- Uatp IP LLC v. Slick Slide LLCSome claims unpatentablePTAB · Oct 2, 2026 · PGR2024-00054 · APJ Brian D Range · PGR · Final written decision
Claims 22–26 are unpatentable based on obviousness; claims 1–17, 27, and 28 were not shown unpatentable. Patent Owner’s motion to terminate was denied.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“1. Mesh Layer Petitioner contends “no formal claim construction is necessary in this” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“5. Analysis On this complete record, we determine that Petitioner’s arguments do” slip op. at 31
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“form of nylon and some form of Teflon (and possible combinations thereof) having the specific coefficient of friction range given in limitation [1c] breaks down, because the building blocks of the obviousness argument are not sufficiently identified in Phillips alone, nor in the supporting testimony. Accordingly, we determine that Petitioner’s arguments and evidence fail to show that Phillips renders the challenged claims obvious. 6. Conclusion Based on the foregoing, we determine that Petitioner has not established by a preponderance of the evidence that claims 1–4, 6, and 7 would have been anticipated by or obvious in view of Phillips.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“2. Products and Nexus We first consider the issue of whether certain evidence relied upon by” slip op. at 20
Patent outcomesUS 11,998,854 mixedClaim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites Phillips · Graham · NautilusPatents in suitUS 11,998,854 - Weatherford U.S., L.P v. Halliburton Energy Services, Inc.Some claims unpatentablePTAB · Dec 9, 2025 · IPR2024-00990 · APJ Brent M Dougal · IPR · Final written decision
Claims 11–12 and 14–20 are unpatentable; claims 1–10 and 21–23 are not shown unpatentable. Substitute claims 29–37 are unpatentable, and the motion to amend is denied as to them.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The level of skill is uncontested. Patent Owner adopts the level of skill identified by Petitioner as: [at] the time of the alleged invention in 2018, a POSITA[2] would have had a B.S. degree in mechanical or petroleum engineering or a similar technical discipline, with at least five years of experience in oil or gas well drilling, completion, and/or subsurface production operations or in technical support of such operations including at least some experience in unconsolidated formations utilizing sand control methods and means. Also,” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“on embodiments of Yeh with concentric sand screens having nine shunt tubes (six transport tubes and three packing tubes) (Yeh Figures 4A–B) and eccentric sand screens with four shunt tubes (two transport tubes and two packing tubes) (Yeh Figures 8A, 8C). See Pet. 32–37, 39, 41–43. Yet, Petitioner’s reasoning as to why “a higher-pressure shunt tube assembly necessitated greater wall thickness” rests on an unspoken one to one comparison between the shunt tubes of the different systems. See id.; see also Ex. 1003 ¶¶ 291–297 (Petitioner’s declarant comparing possible transport tubes of different pressure regions without considering or addressing any difference in the number of transport tubes). However, the embodiments relied on by Petitioner have different numbers of shunt tubes, and thus the greater wall thickness does not appear to be “necessitated” in the way inferred by Petitioner. Further, Petitioner’s analysis would seem to be most appropriate when comparing two concentric sand screens for different pressure regions, or two eccentric sand screens for different pressure regions. relies on Yeh’s teachings related to a horizontal well bore of 5000 feet for the “concentric screen → crossover tool → eccentric screen” arrangement, as well as, for why the concentric screen needs to be rated for a high pressure. Pet. 32–37, 39, 41–43. Petitioner also refers to these features for why one of skill in the art would combine the teachings of Yeh and Yeh2. Id. at 32. However, on cross-examination, Petitioner’s declarant agreed that it is concentric sand screens having a 6x3 shunt tube design that would provide the noted benefits of being rated for a higher pressure and being more robust (as relied on in the Petition), as compared to eccentric sand screens. Ex. 2013, 42:20–43:8; Sur-reply 4–5. This also exposes another issue with Petitioner’s arguments. Though Petitioner identifies that one of skill in the art would be aware that material choice, wall thickness, and pipe diameter all impact burst pressure of a pipe (Pet. 42 (citing Ex. 1017, 24 (Equation (14))), the Petition essentially ignores the fact that the claims do not require a single pipe in isolation. The claims require two shunt tube assemblies, each surrounding a base pipe within a wellbore. It is uncontested that a wellbore provides a confined space for such a system and thus any change in wall thickness of one pipe can result in a significant impact in the function of the other pipes. We find the testimony of Petitioner’s declarant (see, e.g., Ex. 1003 ¶¶ 290–297) unpersuasive when discussing wall thickness because it focusses on basic considerations of a standalone pipe, without sufficient consideration of the claimed completion assembly with its required pipe and tube structure. PO Resp. 20–26.” slip op. at 17
- Strike new argumentNew argument disregardedDecided for patent owner
“In response to Patent Owner’s argument concerning Yeh’s embodiments relied on in the Petition, Petitioner argues for the first time that Patent Owner’s declarant “conceded, Yeh discloses that both concentric and 47:19–48:21). Petitioner does not provide a citation to Yeh or a citation to where the Petition relies on the same number of shunt tubes between concentric and eccentric screens. The deposition cited by Petitioner discusses Yeh at column 16, lines 26 through 35. However, the Petition does not cite or rely on these teachings of Yeh. Thus, we decline to consider this late argument.4 See 35 U.S.C. § 312(a)(3) (requiring the petition to identify “with particularity . . . the grounds on which the challenge to each claim is based, and the evidence that supports the grounds”); 37 C.F.R. § 42.104(b)(5).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Thus, we agree with Petitioner that the combination of Yeh and Yeh2 teaches determining the shunt tube system operating pressures associated with the distal end of the production zone, but also more generally, determining the operating pressures along the entire production zone. With this knowledge of the system operating pressures, Petitioner argues that one of skill in the art would have selected eccentric screens for the distal end of the production zone “at any point at which the slurry pressure dropped below the pressure capacity of the eccentric screen shunt tubes.” Pet. 66 (citing Ex. 1005, 30:16–20; Ex. 1003 ¶ 388). In other words, knowing that the pressure decreases as you approach the toe, Yeh’s low-pressure rated eccentric screens could be used from some point prior to and covering the toe. determined pressure.” PO Resp. 37–38. We disagree. As discussed above, the record supports Petitioner’s position that one of skill in the art would have “understood the need to determine the shunt tube system operating pressure throughout the horizontal wellbore.” Ex. 1003 ¶ 383; see also Pet. 64–65. We find convincing Petitioner’s argument that one of skill with this understanding of the system pressures would select a shunt tube system rated to not only address the distal end, but also to address the needs of the adjacent region, so long as the pressure rating supported such a selection. See Pet. 65–67; Ex. 1003 ¶¶ 385–388.” slip op. at 22
Patent outcomesUS 11,333,007 mixedClaim construction§ 101 eligibility§ 103 obviousness§ 112 disclosurecites GrahamPatents in suitUS 11,333,007 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentablePTAB · May 19, 2025 · IPR2024-00694 · APJ Robert L Kinder · IPR · Final written decision
Claims 1, 4–6, 11, 14–16, 21, and 22 are unpatentable over the stated obviousness grounds; claims 2, 3, 12, and 13 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the final record before us, we determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Lippman, LG argues the following: [a] Person of Ordinary Skill in The Art . . . in August of 2012 would have been someone knowledgeable and familiar with the interactive media guide arts that are pertinent to the ’040 patent. A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artPrinted publication establishedDecided for petitioner
“under 35 U.S.C. § 311(b) because they were not published before the ’040 patent’s priority date of August 17, 2012. PO Resp. 13–14. Multimedia referenced a case pending at the Federal Circuit, Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., as pertinent to addressing whether applications for patent published after the priority date of the challenged patent are permissible “printed publications” in IPRs. Id. Multimedia’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., clarified that inter partes review challenges may be based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. 125 F.4th 1120, 1127 (Fed. Cir. 2025). As such, both Choi and Kim are prior art pursuant to 35 U.S.C. § 311(b).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Turning to rationale to combine, LG contends that it would have been obvious to a person of ordinary skill in the art to implement Kim’s EXTERNAL DEVICE card object 1380 to include Choi’s specific symbols representing external devices connected to the input ports of smart TV 100 to inform the user which external devices are actually connected to the smart TV versus those that are not connected. Pet. 42–44 (citing Ex. 1005, Fig. 19 (modifying card object 1380); Ex. 1003 ¶ 137); see also id. at 14 (arguing the same). LG argues this proposed combination is merely combining prior art elements (i.e., Choi’s specific symbols representing external devices connected via input ports, with Kim’s EXTERNAL DEVICE card object 1380) according to known methods to yield the predictable result of “informing the user which external device is connected to an input port.” Id. at 45; see also id. at 14–15 (arguing the same). LG also argues that this proposed combination represents the use of a known technique (i.e., Choi’s specific symbols representing external devices connected via input ports) to improve a similar device (i.e., Kim’s smart TV 100) in the same way (i.e., “to inform the user which external device is connected to an input port”). See id. at 45 (citing Ex. 1003 ¶ 130); see also id. at 15 (arguing the same). LG asserts that there would have been a reasonable expectation of success in making this proposed combination because both Kim and Choi disclose “similar televisions” with “external devices connected via an input port,” and implementing Kim with Choi’s thumbnail icons that have specific symbols representing input ports would have been “a matter of routine software programming.” Id. at 15 (citing Ex. 1003 ¶ 61).” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundDecided for patent owner
“Limitation [2.1] requires identifying a user associated with the “received indication,” which is the selection of a home key button or go-tohome button to invoke the home screen, as alleged by LG. See Pet. Reply 20–21. Both Kim and Lee-2 allow a distinct procedure wherein a user can login, but LG has not explained persuasively how these distinct procedures are associated with Kim’s home key button such that a user is identified through its selection. For example, Lee-2’s Favorite Channel List (Figure 39B) is displayed based on the user’s selection of the favorite channel object 2019 on a home screen, but not related to the user’s selection of the home key button to invoke the home screen. See Ex. 1010, 41:41–43 (“Referring to FIG. 39B, upon selection of the favorite channel object 2019 [in FIG. 39A], a favorite channel list screen including a favorite channel list is displayed fullscreen.”).” slip op. at 62
Patent outcomesUS 9,510,040 mixed§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,510,040 - LG Electronics, Inc. / LG Electronics U.S.A., Inc. et al. v. Multimedia Technologies Pte. Ltd.Some claims unpatentablePTAB · May 19, 2025 · IPR2024-00351 · APJ Robert L Kinder · IPR · Final written decision
Claims 1, 4–6, 11, 14–16, 21, and 22 are unpatentable as obvious; claims 2, 3, 12, and 13 were not shown unpatentable.
RulingsFinal written decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference is prior artDecided for petitioner
“6. Whether Choi and Kim Are Printed Publications Pursuant to 35 U.S.C. § 311(b) Multimedia contends that Choi and Kim are not printed publications under 35 U.S.C. § 311(b) because they were not published before the ’040 patent’s priority date of August 17, 2012. PO Resp. 13–14. Multimedia referenced a case pending at the Federal Circuit, Lynk Labs, Inc. v. Samsung Electronics Co., Ltd., as pertinent to addressing whether applications for patent published after the priority date of the challenged patent are permissible “printed publications” in IPRs. Id. Multimedia’s arguments are not persuasive because on January 14, 2025, the Federal Circuit in Lynk Labs Inc. v. Samsung Electronics Co. Ltd., clarified that inter partes review challenges may be based upon published patent applications, and such published patent applications can be deemed prior art in IPRs as of their filing date. 125 F.4th 1120, 1127 (Fed. Cir. 2025). As such, both Choi and Kim are prior art pursuant to 35 U.S.C. § 311(b).” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the final record before us, we determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Lippman, LG argues the following: [a] Person of Ordinary Skill in The Art . . . in August of 2012 would have been someone knowledgeable and familiar with the interactive media guide arts that are pertinent to the ’040 patent. A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 8–9 (citing Ex. 1003 ¶¶ 18–20). In its Response, “Patent Owner accepts the Petitioner’s definition of the POSITA” and Multimedia and its expert, Dr. Surati, “find that definition to be reasonable.” PO Resp. 7 (citing Ex. 2011 ¶¶ 43, 44). Accordingly, we adopt LG’s assessment of the level of skill in the art because it is consistent with the ’040 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Based on the final record, including the parties’ contention that no claim term requires express construction, there is no readily discernible controversy between the parties that requires us to construe any claim terms, and thus we do not construe any claim terms except as discussed below with respect to limitation 1.6. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“highlighted when a user selects this content source in some manner. Ex. 1001, 30:27–51. At that juncture, after a user selects the content source and it is highlighted, the content source is then associated with the first content information, “801 – CNXN,” which is displayed on the right panel of Figure 15B. See id. We do not understand the ’040 patent as requiring the display “801 – CNXN” to cause the corresponding highlighting of Live TV 1504A as suggested by Multimedia. The claim language requires the two elements “being associated with”5 one another, but it does not require that one element’s display (first content information) causes the highlighting of the other element (content source). Our view is supported by the only description of highlighting a content source found in the specification of the ’040 patent. In regard to Figure 15B, the specification describes that “global panel 1404 may include one or more sources represented by icons and text, or shortcuts, 1504A-E.” Ex. 1001, 30:27–28. The specification describes how highlighting the source is user directed: Global panel 1404 may additionally indicate a source that is selected or highlight [sic] using indicator 1512; for example, indicator 1512 may comprise a box positioned around Live TV 5 As the Federal Circuit has explained, “the plain meaning of associating relates to a mere commonality.” Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1306 (Fed. Cir. 2014), overruled by Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015) (on unrelated grounds). 801 CNXN. Although illustrated as a box, other methods or configurations which provide for icon selection and/or identification may be used. For example, instead of a box, indicator 1512 may comprise adjusting the background of an icon and text, such as 1504A for example, such that the color, shade, or hue is different. Id. at 30:41–49 (emphasis added). Highlighting, as the specification describes, occurs when a user selects a source using indicator 1512 and that source is boxed or differentiated by color or shading. Id. The specification, in relation to Figure 15C, further describes a user moving indicator 1512 to another source such that the “the content or a preview of the content may be displayed in active content area 1408.” Id. at 32:9–17 (“For example, FIG. 15C illustrates an image or video associated with Skyfalls being displayed in content area 1408.”). Thus, the specification is clear that the highlighting function results from user selection of the source and the corresponding association of the first content information with that source flows from that user selection. See also id. at 2:30–31 (describing a purpose of the ’040 patent as “an Intelligent TV with intuitive user interfaces and with seamless user interaction capability”), 32:35–43 (“[t]he user . . . move[s] the focus box”). This supports our understanding that the claim language does not require that the display of first content to cause the highlighting of a displayed source identifier.” slip op. at 29
Patent outcomesUS 9,510,040 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,510,040 - Apple Inc. v. Masimo CorporationSome claims unpatentablePTAB · Feb 23, 2022 · IPR2020-01539 · APJ Amanda F Wieker · IPR · Final written decision
Claims 1–12 and 14–28 are unpatentable under § 103; claim 13 was not shown unpatentable under the Aizawa, Inokawa, Ohsaki, Mendelson-2006, and Bergey ground.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableNot shown unpatentableMixed
“Accordingly, we do not agree that Ohsaki’s disclosed advantages” slip op. at 57
- BurdenFwd mixedMixed
“and 37 C.F.R. § 42.73. For the reasons set forth below, Petitioner has met its burden of showing, by a preponderance of the evidence, that challenged claims 1–12 and 14–28 of the ’554 patent are unpatentable. However, Petitioner has not met its burden of showing, by a preponderance of the evidence, that challenged claim 13 is unpatentable.” slip op. at 2
Patent outcomesUS 10,588,554 mixed§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,588,554 - Glux Visual Effects Tech (Shenzhen) Co. / Leyard Optoelectronic Co. et al. v. Ultravision Technologies, LLCSome claims unpatentablePTAB · Nov 17, 2021 · IPR2020-01052 · APJ Denise M Pothier · IPR · Final written decision
Claims 1, 10–13, 19, and 20 are unpatentable as obvious over Kalua in view of ordinary skill; claims 4–6, 14–16, and 21–26 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner asserts: A person of ordinary skill in the art (i.e., a skilled artisan, or “POSITA”) at the time of the ‘791 patent’s alleged invention would have: (i) a bachelor’s degree in mechanical engineering, electrical engineering, or physics, or undergraduate training in an equivalent field, and (ii) at least two years of experience in the design and/or implementation of LED panels . . . Additional graduate education could substitute for professional experience, and significant work experience could substitute for formal education. Pet. 17–18 (citing Ex. 1002 ¶¶ 41–44). Patent Owner does not set forth an ordinary artisan’s skill level. See generally Resp. Mr. Credelle, Patent Owner’s expert, states that he do[es] not disagree with Mr. Flasck’s proposed level of ordinary skill in the art, which he lists as (i) a bachelor’s degree in mechanical engineering, electrical engineering, or physics, or undergraduate training in an equivalent field, and (ii) at least two years of experience in the design and/or implementation of LED panels. Ex. 2002 ¶ 33. Mr. Credelle further states, similar to Petitioner, “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. In the Institution Decision, we preliminarily adopted Petitioner’s” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingOther
“modification kit for converting an existing signage mounting structure to an electronic sign.” Ex. 1001, 87:11–12, 88:1–2, 88:51–52. Petitioner asserts the “preamble is limiting” because the phrase provides antecedent basis for (1) “the existing signage mounting structure” recited in the body of claims 1, 4, and 21 or (2) “the existing signage structure” recited in body of claim 12. Pet. 19. Petitioner further asserts that the preamble breathes, life, and meaning into claims 1, 12, and 21, namely the retrofitting of an existing nonelectric sign into a digital sign. Id. at 19–20 (citing Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002); Ex. 1001, 1:38–41, 1:45–46, 1:52–54, 18:48–52, 23:1–6, 24:1–11, Fig. 3). For these reasons, Petitioner asserts the preamble “should be construed to require ‘a self-contained retrofit kit for on-site use to convert an existing static non-electronic sign into an electronic sign.’” Id. at 19; see id. at 21.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“and further limit either claims 1 or 12. Ex. 1001, 87:63–67, 88:17–18, 88:46–50. We have reviewed the record. Based on the evidence and argument presented, Petitioner has sufficiently shown that Kalua in view of Ordinary Skill teach and suggest each limitation in claims 10, 11, 13, 19, and 20, and has articulated sufficient reasoning, with rational underpinning, that an ordinarily skilled artisan would have combined Kalua with Ordinary Skill in the manner Petitioner proposes. Pet. 63 (citing Ex. 1007 ¶¶ 2, 7, 13, 42, 54; Ex. 1002 ¶¶ 241–244). Patent Owner does not separately challenge Petitioner’s ground for claims 10, 11, 13, 19, and 20. See generally Resp. Accordingly, having considered each of the parties’ arguments and evidence, we determine Petitioner provides by a preponderance of the evidence and articulates sufficient reasoning to support its challenge of claims 10, 11, 13, 19, and 20 as unpatentable over Kalua in view of the knowledge and level of ordinary skill in the art as evidenced by Watchfire. (c) Conclusion – Claims 1, 10–13, 19, and 20 Having considered each of the parties’ arguments and evidence, we determine Petitioner has proven, by a preponderance of the evidence, that Kalua in view of the knowledge and level of ordinary skill in the art as evidenced by Watchfire teach or suggest claims 1, 10–13, 19, and 20.” slip op. at 84
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“suggest claims 4, 5, 10, and 11. Pet. 41–43 (citing Ex. 1002 ¶¶ 145–153; Ex. 1004 ¶¶ 55–56, 75, 78, code (57), Figs. 1A, 1C, 1E (annotated)). Claims 4, 5, 10, and 11 ultimately depend from claim 1 (Ex. 1001, 87:31–37, 87:63– 67) and, therefore, include element [1e] as discussed above. Also, the discussion of claims 4, 5, 10, and 11 in the Petition do not further address the “plurality of power routing systems” limitation (i.e., element [1e]). See Pet. 41–43. Accordingly, Petitioner’s analyses of these claims suffers from the same problems we discussed above when addressing claim 1.” slip op. at 46
Patent outcomesUS 9,047,791 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,047,791 - Cook Group Incorporated / Cook Medical LLC v. Boston Scientific Scimed, Inc.Some claims unpatentablePTAB · Dec 28, 2018 · IPR2017-00440 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–4, 6–7, 10–16, 18, and 20 are unpatentable; claims 5 and 8 are not shown unpatentable. Substitute claims 21, 30, and 38 are unpatentable as obvious over Sackier and Kirsch.
RulingsFinal written decision- Expert testimonyOther
“3. Dr. Nicosia’s Declaration in support of its Opposition to Patent” slip op. at 7
- Skill levelOther
“B. Person of Ordinary Skill in the Art Petitioner proposes that a person of ordinary skill in the art as of the” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“B. “clip” The Parties now agree that “clip,” as the term is generally understood,” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). We conclude that Petitioner has not met its burden of showing this element to be present in Sackier because Petitioner combines features from distinct embodiments in Sackier without establishing persuasively that those embodiments are so directly related to each other such that one of ordinary skill in the art, looking at the reference as a whole, would recognize a disclosure of the invention as claimed. Accordingly, although a very close call, we conclude that Petitioner has failed to demonstrate anticipation of claims 1, 12, and 20 by Sackier for this reason.” slip op. at 21
Patent outcomesUS 9,271,731 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,271,731 - Shenzhen Kean Silicone Product Co., Ltd. v. Pkoh Nyc, LLCSome claims unpatentablePTAB · Dec 3, 2018 · IPR2017-01327 · APJ Robert L Kinder · IPR · Final written decision
Claims 1–7, 10–13, 20–22, 24, 26, 28–32, and 35–38 are unpatentable as obvious; claim 14 was not shown unpatentable over Cho.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Person of Ordinary Skill in the Art Petitioner’s expert, Mr. Goldman, proposes that a person of ordinary skill in the bottle/container field as of the time of the filing of the application that became the ’036 patent “would have a bachelor’s degree (or equivalent) in mechanical engineering and at least one or two years’ experience developing container technology.” Ex. 1014 ¶ 4. Patent Owner does not dispute Petitioner’s proposal, and based on the final record, we adopt it for purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningNo construction neededDecided for petitioner
“The Specification of the ’036 patent describes “[t]he elastomeric material is . . . of an appropriate durometer, such as 40 Shore A, to make the squeeze bulb 200 substantially deformable yet resilient,” and the elastomeric material is preferably silicone. Ex. 1001, 2:54–63. Only the claimed wall portion of the receptacle is claimed to be “resiliently deformable.” Id. at 5:9–10. Nothing in the claim, however, precludes or requires any other portion of the receptacle (comprised of elastomeric material) from also being resiliently deformable. Id. at 4:47–48. Notably, the receptacle is claimed to be “flexible and resilient.” Id. Although the “flexible and resilient” receptacle and its wall being “resiliently deformable” are not necessarily identical, this distinction appears to be minor considering the written description of the ’036 patent. Based on the foregoing, we give each of these claim terms their plain and ordinary meaning as understood by a person or ordinary skill in the art. The surrounding claim language for each claim limitation focuses the scope of these terms such that any interpretation we could provide would not be as helpful in understanding the terms as the surrounding claim language. We determine that no terms require express construction for the purposes of this Decision. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Expert testimonyPetitioner expert creditedPatent owner expert discountedOther
“6 In our decision, we give little weight to Petitioner’s evidence of “scores of popular baby bottles currently on the market,” because the design of these new bottles does not indicate the state of the art at the time the ’036 patent was filed. Further, Petitioner has failed to provide any corroborating testimony related to these new bottles—recent advertisements do not convince us of what a person of skill in the art would have considered at the time of filing. See Pet. Reply 11 (emphasis added) (citing Exs. 1022, 1023, 1024). We likewise give little weight to Petitioner’s uncorroborated article (Ex. 1026) from Wikipedia concerning “Baby bottle.” The record before us does not establish the origin and scientific basis for this evidence, and thus, we weigh Mr. Goldman’s testimony (Ex. 1021 ¶ 13) based on this evidence in a similar manner. See 37 C.F.R. § 42.65(a); Office Patent Trial Practice Guide, 77 Fed. Reg. at 48,763 (“Affidavits expressing an opinion of an expert must disclose the underlying facts or data.”). This sentence, standing alone, supports Mr. Fletcher’s conclusion that “an elastomeric, flexible silicone” could be used in the body of Cho’s bottle. See Ex. 1014 ¶ 30. Further, we find persuasive Petitioner’s arguments, supported by the testimony of Mr. Fletcher, that “silicone is primarily known for its elastic properties, and has been widely used in medical applications, including implants and storage containers, due to its chemical inertness, high heat resistance, flexibility and resistance for at least 60 years.” Pet. 30 (citing Ex. 1014 ¶ 34). Petitioner also supports its argument as to the suitability of silicone in consumer products, including in baby bottles, with a 1991 New York Times article that explains the elastomeric properties of silicone. Pet. 12; Ex. 1018, 2 (describing “rubbery silicone”), id. at 3 (“When baby gets a bottle these days, the nipple is a rubbery version of silicone.”). The fact that silicone could also possess other properties, or hardness, does not dissuade us from the determination that Cho, as a whole, teaches using a soft, resilient silicone in the body of the bottle.” slip op. at 20
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“At the outset, Mueller is analogous art and Patent Owner’s arguments to the contrary flip the analysis from focusing on the problem faced by the inventor of the ’036 patent to the “specific problem(s) found in Cho’s baby bottle.” First, Cho and Mueller are in the same field of endeavor as the claimed invention—dispensing containers—as admitted by Patent Owner. See PO Resp. 36. We need not address the second portion of the analogous art test, which focuses on whether the prior art “is reasonably pertinent to the problem with which the inventor was concerned.” In re Kahn, 441 F.3d 977, 986–87 (Fed. Cir. 2006). We do note, however, that the parties have both misapplied this second portion of the analysis. This analysis is focused on the problem faced by the inventor of the ’036 patent, not necessarily the problems addressed in the prior art references. Because neither party sufficiently addresses the problems faced by the inventor of the ’036 patent, and because Mueller and Cho are in the same field of endeavor as the claimed invention, we need not address the second portion of the analogous art test.” slip op. at 39
Patent outcomesUS 7,959,036 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,959,036 - Genband US LLC / Genband Management Services Corp. v. Metaswitch Networks Ltd.Some claims unpatentablePTAB · Dec 15, 2016 · IPR2015-01457 · APJ Jameson Lee · IPR · Final written decision
Claims 2–5, 8, 9, 15–18, and 22–24 are unpatentable as obvious over Ejzak and Cisco or Intel; claim 10 was not shown unpatentable over either combination.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“First, the above-reproduced figure does not appear in the Specification of the ’640 patent. Rather, it is a creation of the Patent Owner. The figure creates the impression that a “part” necessarily is a “device.” Patent Owner, however, does not provide adequate support for such a narrow reading of 14 “part.” Although a “device” is a “part” of a telecommunications network, that does not mean a “part” has to be a “device.” Even Dr. Akl, Patent Owner’s expert, testified only that a “device” is a “part” of a telecommunications network and not that a “part” of a telecommunications network has to be a “device.” Ex. 2006 ¶ 56. Second, the figure also creates the impression that neither a domain nor a region would identify a device. But Patent Owner does not provide adequate support for such a narrow reading of “domain” and “region.” In that regard, Dr. Akl, Patent Owner’s expert, testifies only that a “device” is neither a “domain” nor a “region,” not that a “domain” or a “region” would not or could not identify a “device.” Id. By assuming that a “part” of a telecommunications system has to be a “device,” and by assuming that neither “domain” nor “region” would identify one or more devices, Patent Owner sees an alleged contradiction in allowing media connectivity setting to be as we have construed it, and the phrase that immediately follows the claim term—“identifying one or more other devices.” Because of that alleged contradiction, Patent Owner contends that “at least one media connectivity setting identifying one or more other devices” should be construed as “information identifying one or more parts of a telecommunication network, distinct from either a domain or a region of the telecommunication network.”” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Claim 10 recites, among other limitations, an additional requirement of determining from said bypass mode data that said media gateway “must” be bypassed in said media path. That is in contrast with the language of claim 9, which also depends from claim 8, and which recites, among other limitations, the additional requirement of determining from said bypass mode data that said media gateway “may” be bypassed in said media path. Neither Petitioner nor Patent Owner proposes an express construction for the word “must.” In the circumstances here, the plain and ordinary meaning of “must” in the English language applies. There is no indication that one with ordinary skill in the art would understand the word as conveying something different. The Specification of the ’640 patent does not set forth a special definition of “must.” Also, consistent with the plain and ordinary meaning of “must,” the Specification of the ’640 patent distinguishes between “must” and “may”: It may be determined from the retrieved bypass mode data that the media gateway may be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication setup request message. It may be determined from the retrieved bypass mode data that the media gateway must be bypassed in the media path, in which case preceding device connectivity data is included in the outbound communication session setup request message. Ex. 1101, 12:35–42 (emphasis added). 34 We determine that “must,” when applied to an action, such as bypassing a media gateway as recited in claim 10, eliminates not taking that action as a possibility and precludes the not taking of that action. In that regard, the different language used between claims 9 and 10 further supports the distinction between the absolute nature of “must” as used in claim 10 and the permissive nature of “may” as used in claim 9. In that regard, as is noted by Patent Owner, Petitioner’s witness, Mr. Bress, agrees that the permissive nature of “may” does not meet the absolute requirement of “must.” PO Resp. 43 (citing Ex. 2004, 123:7–124:5).” slip op. at 34
- Skill levelDecided for patent owner
“Level of Ordinary Skill in the Art Petitioner asserts: As of the priority date of the ’640 Patent of March 22, 2011, a person of ordinary skill in the art (“POSITA”) would have been someone with a Bachelor’s Degree in electrical engineering, computer science, or a related scientific field, and at least two years of work or research experience in the telecommunications industry, which could include telecommunications device design, telecommunications software development, or related areas. Alternatively, a POSITA in the relevant timeframe would have been someone with an advanced degree, such as a Master’s Degree, in electrical engineering, computer science, or a related scientific field, focusing on telecommunications technology. Alternatively, a POSITA in the relevant timeframe could have been someone lacking formal technical education but having experience in the 18 telecommunications industry that would be equivalent to such education. See Ex. 1004 at ¶ 128. Pet. 19–20. Patent Owner does not explicitly take a position on the level of ordinary skill in the art. We determine that no express finding on a specific corresponding level of technical education and experience is necessary, and that the level of ordinary skill in the art is reflected by 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). C.” slip op. at 18
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“49 media gateways. In that connection, we credit the testimony of Petitioner’s witness, Mr. Bress, over the testimony of Patent Owner’s witness, Mr. Akl, in part because Mr. Bress discusses and explains more of the disclosure of Ejzak. Patent Owner’s argument that it is possible to obtain the media connectivity setting of the ensuing device by requesting the ensuing device for such information (PO Resp. 38) is ineffective with respect to claim 4, which does not specify from where the information is retrieved. Retrieving information from the ensuing device nonetheless still is retrieving. With respect to claim 5 which requires retrieving the information from within the given media gateway, not the ensuing device, we have determined that Petitioner has not stablished that Ejzak necessarily discloses retrieving such information from within the storage of the given gateway. Patent Owner’s argument that the claim limitation of “retrieving ensuing device connectivity data for an ensuing device” would not have been regard by one with ordinary skill in the art as an obvious variant of Ejzak’s determining the IP realm for the next segment of the media path is not supported by sufficient reasoning and explanation directed to Ejzak’s disclosure of provisioning IP realms of media gateways as identified and explained by Petitioner. Between the testimony of respective expert witnesses of Petitioner and Patent Owner, we credit the testimony of Mr. Bress, Petitioner’s witness, over that of Mr. Akl, Patent Owner’s witness. Mr. Bress’s testimony, in our view, is more thorough, whereas Mr. Aky’s testimony, in our view, focuses more on what a prior art 50 disclosure literally states without enough explanation as to the understanding by one with ordinary skill in the art of the teachings associated with that language.” slip op. at 49
Patent outcomesUS 8,687,640 mixedClaim construction§ 103 obviousnessPatents in suitUS 8,687,640
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.