- PTAB · Jul 2, 2025 · PGR2025-00013 · APJ Jeffrey N Fredman · PGR · Institution
The Board instituted PGR on claims 1–16 and 18, finding a sufficient preliminary showing of unpatentability for claims 1–4, 7, 9–11, 13, and 18 under the Mabuchi-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. §§ 6, 324. Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one of claims 1–16 and 18, which are the challenged claims of the ’082 patent that remain after Patent Owner’s disclaimer.” slip op. at 2
- Other 314aOther
“II. DISCRETIONARY DENIAL In view of the Acting Director’s memo bifurcating discretionary considerations and merits considerations,8 we note that Patent Owner had the opportunity to file a brief requesting discretionary denial of institution but did not file such a brief. Paper 7, 1. Accordingly, any discretionary issues were mooted, and the case was referred to this Board panel to consider the merits and other non-discretionary considerations. Id. at 1–2.” slip op. at 6
- Skill levelSkill level patent owner adoptedDecided for patent owner
“[a] person of ordinary skill in the art at the relevant time (“POSITA”) would have had a bachelor’s degree in mechanical engineering, or a related field, and two-to-three years of experience in the research, design, development, or testing of rotating or reciprocating mechanisms, with additional education substituting for experience and vice versa. Pet. 13 (citing Ex. 1002 ¶ 37). Patent Owner contends that [a] person of ordinary skill in the art (“POSITA”) as of the effective filing date of the Challenged Claims would have a working knowledge of product development and would likely have a degree in engineering and/or industrial design and/or at 5 Harris et al., US 6,432,072 B1, issued Aug. 13, 2002. Ex. 1006. 6 Pivaroff, US 6,682,496 B1, issued Jan. 27, 2004. Ex. 1007. 7 Clark, US 3,007,504, issued Nov. 7, 1961. Ex. 1014. 8 Available at https://www.uspto.gov/sites/default/files/documents/ InterimProcesses-PTABWorkloadMgmt-20250326.pdf. least three to five years of experience in conceiving, designing, engineering, and/or modifying such products and devices. Prelim. Resp. 16. While we appreciate that the parties differ slightly on the details of experience that an ordinary artisan would possess, we do not find a difference that affects our Decision. For purposes of this Decision, we rely on Patent Owner’s proposed level of ordinary skill in the art. The parties may provide briefing at trial, if appropriate, to explain why adoption of one definition over the other changes the remaining analysis.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“IV. CLAIM CONSTRUCTION In a post-grant review, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.200(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Neither party identifies any term that requires construction. Pet. 13‒ 15; Prelim. Resp. 16‒17. Accordingly, we need not construe any term at the present time.” slip op. at 7
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,938,082 - PTAB · Apr 21, 2025 · PGR2024-00053 · APJ Jeffrey N Fredman · PGR · Institution
The Board instituted PGR on claims 34–38, 40, 41, 43–46, and 58–60, finding a reasonable likelihood of obviousness over the asserted Mabuchi-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“post-grant review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board uses a two-part framework in determining whether to exercise its discretion under § 325(d), specifically: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“likely occur very close in time to the Board’s projected statutory deadline for a final written decision. . . . the claim construction hearing will occur on April 16, 2025” Prelim. Resp. 63. Neither party identifies a date for trial in the Parallel Litigation. On review of the Pacer record, it appears that the claim construction hearing was continued to April 23, 2025. There is no indication that the trial will be completed prior to a PTAB Final Written Decision, much less a court decision. Accordingly, this factor weighs against exercising discretion to deny institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 324. Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Upon consideration of the Petition, Preliminary Response, and the evidence of record, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one of claims 34–38, 40, 41, 43–46, and 58–60 of the ’482 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“[a] person of ordinary skill in the art at the relevant time (“POSITA”) would have had a bachelor’s degree in mechanical engineering, or a related field, and two-to-three years of experience in the research, design, development, or testing of rotating or reciprocating mechanisms, with additional education substituting for experience and vice versa. Pet. 15 (citing Ex. 1002 ¶ 37). Patent Owner contends that [a] person of ordinary skill in the art (“POSITA”) at the time of the invention would have a working knowledge of product development, and would likely have a degree in engineering and/or industrial design, and/or at least three to five years of experience in conceiving, designing, engineering, and/or modifying such products and devices.” slip op. at 14
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,857,482 - PTAB · Nov 1, 2024 · IPR2024-00850 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1, 3–12, 14, and 23–27 because Petitioner showed a reasonable likelihood of proving them obvious over Raizer and Hangzhou.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’632 Patent would have been a person with a working knowledge of mechanical design and automation. That person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of mechanical, automation, and robotics technologies, in combination with training or at least one to two years of related work experience. Alternatively, that person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline. (Ex. 1003, ¶¶42-43). More education can supplement practical experience and vice versa (Ex. 1003, ¶¶42-43).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither Petitioner nor Patent Owner contends that any claim term has a meaning other than its ordinary and customary meaning. See, e.g., Pet. 4; Prelim. Resp. 8. Having considered the record, we determine that no express claim construction is necessary for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“reasons why a skilled artisan would have sought to combine the teachings of Raizer and Hangzhou. See supra § IID.3. On this record, and for purposes of institution, we find those contentions persuasive. For example, as Petitioner observes (see, e.g., Pet. 7), and which is not disputed by Patent Owner, Hangzhou sets forth that, in the area of automating warehouses, it is a known and recognized practice to provide pathways (e.g., auto-guided trolley passage spaces 112) underneath shelving units for movement of automated trolleys or robots. See, e.g., Ex. 1006 ¶ 48 (“an auto-guided trolley 200 preferentially travels in column laneways 32 and in auto-guided trolley passage spaces 112”); Fig. 2. Patent Owner also does not meaningfully dispute Dr. Derby’s testimony that “[i]t was well known to elevate the shelving units above the floor so that robots loaded with containers can travel underneath thereby allowing for more flexible route planning and the elimination of bottlenecks.” See Ex. 1003 ¶ 107; see also id at Section VI., ¶¶ 45–53 (describing in detail, with citation to record evidence, that one of ordinary skill in the art understood that shelving units could be elevated above warehouse floors).” slip op. at 27
- Other 314aInstitution denied discretionary otherDenied
“PETITION UNDER 35 U.S.C. § 314 IS WARRANTED Patent Owner requests that we exercise our discretion to deny institution under 35 U.S.C. § 314. See Prelim. Resp. 34–36. The principle basis for that request is that the panel should accept Patent Owner’s arguments as to insufficient reason or motivation to combine the teachings of Raizer and Hangzhou, and exercise discretion to deny on that basis. See id. at 34. As set forth above, however, on this record we conclude that Petitioner has shown a reasonable likelihood in its challenge to all the challenged claims.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,472,632 - Apple Inc. v. Masimo CorporationInstitutedPTAB · Jul 9, 2024 · IPR2024-00243 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–25 on all asserted obviousness grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the Delaware Litigation. Prelim. Resp. 16–33; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum, issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).6 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00243 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this point in the proceeding, we do not find it necessary, to expressly construe the term “opening” in order to reach a decision on institution and, under the circumstances, we do not find a basis for denying institution in Petitioner’s application of the claim language requiring an “opening.” But see infra Section F.3.b (identifying a potential issue that may benefit from record development on claim construction). Neither party offers an express construction of the term “opening” to the prior art. Pet. 5; Prelim. Resp. 12–15 (arguing inconsistency but declining to offer an express claim construction). On the present record, we are persuaded that the plain and ordinary meaning of “opening” encompasses Iwamiya’s optical filter 17 as mounted within light shielding frame 18. See Pet. 23–24; see infra at Section F.3.b. This is consistent with Patent Owner’s position, in the Delaware Litigation, that a solid material can provide an opening, and with the finding of the panel in the Final Written Decision in IPR2022-01291. Ex. 2035, 26 (Final Written Decision in IPR2022-01291); Ex. 2037 ¶¶ 463–465 (report by Petitioner’s expert, Dr. Sarrafzadeh in the Delaware Litigation, regarding non-infringement, reproducing an image that Petitioner represents is from Patent Owner’s expert, Dr. Madisetti, in which Dr. Madisetti labeled transparent material an “Opening in Dark-Colored Coating,” and in which Dr. Sarrafzadeh asserts that “every space that Dr. Madisetti . . . identified is” slip op. at 16
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDecided for patent owner
“prosecution history of a parent application, this language should be construed to exclude “arrangements of two or three detectors.” Prelim. Resp. 15 (citing Ex. 2057, 322 (prosecution history of U.S. Patent Application No. 15/195,199 (“the ’199 Application”))). Patent Owner notes that the panel in IPR2022-01291 adopted this construction for “a nearly identical limitation in Claim 15 of the related ’745 Patent.” Id. at 15–16 (citing Ex. 2035, 109–112). On this preliminary record, we agree with Patent Owner that, due to statements made during prosecution of a parent application, this claim language should be construed to exclude arrangements of two or three detectors. During prosecution of the ’199 Application, application claim 1 was amended to recite: a “tissue measurement site . . . having an at least partially circular shape bounded by a light block”; the light block comprising “an annular ring having a circular shape”; and a “plurality of detectors . . . arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site.” Ex. 2057, 311. Patent Owner argued to the Examiner that the “array” limitation had support in the ’199 Application specification because: The ordinary meaning of the claim term “correspond” means to “have a close similarity; match or agree almost exactly” or “be analogous or equivalent in character, form, or function” or “represent.” New Oxford American Dictionary, 390 (3rd Edition 2010). Consistent with this exemplary definition and the originally-filed application, the phrase “arranged in an array having a spatial configuration corresponding to the shape of the irradiated portion of the tissue measurement site” . . . would be understood by a person having ordinary skill in the art as requiring a sufficient number of detectors such that, when arranged together in an array, can “match,” “have a close similarity,” or “represent” the “at least partially circular shape” of the irradiated portion of the tissue measurement site. . . . In order for the claimed “plurality of detectors” to “match” or “represent” an “at least partially circular shape” or an “annular shape,” the “plurality of detectors” must include sufficient detectors to represent such shapes. For example, six or more detectors could be arranged in an annular shape and meet the recited limitation. However, two detectors, for example, can only be arranged in a spatial configuration representing a line and three detectors, for example, can only be arranged in a spatial configuration representing a line or a triangle. Thus, when read in view of the originally-filed application, the recited “plurality of detectors” would be understood by a person having ordinary skill in the art as including a sufficient number of detectors to represent the desired geometric shape.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On the present record, Petitioner’s definition of a POSITA is consistent with the level of skill reflected in the ’159 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining “the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). We note that we would reach the same outcome in this Decision under either definition of a POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should state whether any issue in the case turns on those differences.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,722,159 - Apple Inc. v. Masimo CorporationInstitutedPTAB · Jul 9, 2024 · IPR2024-00241 · APJ David Cotta · IPR · Institution
Instituted IPR on all grounds for claims 1–25, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims is unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–25 of the ’743 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there is a parallel district court proceeding). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).6 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00241 petition or any grounds that could reasonably have been raised in that petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv. Patent Owner argues that Petitioner’s stipulation “does not carry the benefits underlying the Director’s Guidance” because it was filed “only after the parties and the court conducted extensive and costly fact and expert discovery, and fully briefed and argued dispositive motions.” Prelim. Sur-reply 2. This argument is not persuasive because the Director’s Guidance does not afford discretion to discount a Sotera stipulation based on how far a parallel district court litigation has progressed when the stipulation was made. Director’s Memo 7 (explaining, without qualification, that “the” slip op. at 11
- Parallel petitionsNot reached
“B. Discretionary Denial in View of Multiple Petitions Petitioner filed two petitions for inter partes review of the ’743 patent, this Petition challenging claims 1–25 and the petition filed in IPR2024- 00242 challenging claims 1, 3–14, and 16–25. See Apple Inc. v. Masimo Corp., IPR2024-00242, Paper 3 (PTAB, filed Dec. 12, 2023). Patent Owner argues that Petitioner “fails to establish that two petitions on the ’743 Patent are necessary” and that “if the Board institutes one of the Petitions, it should deny the other.” Paper 9, 1. Petitioner requests that we consider this Petition before we consider the Petition in IPR2024-00242. Paper 2, 1. Accordingly, we reserve consideration of whether multiple petitions are merited for our decision in IPR2024-00242. III.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner contends that “[Petitioner’s] asserted level of ordinary skill in the art is relatively low” which “supports the patentability of the 7 The current record in this proceeding does not include any argument or evidence directed to objective indicia of nonobviousness. claims,” and further “notifies the Board that in the Delaware Litigation, [Patent Owner’s] expert presented a slightly different definition of the level of ordinary skill which includes education and/or experience with optical technologies.” Prelim. Resp. 11–12 (citing Ex. 2002 ¶¶ 48–51). Patent Owner asserts that the difference between the parties’ definitions “does not impact [Petitioner’s] patentability challenges here.” Id. On the present record, Petitioner’s definition of the POSA is consistent with the level of skill reflected in the ’743 patent and the asserted prior art. Accordingly, for purposes of this Decision, we adopt Petitioner’s description. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining “the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,687,743 - Apple Inc. v. Willow Laboratories, Inc.InstitutedPTAB · Jun 27, 2024 · IPR2024-00296 · APJ Alyssa A Finamore · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 8, 10–13, 15, 17, 19–21, 23–26, and 28 based on the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director’s Memo7 guides our analysis under Fintiv. Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In this proceeding, Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00296 petition or any grounds that could reasonably have been raised in that petition.” Ex. 1078, 1. Patent Owner argues that Petitioner’s stipulation “differs from Sotera, who filed its stipulation in the early stages of the parallel litigation” and that Petitioner “belatedly attaching the label ‘Sotera stipulation’ only after the Delaware Litigation is ready for trial does not protect against the concerns underlying the Director’s Guidance—gamesmanship and inefficiency.” Prelim. Sur-reply 2. This argument is not persuasive because the Director’s Memo does not afford us discretion to discount a Sotera stipulation based on how far a parallel district court litigation has progressed when the stipulation was made. Director’s Memo 7 (explaining, without qualification, that “the PTAB will not discretionarily deny institution of an [inter partes review] or [post-grant review] in view of parallel district court litigation where a 7 Memorandum from Katherine K. Vidal, Under Sec. of Commerce for Intellectual Property and Dir. of the USPTO, to Members of the PTAB (June 21, 2022), available at https://www.uspto.gov/sites/default/files/ documents/interim_proc_discretionary_denials_aia_parallel_district_court_ litigation_memo_20220621_.pdf (“Director’s Memo”). same grounds as in the petition or any grounds that could have reasonably been raised in the petition”). Thus, in view of Petitioner’s Sotera stipulation, we do not discretionarily deny institution under Fintiv.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Advanced Bionics, GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted). If a condition in the first part of the framework is satisfied, and absent a material error, the Director generally will exercise discretion not to institute inter partes review. Id. at 8–9.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The main differences between the parties’ definitions of the POSITA appear to be that Patent Owner specifies that the POSITA’s knowledge and experience may include optical sensors and that the POSITA may have a degree emphasizing software. On the present record, we do not deem these differences material, particularly because the optical sensors and technologies at issue are those used in physiological monitoring working knowledge of physiological monitoring technologies. Ex. 1003 ¶ 22; Ex. 2002 ¶ 37. Nonetheless, we find the additional specificity of Patent Owner’s definition to be helpful. Also, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’911 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the POSITA. We note, however, that we would reach the same outcome under either definition of the POSITA. See also Prelim. Resp. 7 (“[Patent Owner] agrees that the claims’ patentability is confirmed regardless of the level of skill.”).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“B. Claim Construction We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2023). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Furthermore, at this stage in the proceeding, we expressly construe the claims to the extent necessary to determine whether to institute inter partes review. 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))). Petitioner asserts that “[a]ll claim terms should be construed according to the Phillips standard” and that “no express constructions are required to institute review and find the [c]hallenged [c]laims unpatentable.” meaning and thus require no construction” and notes that this is the same position it took in the Delaware Litigation. Prelim. Resp. 9 (citing Ex. 2031, 57–84). On the current record and for the reasons set forth below in sections IV.D–E, we determine that no claim term requires an express construction for the purpose of determining whether to institute inter partes review.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,984,911 - Apple Inc. v. Masimo CorporationInstitutedPTAB · Jun 27, 2024 · IPR2024-00294 · APJ David Cotta · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all grounds asserted in the Petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), inter partes review may not be instituted unless 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.” Petitioner has established a reasonable likelihood of prevailing on its assertion that at least one of the challenged claims are unpatentable based on the grounds advanced here. We decline to deny the Petition on a discretionary basis as requested by Patent Owner. Thus, for reasons explained below, we institute inter partes review of claims 1–20 of the ’507 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).11 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00293 petition or any grounds that could have reasonably been raised in that Petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv.” slip op. at 10
- Parallel petitionsDecided for petitioner
“Discretionary Denial in View of Parallel Petitions Petitioner filed two petitions for inter partes review of claims 1–20 of the ’507 patent, this Petition and the petition filed in IPR2024-00293. See Apple Inc. v. Masimo Corp., IPR2024-00293, Paper 3 (PTAB, filed December 12, 2023). Patent Owner argues that Petitioner “fails to establish that two petitions on the ’507 Patent are necessary” and that “if the Board institutes one of the Petitions, it should deny the other.” Paper 8, 1. This argument is moot because, concurrently herewith, we deny institution of inter partes review in IPR2024-00293 on the merits. III.” slip op. at 11
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The main differences between the parties’ definitions of the POSA appear to be that Patent Owner specifies that the POSA’s knowledge and experience may include optical sensors and that the POSA may have a degree emphasizing software. On the present record, we do not deem these differences material, particularly because the optical sensors and technologies at issue are those used in physiological monitoring technologies and both parties agree that the POSA would have a working knowledge of physiological monitoring technologies. Ex. 1003 ¶ 24; Prelim. Resp. 6. We find the additional specificity of Patent Owner’s definition to be helpful. In addition, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’507 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We note that we would reach the same outcome under either definition of the POSA.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,736,507 - Apple Inc. v. Masimo CorporationInstitutedPTAB · Jun 27, 2024 · IPR2024-00290 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 11–22, 27, 28, 32, 34, 36, 37, and 42–44 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”).8 Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo, 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like that in Sotera, i.e., a stipulation to “not pursue for the instituted claims, in [the Delaware Litigation], the same grounds as in the IPR2024-00290 petition or any grounds that could reasonably have been raised in that petition” (Ex. 1078, 1), we do not discretionarily deny institution under Fintiv. Patent Owner argues that Petitioner’s stipulation “does not carry the benefits underlying the Director’s Guidance” because it was filed “only after the parties and the court conducted extensive and costly fact and expert discovery, and fully briefed and argued dispositive motions.” Paper 8, 2. We find this argument unpersuasive because the Director’s Guidance does not afford us discretion to discount a Sotera stipulation based on how far a parallel district court litigation has progressed when the stipulation was made. Director’s Memo, 7 (explaining, without qualification, that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information 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.” Upon consideration of the evidence and arguments in the record, we institute inter partes review of the ’223 patent on all challenges set forth in the Petition.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The main differences between the parties’ definitions of the POSITA appear to be Patent Owner’s inclusion of a number of alternative ways one could qualify as a POSITA, including a Master’s degree combined with less experience, although Petitioner also acknowledges that “[l]ess work experience may be compensated by a higher level of education.” Ex. 1003 ¶ 22. On the present record, we do not deem the differences in the proposals as material given their substantive overlap. In general, we find the additional specificity and alternatives in Patent Owner’s definition helpful. In addition, Patent Owner’s definition appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’223 patent. Accordingly, for purposes of this Decision, we adopt Patent Owner’s proposed definition of the person of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). We note that we would reach the same outcome in this Decision under either definition of the POSITA. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should explain the differences and their relevance to the patentability issues in this case, and state whether any issue in the case turns on those differences.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“that would be used to construe the claim in a civil action” under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (citations omitted)). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner asserts that “no claim terms need to be construed to resolve issues of controversy in the present Petition.” Pet. 3 (citing Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Patent Owner asserts that we “should give the claims their ordinary and customary meaning” and that the claims “require no construction.” Prelim. Resp. 15 (noting that this is the same position it took in the Delaware Litigation). Patent Owner then asserts that Petitioner proposed constructions in the Delaware Litigation for several claim terms, but that Patent Owner asserts here, as it does in the Delaware Litigation, that those terms do not require construction. Id. at 15–16. We determine that no terms require express construction at this stage.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,190,223 - Hyundai Motor Company v. Mel Navip LLCInstitutedPTAB · May 16, 2024 · IPR2024-00174 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR of claims 1, 2, and 4–8 on both asserted obviousness grounds, finding a reasonable likelihood of success based on Fujiwara.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion Based on the foregoing, we determine that Petitioner establishes adequately that Fujiwara discloses the disputed limitations. We have also reviewed Petitioner’s arguments and evidence as to the remaining limitations of claim 1. Based on our review of the current record, Petitioner establishes sufficiently that Fujiwara discloses or renders obvious all of the limitations of claim 1 for the reasons provided by Petitioner. See Pet. 8–32. Accordingly, Petitioner establishes a reasonable likelihood that independent claim 1 would have been obvious based on Fujiwara. We have also reviewed Petitioner’s arguments and evidence as to dependent claims 2 and 4–8. See Pet. 32–43. Patent Owner does not separately address the dependent claims. Prelim. Resp. 9. Because we institute inter partes review as to independent claim 1, we also institute inter partes review as to dependent claims 2 and 4–8. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have (a) a Bachelor's of Science degree in a technical field and at least four years of experience in the field of design and/or manufacture of navigation systems; (b) a Master's of Science degree in a technical field and at least two years of experience in the field of design and/or manufacture of navigation systems; or (c) a PhD in a technical field relating to the design and/or manufacture of navigation systems. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Prelim. Resp. 3 (citing Ex. 2001 ¶ 29). Patent Owner does not identify any deficiencies in Petitioner’s proposal, and we view the parties’ proposals as overlapping to a large extent. See Pet. 4; Prelim Resp. 3. For purposes of this Decision, we adopt and apply Petitioner’s proposed level of ordinary skill in the art, which we view as consistent with the level of skill reflected in the ’230 patent and the asserted prior art. None of our determinations in this Decision would have been different if we applied Patent Owner’s proposal. If the parties continue to propose differing levels of ordinary skill in the art during trial, they should explain the differences and the relevance to the patentability issues in this case.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (citations omitted)). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that no claim construction is required for us to reach a decision on institution (Pet. 4), and Patent Owner does not address claim construction in its Preliminary Response. We determine that no express claim construction is necessary for the purposes of this Decision and therefore apply the plain and ordinary meanings of the claim limitations before us. If either party believes that the patentability of any challenged claim turns on a claim construction issue, they should set forth any proposed constructions in a separate section of their briefing during trial rather than implicitly relying on a construction in arguments addressing the prior art.” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on the current record, we find Petitioner’s arguments persuasive and Patent Owner’s arguments unavailing. While we agree with Patent Owner that Fujiwara’s information offering server may offer service information for multiple facilities, we disagree that this necessarily takes it outside of the scope of the claim limitation at issue, based on the current record. For example, in the situation where Fujiwara’s information offering server offers service information for a single facility, Fujiwara’s information offering server would pertain to a particular registration destination facility. We understand Petitioner’s argument as based on Fujiwara’s ability to provide information as to specific hotels, such as vacancies at a specific hotel, not hotels generally. See Pet. 9–14; Ex. 1005, Figs. 14–18, 20–23 (showing vacancy information for specific hotels). Fujiwara’s reference to vacancy information would seem to make little sense if not tied to a particular facility. Patent Owner does not address this aspect of Petitioner’s arguments, which renders Fujiwara’s ability to provide service information for more than one facility inapposite. Cf. Hewlett-Packard Co. v. Mustek Systems, Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“[A] prior art product that sometimes, but not always, embodies a claimed method nonetheless teaches that aspect of the invention.”). As to Patent Owner’s argument that an ordinary artisan would not understand Fujiwara as rendering obvious this limitation because “the system of Fujiwara differs from that of the ’230 patent fundamentally,” we find the argument lacking in explanation and support. See Prelim. Resp. 7 (quoting Ex. 2001 ¶ 43). The cited declarant testimony does not aid Patent Owner here, as it merely repeats the arguments from the Preliminary Response without further explanation or citation to supporting evidence. Based on the current record, Petitioner establishes adequately that Fujiwara discloses “a service information reception processing unit for receiving service information at an external registration destination facility with which member registration is made, the service information being distributed from the external registration destination facility.”” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,812,230 - PTAB · Feb 28, 2024 · IPR2023-01236 · APJ Carl M Defranco · IPR · Institution
The Board instituted review of claims 1–18 after finding a reasonable likelihood that claims 1–3 are obvious over Van Vliet and Coxreels.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Coxreels amount to “conclusory statements,” “hindsight over-generalization,” and “provide[] no underlying factual basis or citation.” Prelim. Resp. 34–36. Although we tend to agree with FAS that Permian’s first reason may be all those things, Permian’s second reason nonetheless carries the day at this preliminary stage. In particular, the current record supports Permian’s assertions that one skilled in the art “designing a system of Van Vliet would have looked to commercially-available reel components like those described in Coxreels . . . as a cost-effective and readily-available option” and “would have recognized the advantage of using Coxreels reel in Van Vliet’s mobile fuel delivery system.” Pet. 35–36 (citing Ex. 1003 ¶¶ 150–153). For instance, Permian proffers the testimony of its expert, which is unrebutted at this stage, that one skilled in the art would have selected Coxreels’ reel as a readily-available option because “Coxreels [was] specifically market[ed] for use in the Oil industry” and provides the advantage of “a non-crimping, flat smooth hose wrap.” Ex. 1003 ¶¶ 150– 152 (citing Exs. 1005, 1035); see also Pet. 38 (“Coxreels also describes a ‘low profile outlet riser, open drum slot design for flat smooth hose wrap’” (second emphasis added)). That evidence, at least on the current record, provides sufficient support for Permian’s reason to combine the teachings of Van Vliet and Coxreels with a reasonable expectation of success of arriving at the claimed invention. Aside from “motivation” for the asserted combination, FAS does not further dispute Permian’s showing as to how the combination of Van Vliet and Coxreels renders obvious the subject matter of claims 1–3. See Prelim. Resp. 34–39. After reviewing Permian’s showing, including Permian’s mapping of the disputed and undisputed claim elements, we find that Permian demonstrates a reasonable likelihood that challenged claims 1–3 are unpatentable as obvious over the combined teachings of Van Vliet and Coxreels. See Pet. 37–43. Thus, Permian meets the threshold for institution.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“FAS requests that we exercise discretion to deny the Petition under 35 U.S.C. § 325(d). See Prelim. Resp. 10–26. We decline. Contrary to FAS’s argument, we do not perceive Coxreels as “cumulative” of either Amann or Harman. Id. at 12–18. Coxreels clearly shows more details about the position of the inlet and outlet on the reel’s spindle than either of those references, which are merely cited but not relied on by the Examiner. See Ex. 2002, 25 (depicting fluid line 70 as terminating at the reel without further disclosure of whether the fluid line is connected directly to the reel or to hose 26); Ex. 2003, 2 (same). Thus, FAS does not persuade us that exercising our § 325(d) discretion is appropriate where, on their face, the asserted references do not appear to be cumulative of the references cited during prosecution.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Permian submits that one skilled in the art would have had either: (1) a Bachelor of Science in Mechanical Engineering, Electrical Engineering, Petroleum Engineering or an equivalent field as well as at least 2 years of academic or industry experience in the oil and gas industry, including well drilling, completion, or production, or (2) at least four years of industry experience in the oil and gas industry including well drilling, completion, or production. Pet. 16–17 (citing Ex. 1003 ¶¶ 75–78). FAS responds that “at this stage of the proceeding, [it] does not dispute the level of ordinary skill in the art.” Prelim. Resp. 6. Accordingly, for purposes of institution, we adopt the level of skill in the art as defined by Permian.” slip op. at 4
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Claim construction begins and ends with the actual words of the claim. Here, by its plain terms, the claim language contemplates that the tube and the sleeve are separate and distinct structures where one “circumscribes” the other. Tellingly, rather than address FAS’s analysis of the claim language itself, Permian resorts to attacking the extrinsic dictionary definitions cited by FAS. Pet. Reply 2. But, of course, those dictionary citations do not define a tube and a sleeve in terms of being physically separate structures. Construing a claim limitation that includes multiple elements—such as the one disputed here—is not a matter of defining each term alone. Rather, it is a matter of construing those terms together in the context of the entire claim. Permian never addresses that context, which is part of the intrinsic record. Thus, without more, we agree with FAS that the claim language “the sleeve circumscribes the tube” would be rendered meaningless if the tube and sleeve were construed as encompassing the same structure. See Prelim. Resp. 9–10. Moreover, the fact that the tube and sleeve are listed separately in the” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,815,118
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.