on Petitioner’s interpretation of the term as having its plain meaning. Petitioner further contends that “[e]very other claim term carries its ‘ordinary and customary meaning’ . . . .” Id. at 8. Although Petitioner presents a potential dispute regarding the meaning of “MUD module,” we need not construe this term expressly because the determination we reach herein does not depend on which meaning MUD module is applied. Accordingly, we do not construe any claim terms expressly because express constructions are not necessary to resolve the controversy before us. See Realtime Data, 912 F.3d at 1375.” slip op. at 12

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “IV. DISCRETIONARY DENIAL Patent Owners contends that the factors set forth in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 9 (PTAB Mar. 20, 2020) (precedential), weigh heavily in favor of discretionary denial. Prelim. Resp. 40–46; Paper 10. Petitioner disagrees. Pet. 74–77; Paper 9. In light of the conclusion reached above, we need not address the parties’ arguments regarding discretionary denial.” slip op. at 25

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,089,946
• Samsung Electronics America, Inc. / Samsung Electronics Co., Ltd. v. Collision Communications, Inc.Institution denied
  PTAB · Mar 21, 2025 · IPR2024-01248 · APJ Bart A Gerstenblith · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving claims 1–11, 16, and 21 unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

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

    “presented in the petition . . . and any [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) (2018). For the reasons given below, on this record Petitioner has not established a reasonable likelihood that it would prevail in showing the unpatentability of any of the Challenged Claims. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’071 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 12

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

    “Neither party proposes a specific construction of any claim term, although Petitioner contends each term should be construed according to its plain and ordinary meaning. Pet. 16; see generally Prelim. Resp. Accordingly, we need not construe any claim terms expressly because the meaning of the terms is not in dispute and an express construction is not necessary to resolve the controversy before us.” slip op. at 13

  • BurdenNot shown unpatentable

    “We find the Petition lacking in particularity because it does not clearly identify what aspect of Jin is alleged to teach the unique signal parameters (or unique estimated signal parameters) recited in claim 1. See, e.g., 35 U.S.C. § 312(a)(3) (“A petition filed under section 311 may be considered only if — (3) the petition identifies, in writing and with particularity, . . . the evidence that supports the ground for the challenge to each claim . . . .”). First, as reflected above, the Petition asserts that something called a “unique pilot parameter” teaches the recited unique estimated signal parameters. But “unique pilot parameter” is not a term or phrase recited in Jin. See Prelim. Resp. 19 (arguing the same). So, when Petitioner states “Jin discloses that the base station uses the unique pilot parameter (i.e., ‘unique estimated signal parameters’) to ‘identify which user (i.e., mobile terminal) has transmitted the received data,’” it is not clear what element in Jin Petitioner intends to identify by the term “unique pilot parameter.” Dr. Min’s testimony does not help resolve the ambiguity in the Petition. In particular, Dr. Min also refers to a “unique pilot parameter (i.e., ‘unique signal parameter’) for each user.” Ex. 1003 ¶ 89. But, as noted above, Jin does not disclose an element referred to as a “pilot parameter” and it is not clear what element Dr. Min intended to identify in Jin.8” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,814,071
• Shenzhen Waydoo Intelligence Technology Co., Ltd. v. MHL Custom, Inc.Institution denied
  PTAB · Dec 17, 2024 · IPR2024-00998 · APJ Michael L Woods · IPR · Institution

  The Board denied joinder and denied institution on all challenged claims because the petition was time-barred under § 315(b).

  RulingsInstitution decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “establish that it is entitled to the requested relief.” See 37 C.F.R. § 42.20(c). Regarding joinder, the relevant statute provides that: If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. 35 U.S.C. § 315(c).” slip op. at 5

  • PTAB / AIA Trials › §315(b) time barInstitution denied time barInstitution denied

    “This statute further provides that the petition for inter partes review must be filed no later than “1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.101(b). This one-year time bar, however, “shall not apply to a request for joinder.” 35 U.S.C. § 315(b); see also 37 C.F.R. § 42.122(b).” slip op. at 5

  Discretionary denial
  Patents in suitUS 9,359,044
• Dyson Technology Ltd. / Dyson, Inc. v. Omachron Intellectual Property Inc.Institution denied
  PTAB · Oct 15, 2024 · IPR2024-00766 · APJ Brent M Dougal · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art grounds.

  RulingsInstitution decision

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

    “Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one challenged claim would have been obvious over the prior art. See 35 U.S.C. § 314(a).” slip op. at 5

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable

    “However, each of these asserted modifications is based on a teaching that is not present in Brown. Brown does not teach “a projection that provides resistance against ‘handle’ movement” or that “opening Brown’s ‘cover’ requires bending Brown’s ‘port,’” as asserted by Petitioner. See PO Resp. 22. As repeatedly noted, the identified “projection” appears to be nothing more than a portion of cover 14 the accessory/hose port. Petitioner’s arguments regarding a projection that provides resistance and a bendable port in Brown, appear to be nothing more than an effort to create the limitations of the claims in the prior art based on improper hindsight. For at least the above reasons, the Petition does not show how Brown teaches or suggests all of the limitations of the independent claims.” slip op. at 13

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable

    “Petitioner argues that when cleaning tool 10 (i.e. accessory) is in position on the vacuum, end wall 26 cannot open and, thus, that end wall is inhibited from opening. Pet. 45–46 (citing Ex. 1005, ¶ 37, Fig. 2; Ex. 1002 ¶¶ 143–145 (similar statements from Petitioner’s declarant)). Petitioner then asserts that the catch is therefore inhibited from moving to the disengaged position. Id. at 46. The combination of Dimbylow and Howes does not teach this limitation and Petitioner’s assertions are not persuasive. As can be seen from the above annotated Figure, nothing inhibits Dimbylow’s catch 42 from moving to a disengaged position. See also Prelim. Resp 11–14. Rather, any time Howe’s button is pressed, thereby moving the push-rod (to the right in the Figure), catch 42 would disengage, whether the door opened or not. Though cleaning tool 10 (i.e. accessory) inhibits end wall 26 from opening, it has no impact on movement of catch 42 (i.e. lock engaging member) from the engaged to disengaged position as required by the claim. Thus, the lock engaging member of Petitioner’s combination, i.e., the catch, is not inhibited from moving to a disengaged position when the accessory, i.e., the cleaning” slip op. at 17

  • Skill levelSkill level petitioner adoptedOther

    “understanding of a person of ordinary skill in the art at the time of the invention (“POSA”). Id. at 13, 17. Petitioner’s declarant asserts that a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or a similar field and 2-3 years of experience in machine design, such as vacuum cleaners. Additional education could offset less experience and vice versa, and a POSA could have also obtained similar knowledge and experience through other means. Ex. 1002 ¶ 42; see also Pet. 22 (making the same assertion without citation to declarant). Patent Owner does not contest the level of skill. Prelim. Resp. 2. We are persuaded, on the present record, that Petitioner’s (and its declarant’s) proposed definition of the ordinarily skilled artisan is consistent with the problems and solutions in the ’477 patent and prior art of record. We adopt the above definition of the level of skill for the purposes of this Decision.” slip op. at 5

  Claim construction§ 103 obviousness
  Patents in suitUS 10,568,477
• Dexcom, Inc. v. Abbott Diabetes Care Inc.Institution denied
  PTAB · Aug 8, 2024 · IPR2024-00520 · APJ John G New · IPR · Institution

  The Board denied institution because Dexcom did not show a reasonable likelihood that claims 5–7 were unpatentable under either Stafford–Raymond ground.

  RulingsInstitution decision

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

    “Burden of Proof “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity … the evidence that supports the grounds for the challenge to each claim”)). Therefore, in an inter partes review, the burden of proof is on the Petitioner to show that the challenged claims are unpatentable; that burden never shifts to the patentee. See 35 U.S.C. § 316(e); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (citing Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)). At the institution stage, Petitioner must show a reasonable likelihood that it would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We do not find these arguments persuasive. It may be so that Turner teaches that its recesses 77 receive rotation-restricting protrusions 71, which “extend[] into each recess 77 such that the recess side walls interfere with the protrusions to prevent rotation of the insertion device relative to body 20.” Ex. 1011 ¶ 69. And, it may also be so that Turner teaches this assembly as an advantage in that it prevents rotation of body 20. Id. However, Petitioner did not present this “design choice” theory of obviousness in the Petition. Petitioner first raises its “obvious design choice” argument with respect to Turner and Ground 2 in its Reply Brief; it is not to be found in its Petition.12 Petitioner cannot raise an argument in its” slip op. at 32

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “In each of the ’335 Specification, Stafford, Raymond, and Turner, the OBU is universally depicted as having a circular perimeter oriented around a longitudinal axis, and possessing either a cylindrical shape (’335 patent, Stafford, Raymond) or a roughly domed shape, with a circular, circumferential collar. See, e.g., Ex. 1001, Figs. 8, 17, 52, 54; Ex. 1009, Figs 3A–C, 4A; Ex. 1010, Figs. 14–16, Ex. 1011, Figs. 2A–B, 5G, 7A-B, 9, 11, 13A–B, 14, 15, 19, 20, 21, 25, 29, 30, 37, 38. Moreover, in each description of the location of recesses 3766 in the ’335 Specification, the recesses are described as being located “on the side walls” of the OBU. See Ex. 1001, col. 44, ll. 8–12; col. 45, ll. 61–64. Given the circular perimeter of all of these embodiments of the disclosures of the ’335 Specification, the teachings of Petitioner’s cited references, the dictionary definition of “periphery” as being “the perimeter of a circle or other closed curve,” and the ordinary meaning that the terms would have had to a skilled artisan at the time of the invention, in view of the ’335 Specification and file history” (Phillips, 415 F.3d at 1312–13), we conclude that a person of ordinary skill in the art would understand that the “plurality of recesses disposed on a periphery of the on body electronics unit housing” would be located “on the circumference of the on-body housing,” as we concluded in the ’01396 IPR Decision. See Dec. 48; see also Ex. 1001, col. 44, ll. 9–14 (stating that “gripping arms 3762 [of medical device carrier 3730] are provided with engagement boss 3764 which are configured to engage with corresponding recesses 3766 provided on the side walls of the on body housing 322”).” slip op. at 38

  • Strike new argumentNew argument disregardedDecided for patent owner

    “However, Petitioner did not present this “design choice” theory of obviousness in the Petition. Petitioner first raises its “obvious design choice” argument with respect to Turner and Ground 2 in its Reply Brief; it is not to be found in its Petition.12 Petitioner cannot raise an argument in its 12 The Petition makes a design choice argument with respect to the teachings of Raymond on Ground 1, contending that “it would have been an obvious design choice to implement two spaced-apart plural recesses on the housing—one to engage the protrusions on each of the two arms taught by Raymond.” Pet. 38. However, Petitioner adduced no prior art teaching or evidence of record of “spaced-apart plural recesses on the housing” that Reply Brief if that argument could first have been raised in its Petition. 37 C.F.R. § 42.23(b); see also L’Oréal USA, Inc. v. Univ. of Massachusetts, 2018 WL 4278992, *5 n.4 (PTAB Sept. 7, 2018); Matterport, Inc. v. Appliance Comp. III, Inc., 2021 WL 6340164, *9–10 (PTAB Nov. 19, 2021).” slip op. at 32

  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 11,266,335
• Neogenomics Laboratories, Inc. v. Natera, Inc.Institution denied
  PTAB · Jun 21, 2024 · IPR2024-00346 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution for claims 1–28 under § 325(d), finding the same or substantially the same art had been presented to the Office and no material examination error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential). “If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” Id. at 8–9. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 6

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied

    “III. CONCLUSION Because the same or substantially the same art previously were presented to the Office and Petitioner has not demonstrated that the examiner materially erred when considering the prior art, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’454 patent.10 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “erred when considering the multiplex-amplification limitation. See Advanced Bionics, 9 (“If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.”). Under the asserted grounds, Petitioner relies on Forshew as the sole reference to teach this limitation, which is required in all challenged claims. Thus, we exercise our discretion under § 325(d) and decline to institute inter partes review of the ’454 patent.” slip op. at 13

  § 103 obviousnessDiscretionary denial
  Patents in suitUS 11,530,454

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.