- Globus Medical, Inc. v. Spinelogik, Inc.All claims unpatentablePTAB · Jul 10, 2026 · IPR2025-00225 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–6, 11, 12, and 15–17 are unpatentable: claims 1–4, 6, 11, 12, 15, and 17 over Blain; claims 5 and 16 over Blain, Bray, and Steffee.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that one of ordinary skill in the art would have had a bachelor’s or equivalent degree in mechanical engineering or a related discipline (e.g., biomedical engineering, metals and materials engineering), and at least five years of experience with a) designing, developing, evaluating and/or using spine devices, b) anatomy, physiology and biology of soft and calcified tissues including bone healing and fusion, and c) biomechanical and functional loading of orthopedic implants. Pet. 18–19 (citing Ex. 1002 ¶¶ 77–78). Petitioner also asserts that “[m]ore education can supplement practical experience and vice versa.” Id. (citing Ex. 1002 ¶ 78). “Patent Owner does not dispute the proffered definition for a POSA.” PO Resp. 10. proposed level of skill is reasonable and consistent with the ’805 patent and the asserted prior art. Thus, for these reasons, we adopt Petitioner’s level of skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“Based on the full record, we determine that “housing,” as it appears in the context of the term “delivery housing” is a component that is a part of the delivery mechanism (see Ex. 1001, 11:27–31) and that simply contains and guides another component during delivery. See Ex. 1001, 13:25–27, 21:30–50. Thus, we apply the ordinary meaning of “housing,” as it appears in the context of the term “delivery housing,” and address in the context of “delivery housing,” as recited by claims 2 and 4.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“understanding of plain and ordinary meaning as set forth in the litigation.” Pet. Reply 13 (citing Ex. 1022, 2 (“channel . . . [that] has a curved path”)). Thus, Petitioner concludes that the parties agree on construction of “curved channel.” Id. at 13–14.10 9 Although the parties refer to “curved” alone or to a “curved channel,” we understand the parties to be referring to a “channel of the fusion member [that] is curved,” as recited in claims 5 and 16. 10 At oral argument, the parties confirmed that there was no dispute as to the meaning of “curved channel.” See Tr. 15:12–14 (Petitioner stating that “the term “curved channel” appears consistent with the plain language of the claims and Specification. Thus, we adopt the parties’ agreed-upon construction and construe a channel that is “curved” to mean a channel following a curved trajectory.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We have considered Petitioner’s arguments and evidence, and Patent Owner’s counterarguments and find, on the complete trial record, that Petitioner demonstrates, by a preponderance of the evidence, that Blain discloses “a fusion member for positioning between two vertebral bodies, the fusion member having a first plurality of channels, each channel of the first plurality of channels having an opening on a same side of the fusion member,” as recited by limitation 1.1. At the outset, we find Patent Owner fails to establish that any of the alleged differences between Blain’s “apertures and the ’805 [p]atent’s internal channel geometry” relate to any particular recitation in argued limitation 1.1. Although we acknowledge that claims 5 and 16 each requires curved trajectories (see, e.g., claim 5 reciting “each channel of the fusion member is curved”), limitation 1.1 does not recite such a feature. As Petitioner correctly notes, “[n]othing in the claim requires a special ‘internal channel geometry,’ ‘shaped block,[’] ‘curved tubular channels,’ non ‘straight-through’ apertures, or ‘flexible’ anchors.” Pet. Reply 14 (footnote omitted). See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments “not based on limitations appearing in the claims”). Therefore, after reviewing the arguments and evidence, we determine that Petitioner has shown by a preponderance of the evidence that Blain discloses the subject matter of limitation 1.1.” slip op. at 19
Patent outcomesUS 9,730,805 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,730,805 - Under Armour, Inc. v. Athalonz, LLCAll claims unpatentablePTAB · Sep 11, 2025 · IPR2024-00636 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–8 are unpatentable as obvious over Kim; the Board did not reach the four other instituted grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Based on the full record, we determine that Petitioner’s proposed level of skill is reasonable and consistent with the ’786 patent and the asserted prior art. Thus, for these reasons, we adopt Petitioner’s level of skill in the art for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Based on the full record, we maintain that it is unnecessary to explicitly construe “athletic positioning” because its meaning is already captured in the claim through the recitation of the relationship between the various slopes of the sole that provide “athletic positioning” of the foot. See Ex. 1001, 44:2–14. The recitations of a “first slope,” “second slope,” “third slope,” and “reference slope” translate into the relative heights proposed in adopt Patent Owner’s proposed construction because it incorporates the specification’s consistent descriptions of “athletic positioning” in terms of relative heights and slopes. For example, one embodiment of an “athletic positioning shape” is where “the heel platform may be 10 to 30 mm higher” than “the toe cup and/or the ball of foot cup.” [Ex. 1001], 13:38–45. Another embodiment discloses “an athletic positioning sole that includes an overall geometric shape” including “the heel of the sole [at] a particular height (e.g., h1, which may be 1’s to 10’s of mm) that slopes at an angle (e.g., Ø1) to the toe on the inside edge of the sole” which “may have a height of zero to a few millimeters.” Id., 17:54–62. PO Resp. 29. However, we find Patent Owner’s contention regarding particular heights and specific angles attempts to import limitations from the Specification into claims. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). Based on the full record, we determine that express claim construction of “athletic positioning” is not necessary to resolve the present dispute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“8. Conclusion for Ground 1 We have considered all of the arguments and evidence adduced at trial. For the reasons explained, we find Petitioner has persuasively demonstrated that Kim teaches or suggests all limitations of claims 1–8. We also find that the value of Patent Owner’s objective evidence of non-obviousness is weak in comparison to the evidence regarding the prior art under the first three Graham factors. Accordingly, we find Petitioner has shown by a preponderance of the evidence that claims 1–8 of the ’786 patent would have been obvious over Kim.” slip op. at 39
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“Based on the full record, we determine that Patent Owner fails to show nexus between the claimed invention and the asserted objective indicia of nonobviousness. PO Resp. 70–78; PO Sur-reply 25–28. Other than asserting that “the requisite nexus exists here” (PO Resp. 71), and citing to the Declaration testimony of Mr. Markison (id. (citing Ex. 2008 ¶ 322)), the Patent Owner response does not provide an analysis of Patent Owner’s product with respect to the claims of the ’768 patent, and thus does not demonstrate nexus. To the extent Patent Owner references Mr. Markison’s testimony, Mr. Markison’s testimony consists solely of the statement that Patent Owner “sells and markets golf and baseball shoes that embody the claims of the ’786 patent” with reference to an exhibit from district court litigation. See Ex. 2008 ¶ 322 (citing Ex. 2014). We find Patent Owner’s reliance on Mr. Markison’s testimony to be insufficient to establish a rebuttable presumption of nexus. Thus, Patent Owner is not entitled to a rebuttable presumption of nexus, because Patent Owner has not shown that the asserted evidence is tied to a specific product that is the disclosed and claimed invention. Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019). Patent Owner also does not provide any evidence that the asserted” slip op. at 33
Patent outcomesUS 10,674,786 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,674,786 - Under Armour, Inc. v. Athalonz, LLCAll claims unpatentablePTAB · Sep 10, 2025 · IPR2024-00640 · APJ Hyun J Jung · IPR · Final written decision
Claims 1–5, 7, 9–15, and 17 are unpatentable: claims 10, 11, 15, and 17 over Won, and claims 1–5, 7, 9, and 12–14 over Won and Talarico ’911.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art “would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes.” Pet. 17–18 (citing Ex. 1002 ¶ 31). According to Petitioner, “the claims are obvious in view of any reasonable definition of a [person of ordinary skill in the art].” Id. at 21. For institution, we preliminarily adopted Petitioner’s proposal. Inst. Dec. 4. “For purposes of this proceeding, Patent Owner does not dispute Petitioner’s level of ordinary skill.” PO Resp. 13 (citing Pet. 17–18). Patent Owner contends that its declarant Mr. Markison “far exceeds the proposed level of ordinary skill in the art” and, because he is registered as a patent attorney and licensed as an attorney, “can offer good faith and objective opinions on the issues in this proceeding.” Id. at 13–14 (citing Ex. 2008 ¶¶ 11–13, 17–30, 42–44). Based on the full record, we maintain and affirm that one of ordinary skill in the art “would have (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes.” Pet. 20–21 (citing Ex. 1002 ¶ 30); Inst. Dec. 9; Ex. 1002 ¶ 30; Ex. 2008 ¶ 44.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Petitioner notes that, although claim 1 recites a heel platform made of a “first material” and a forefoot platform made of a “second material,” the first and second materials can be the same based on Patent Owner’s apparent interpretation in related litigation. Pet. 27 n.1 (citing Ex. 1012, 30–44). Petitioner applies Patent Owner’s apparent interpretation to the challenges of this proceeding “[w]ithout conceding alternative arguments.” Id. At institution, we were persuaded by Patent Owner’s arguments and adopted a construction that the “first” and “second” materials are “different in some manner.” Inst. Dec. 7–8. Patent Owner responds that we should maintain the same construction and disputes Petitioner’s evidence that the “first” and “second” materials can be the same material. PO Resp. 15–19 (citing Pet. 27 n.1; Inst. Dec. 8, 12–13; Ex. 1012, Ex. E, 38, 52; Ex. 2014, 15). Patent Owner also argues that Petitioner should not be allowed to present new arguments or evidence in reply. Id. at 19–21. Petitioner replies that interpreting “first” and “second” materials to be different materials contradicts the plain language of the claims, the Specification, and Patent Owner’s infringement contentions. Pet. Reply 1–5 (citing Pet. 27 n.1; Prelim. Resp. 16–17; PO Resp. 16–18; Ex. 1001, 10:9– 19, 17:52–54, 21:64–22:4, 27:47–51, Figs. 43, 49, claims 1, 6; Ex. 1023, 47:1–48:1, 215:6–217:12, 224:13–225:19; Ex. 1025, 319; Ex. 1026). Patent Owner replies that Petitioner presents new arguments and evidence in reply. PO Sur-reply 5–9 (citing Pet. 27 n.1; Inst. Dec. 13; PO Resp. 16–21; Pet. Reply 1–3, 14 n.1; Paper 19). Patent Owner also argues that, even if Petitioner’s asserted new arguments and evidence are considered, they fail to support an interpretation of “first” and “second” Resp. 16–17; Pet. Reply 1–3; Ex. 1001, 17:50–54, 27:50–54, Figs. 43, 93; Ex. 1023, 215:6–217:12; Ex. 2014, 19–22)” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“4. Other Terms Based on the full record, express interpretation of other terms is not necessary to resolve the parties’ dispute. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 13
- ExcludeMotion to exclude, grantedMotion to exclude, deniedMixed
“Patent Owner does not satisfy its “burden of proof to establish that it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). Evidence of how the inventor viewed claim terms can be useful in considering claim interpretation, and, thus, we agree with Petitioner that the exhibit is relevant. For the reasons stated below, however, we do not need to rely on the exhibit. Accordingly, Patent Owner’s Motion to Exclude Exhibit 1024 is dismissed as moot.” slip op. at 6
Patent outcomesUS 11,510,456 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,510,456 - Under Armour, Inc. v. Athalonz, LLCAll claims unpatentablePTAB · Sep 10, 2025 · IPR2024-00637 · APJ Carl M Defranco · IPR · Final written decision
Claims 1–5 are unpatentable as obvious over Kim; the Board did not reach the Dufour–Kim and Rubin–Kim grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Under Armour proposes that one of ordinary skill in the art would have had— (1) at least a B.S. or equivalent degree related to industrial or product design and at least two years’ experience designing or developing athletic shoes; or (2) at least five years designing or developing athletic shoes. Pet. 11 (citing Ex. 1002 ¶ 31). Athalonz responds that “[f]or purposes of this proceeding, Patent Owner does not dispute Petitioner’s level of ordinary skill.” PO Resp. 23 (citing Pet. 11). There being no dispute, we see no reason to depart from Under Armour’s proposed definition of the level of skill in the art, as it appears reasonable and consistent with the asserted prior art and the ’291 patent..” slip op. at 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“outside edge” of the shoe. Ex. 1001, 43:23–28. Athalonz construes those terms to mean “the edges of the portion of the shoe where the foot sits” and that such construction is consistent with how one skilled in the art “would understand those terms in light of the specification.” PO Resp. 25 (citing Ex. 2008 ¶¶ 85, 90–91). Athalonz explains that “[i]n light of the specification, the ‘inside’ and ‘outside edges’ in the claims do not refer to the edges of the exterior of the shoe.” Id. (citing Ex. 2008 ¶¶ 90–91). Under Armour does not dispute Athalonz’s proposed construction of “inside edge” and “outside edge” as recited in claim 1. See Pet. 10; Pet. Reply 1. And, from our review of the record, Athalonz’s proposed construction appears consistent with the plain language of the claims and the specification. Thus, we adopt it for purposes of this decision. slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“unnecessary to explicitly construe “athletic positioning shape” because its meaning is already captured in the claim through the recitation of the relationship between the various heights and slopes of the sole that define the “athletic positioning shape.” See Ex. 1001, 43:21–35. Those recitations translate into the relative heights proposed in Athalonz’s construction. Nonetheless, Athalonz contends that we should adopt its proposed construction because it incorporates the specification’s consistent descriptions of “athletic positioning” in terms of relative heights and slopes. For example, one embodiment of an “athletic positioning shape” is where “the heel platform may be 10 to 30 mm higher” than “the toe cup and/or the ball of foot cup.” [Ex. 1001], 13:3–8. Another embodiment discloses “an athletic positioning sole that includes an overall geometric shape” including “the heel of the sole [at] a particular height (e.g., h1, which may be 1’s to 10’s of mm) that slopes at an angle (e.g., Ø1) to the toe on the inside edge of the sole” which “may have a height of zero to a few millimeters.” Id., 10:11–16. PO Resp. 27–28. We find, however, that Athalonz’s proposed construction regarding particular heights and angles is nothing more than an attempt to improperly import limitations from the specification into claims. Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the claim.”). In sum, we determine that express claim construction of “athletic positioning shape” is not necessary to resolve the present dispute. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Pet. Reply 6–10. In support, we credit the declaration testimony of Under Armour’s expert that one of ordinary skill in the art “would understand that the shape and orientation of the sole (i.e., the platform on which an athlete stands) in relation to the ground is what determines if the foot is placed in an athletic position when in use” and that “[c]leats serve to provide traction, not athletic positioning.” Id. at 8 (citing Ex. 1022 ¶ 15). We also agree with Under Armour’s expert that one of ordinary skill in the art “would [] understand that because the cleats’ height does not contribute to the athletic positioning shape when in use on soft ground (the surface on which golf is played), it would not be included in the measurement of the claimed first, second, and third heights.” Id. at 8–9 (citing Ex. 1022 ¶ 16). We find the testimony of Under Armour’s expert to be credible and supported by the trial record. For instance, the ’291 patent specification itself distinguishes between the “sole” and “cleats” of the shoe as separate components. Ex. 1001, 1:59–61. Similarly, Kim describes the sole and cleats as distinct components of a shoe, illustrating the industry’s understanding of these terms. Ex. 1022 ¶ 14; see also Ex. 1005 ¶¶ 9, 14, 15, 30, claim 1 (describing that the spikes, in Kim, “protrude” or “extend” from the “outsole” and are located below the outsole’s “lower surface.”). We also note that Athalonz’s inclusion of the height of Kim’s cleats in measuring the claimed “heights” appears to be inconsistent with its own litigation position in the parallel district court action. See Pet. Reply 9–10. In particular, as Under Armour notes, “Athalonz did not include the height of the cleats in the measurement of the claimed heights” in accusing Under Armour’s shoes that have cleats of infringement. Id. (citing Ex. 1025, 51, 55–56, 61–62 (Athalonz’s infringement contentions regarding claim limitations [1.6] and [1.9])). To the extent Athalonz asserts that its “infringement contentions are extrinsic evidence that should be afforded little weight” (PO Sur-Reply 12), we disagree. While Athalonz’s infringement contentions may indeed be extrinsic evidence, we nevertheless find they provide an indication of Athalonz’s understanding and application of the claims. As such, we find that Athalonz’s infringement contentions, together with the plain language of the claims, the specification, and the credible testimony of Under Armour’s expert, fully supports Under Armour’s assertion that one of ordinary skill in the art in the relevant time frame “would understand that the claimed first, second, and third heights would be measured with respect to the bottom of the sole, not with respect to the bottom of the cleats.” Pet. Reply 14; see also Ex. 1022 ¶¶ 10–24 (Under Armour’s expert confirming same).” slip op. at 12
Patent outcomesUS 11,013,291 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 11,013,291 - PTAB · Aug 22, 2025 · IPR2025-00343 · APJ Scott A Daniels · IPR · Institution
The Board instituted IPR on claims 1–6 and 8–13 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the arguments and evidence presented by Petitioner and Patent Owner, we are persuaded that Petitioner demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. See 35 U.S.C. § 314(a). Accordingly, we institute an inter partes review of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“and 4) does not address Petitioner’s first two arguments and evidence, which, on this record, appear to show that Bucknell’s prioritized queue length is based on buffered data in either, or both, of a first and second iteration. Therefore, at this stage of the proceeding, we need not reach Patent Owner’s assertions as to the third alternative argument and evidence Petitioner provides, namely the combination of examples 2), 3), and 4). For completeness, however, we acknowledge that Bucknell does not expressly combine examples 2), 3), and 4), mainly because example 4) only refers back to example 2). However, we note that from a plain reading of Bucknell’s written description it may not be a significant leap to understand that the disclosed combination of examples 2) and 4), with first and second portions 90 and 95 populated in reverse order as taught in example 4), that this combination could be subsequently modified by example 3) to provide a “second iteration . . . based on buffered data.” Ex. 1006 ¶¶ 26–27. In other words, on the current record it is not clear why “the unused resource” of Bucknell’s second portion 95 cannot also “be made available,” to the first portion 90 if the order was simply reversed per the combination of examples 2) and 4). 3. Conclusion as to Claim 1 In summary, we find Petitioner’s arguments and evidence sufficient to show a reasonable likelihood that claim 1 is unpatentable over Eckert in view of Bucknell and Lohr-1. On the current record, we find that Bucknell discloses “a first iteration” based on receiving the priority values for logical channels associated with the MAC-d flows. Ex. 1006 ¶ 26. And, as discussed above, Bucknell’s described “priorities,” are plural, just like the claimed “received parameters.” Ex. 1001, 14:11; Ex. 1006 ¶ 26. In on a priority.” See Ex. 1001, 13:57–14:16. As to the issue of whether the Petition provides sufficient explanation or motivation to combine Bucknell’s examples 2), 3), and 4), which is an alternative argument to Petitioner’s other mappings for limitation [1.9] which we find sufficient for institution, we leave this alternative mapping issue for development at trial. See Pet. 55 (Petitioner explaining that “Bucknell describes additional ways that limitation [1.9] is disclosed, based on the teachings of examples 2 and 4 (discussed previously) in view of example 3.”).” slip op. at 27
- Prior constructionPrior construction adoptedDecided for petitioner
“Petitioner points out that in IPR2022-01127 the Board “preliminarily determined that a subset of the plurality of radio bearers” means “less than all of the plurality of radio bearers.” Pet 12 (citing Ex. 1019, 18–19). Petitioner explains that, in the present proceeding, it has applied “the prior art in accordance with that construction; however, in view of the asserted grounds, no claim term requires express construction to find the Challenged Claims unpatentable.” Id. (citing Nidec 868 F.3d 1017). Patent Owner neither disputes the prior construction of “a subset of radio bearers,” nor offers additional constructions. To the extent necessary, and in accordance with our prior determination, we construe “a subset of the plurality of radio bearers” to mean “less than all of the plurality of radio bearers.” At this early stage of the proceeding, no claim terms are disputed and we need not construe any other terms for purposes of institution.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not expressly dispute Petitioner’s definition of a person of ordinary skill in the art. See generally Prelim. Resp. On this record, Petitioner’s proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’138 patent and the asserted prior art references. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we rely on Petitioner’s proposed level of ordinary skill in the art.” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,292,138 - Globus Medical, Inc. v. Spinelogik, Inc.InstitutedPTAB · Jul 14, 2025 · IPR2025-00226 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR of claims 1–5, 7, and 9 on all asserted grounds, finding a reasonable likelihood that Moskowitz and Steffee render at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A claim is unpatentable under 35 U.S.C. § 103(a) if the differences between the subject matter sought to be patented and “the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which that subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness when presented. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). In analyzing the obviousness of a combination of prior art elements, it can be important to identify a reason that would have prompted one of skill in the art “to combine . . . known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. A precise teaching directed to the specific subject matter of a challenged claim is not necessary to establish obviousness. Id. Rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420. Accordingly, a party who petitions the Board for a determination of unpatentability based on obviousness must show that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (citations omitted).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Under that standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have had to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“according to what Petitioner purports to be Patent Owner’s “apparent construction” is relevant to only Petitioner’s challenge based on Moskowitz and the knowledge of a person of ordinary skill in the art (Ground 1). Here, Petitioner acknowledges that “even if a ‘curved’ channel has a narrower meaning requiring the channel to follow a curved path (instead of the straight path identified in the accused products), Petitioner demonstrates that the challenged claims are also unpatentable over at least Grounds 2 and 3.” Pet. 24–25. For purposes of this decision, we find Petitioner’s alternative construction to be consistent with the ’385 patent’s disclosure. See, e.g., Ex. 1001, 15:49–53 (“The anchoring member is advanced through the curved fusion member channel and into the vertebral body. As the fusion member channel is curved, the path that the anchoring member travels is also curved.”). We also find it to be consistent with the construction Petitioner advances in the related litigation. See Ex. 1029, 1 (Petitioner preliminarily construing “curved channel” to mean “channel that has a curved path”). However, because construing “curved,” as it appears in the term “curved channel,” is not necessary to determine whether Petitioner has made a sufficient showing to support institution, we determine that an express interpretation of this term is not needed at this stage of the proceeding. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). On this limited record, and at this early stage of the proceeding, the Board has not made a final determination on the construction of “curved,” as it appears in the term “curved channel.” The parties should consider developing this issue further during trial.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“a) Motivation to Combine Petitioner asserts that one of ordinary skill in the art would have been “motivated to use Steffee’s curved anchors with Moskowitz’s screw box to minimize potential migration of the screw box after implantation.” Pet. 84 (citing id. at 88–90). According to Petitioner, “Steffee taught that forces tending to cause sagittal or lateral movement of the fastener (and thereby migration of the implant) can be minimized or eliminated by using a curved fastener that increases the entry angle of the fastener to near-perpendicular.” Id. at 88. Thus, Petitioner asserts that one of ordinary skill in the art would have been “motivated to use Steffee’s curved anchors with Moskowitz’s screw box to lower the forces (acting through Moskowitz’s existing screws) that tended to cause migration of fusion implants.” Id. (citing Ex. 1002 ¶ 169). Petitioner also points out that “Moskowitz’s anchors are threaded screws” (Pet. 89 (citing id. at 30–48)), and Petitioner asserts that one of ordinary skill in the art would have understood that such screws could strip (e.g., due to misalignment or over-torquing), which would reduce the stability of engagement between the fusion member and vertebrae. Ex. 1002 ¶ 170. Because the fasteners in Steffee do not contain threads, and further contained barbs to prevent the fastener from backing out (Ex. 1005, 2:61–68), a POSA would have understood that such fasteners would not be subject to such stripping. Ex. 1002 ¶ 170. Therefore, a POSA would have been motivated to use similar curved fasteners having barbs to eliminate the risk of stripping inherent when using Moskowitz’s screws. Id. Pet. 89. In addition, Petitioner contends that one of ordinary skill in the art would have “had a reasonable expectation of success in making this modification because it would only require the use of known machining techniques, and because the use of both curved anchors and curved channels had already been shown successful in spinal implants.” Id. at 84. Petitioner provides several reasons to support its contention. See id. at 90–91.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,460,385 - Skechers U.S.A., Inc. v. Nike, Inc.Institution deniedPTAB · Jun 10, 2025 · IPR2025-00141 · APJ Ken B Barrett · IPR · Institution
The Board denied institution on all challenged claims under §325(d), finding the petition relied on previously presented art and did not show material error by the Office.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“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 erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“single §102 rejection based solely on Nishida.” Pet. § 325(d) Reply 3 (emphasis omitted). Specifically, Petitioner argues that: The examiner seemingly failed to consider how it would have been obvious to combine Nishida (or any other reference of record, such as Orei) with knowledge in the art, including the fact that it was “well known to use double needle-bar raschel machines . . . to knit textile elements simultaneously with surrounding textile structures” (Pet., 37–38), and that simultaneous knitting would be obvious because it would “increase yield and reduce manufacturing steps,” as explained in the Petition and supporting evidence. See Pet., 42–44. Id. (alterations in original); see also id. at 4 (Petitioner arguing that the Examiner clearly erred for “failing to seemingly even consider if it would 10 We quote here, to give context to “otherwise,” both aspects that a petitioner must demonstrate in order to meet its burden. In order to determine whether Petitioner has met its overall burden, we need not and do not reach the issue of whether “the previously presented art [Nishida] teaches the limitations of the challenged claims.” Ecto World, Paper 13 at 6. have been obvious to combine Nishida with other prior art, or to implement Nishida using well-known techniques for simultaneously knitting textile elements and surrounding structures having differing textures.”). We do not find this argument persuasive. The cited portion of the Petition is the contention that Orei—not Nishida—would render obvious claim 1. See Pet. 37–38, 42–44 (Ground 1A). Thus, Petitioner has not shown persuasively that the Examiner erred in not making an obviousness rejection based on Nishida because the disputed limitation was purportedly well-known. Additionally, Petitioner’s support for the assertion that this limitation is well-known is not persuasive. The Petition parenthetically quotes from a source stating that plural “articles . . . can be simultaneously knitted side-by-side,” not that an article (a textile element) and surrounding textile structure are known to be simultaneously knitted. See Pet. 38 (quoting Ex. 1050, 201) (emphasis added); see also Pet. § 325(d) Reply 3 (Petitioner quoting its own argument and characterizing it as a “fact” (“The examiner seemingly failed to consider . . . the fact that it was ‘well known . . . “)).” slip op. at 21
§ 103 obviousnessDiscretionary denialPatents in suitUS 8,266,749 - PTAB · Dec 12, 2024 · IPR2024-00993 · APJ James A Tartal · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314(b) (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we conclude that the information does not demonstrate a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we deny institution of inter partes review.” slip op. at 2
- Skill levelOther
“Petitioner contends a person of ordinary skill in the art at the time of the invention “would have had a Bachelor’s degree or comparable technical degree in Industrial Design or Mechanical Engineering or equivalent work experience, and at least one year’s worth of experience in research, design and/or development related to appliances for moving air such as hair dryers (or other comparable industrial design),” and that “[a]dditional education could substitute for experience, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 17–19. At this stage of the proceeding, Patent Owner does not contest Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 27–28. We find, for purposes of this Decision, that the ’979 patent and the cited prior art references reflect the appropriate level of skill at the time of the claimed invention and that the level of appropriate skill reflected in these references and in the ’979 patent is consistent with the definition of a person of ordinary skill in the art proposed by Petitioner. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes no express construction and contends that the Petition is based on Patent Owner’s position in district court that no construction is necessary. Pet. 6–7 (citing Ex. 1013). Patent Owner proposes no express construction at this stage of the proceeding, and states that “the claim terms can be afforded their plain and ordinary meaning.” Prelim. Resp. 28. Only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). In the absence of any dispute over the construction of any claim term, we find no express construction necessary for purposes of this Decision.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“3. Reasons Supporting the Combination of Saito and Lindsey Petitioner also fails to show sufficiently a reason for the asserted combination of Saito and Lindsey. See Pet. 22–29. Petitioner argues, for example, that a person of ordinary skill in the art “would have been motivated to combine Saito’s brush attachment with Lindsey’s teaching of an array of vanes, disposed in a turbinate arrangement, to generate a spinning airflow to provide increased lift and volume to the hair.” Pet. 26 (citing Ex. 1003 ¶¶ 90–94). According to Petitioner, “incorporation of vanes, as taught by Lindsey, would have improved Saito’s hair styling attachment by changing the air flow paths from an outwardly radial direction to transverse or perpendicular (i.e., tangential) to create a spinning/rotational flow.” Id. (citing Ex. 1003 ¶ 90). Petitioner, however, fails to show sufficiently that Lindsey’s attachment generates a “spinning/rotational flow.” In fact, Petitioner notes that Lindsey, itself, describes the discharge of air as being in a “spinning, turbulent manner” which provides “additional lift and volume to hair.” Pet. 27 (quoting Ex. 1005, 10:28–33); see also Ex. 1005, 9:47–64 (stating that the “turbinate arrangement and the features of the vanes and their disposition provide flow paths of discharged air having continually varying and spiraling radii about the axis of air flow” and that “the discharged hot air is spun out from the central portion of the vanes in a turbulent manner”). Additionally, Patent Owner argues, and we agree, that Petitioner does not provide any reason for “the six additional unacknowledged modifications” to the vanes of Lindsey employed in Petitioner’s asserted combination as depicted in Petitioner’s model attachment. Prelim. motivation for those changes alone is reason enough to deny institution.” Id. at 59. Indeed, Petitioner neither acknowledges, for example, that its model attachment eliminated the prongs and holes of the vanes of Lindsey nor offers any sufficient reason why a person of ordinary skill in the art would have done so. Absent from the Petition is any sufficient explanation why a person of ordinary skill in the art would have only chosen attachment features from Saito and Lindsey that correspond to claimed elements of the ’979 patent, while disregarding all attachment features taught by Saito and Lindsey that are inconsistent with claimed elements of the ’979 patent. In sum, we have considered all of the arguments advanced by Petitioner in support of its asserted combination and determine Petitioner has not sufficiently shown a reasonable likelihood of prevailing in its assertion that a person of ordinary skill would have had reason to combine the asserted references in the manner set forth in the Petition by Petitioner.11” slip op. at 32
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,044,979 - PTAB · Nov 19, 2024 · IPR2024-00938 · APJ Eric C Jeschke · IPR · Institution
The Board instituted inter partes review of claims 1–15 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–15. We thus institute inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in mechanical engineering or a similar field and 2–3 years of experience in machine design, including machines that include fluid dynamics or fluid paths, such as vacuum cleaners.” Pet. 9. Petitioner also states that “[a]dditional education could offset less experience and vice versa, and [one of ordinary skill in the art] could have also obtained similar knowledge and experience through other means.” Id. Patent Owner “does not challenge” Petitioner’s proposed definition of the level of ordinary skill in the art, but “reserves the right to provide an alternative definition . . . if IPR is instituted.” Prelim. Resp. 3. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner, which appears consistent with the record at this stage of the proceeding, including the prior art. See GPAC Inc., 57 F.3d at 1579.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes constructions for any claim terms. See Pet. 9; Prelim. Resp. 2. Based on the current record, we need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“[W]e conclude that while “common sense” can be invoked, even potentially to supply a limitation missing from the prior art, it must still be supported by evidence and a reasoned explanation. In cases in which “common sense” is used to supply a missing limitation, as distinct from a motivation to combine, moreover, our search for a reasoned basis for resort to common sense must be searching. And, this is particularly true where the missing limitation goes to the heart of an invention. Arendi, 832 F.3d at 1363. These statements indicate that “common sense” or “common knowledge” may supply a missing limitation if a “searching” reasoned analysis is provided, along with adequate evidentiary support.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 11,389,038 - Ford Motor Company / American Honda Motor Co., Inc. et al. v. Neo Wireless LLCAll claims unpatentablePTAB · Nov 1, 2024 · IPR2023-00964 · APJ Matthew S Meyers · IPR · Final written decision
Claims 1–14 are unpatentable as obvious under § 103, including claims 1, 3–8, and 10–14 over Walton040 and Li017, and claims 2 and 9 over those references and Tufvesson.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the art is nearly identical to the one proposed in the Petition—i.e., a minimum of a bachelor’s degree and at least 3 years of experience.” Pet. Reply 28 (citing Pet. 14 (citing Ex. 1003 ¶ 53); Ex. 1047, 4:44:9–11, 78:9–79:3; Ex. 2015 ¶ 22). The main distinction between Petitioner’s ordinarily skilled artisan and Patent Owner’s is that Patent Owner’s definition requires a lesser “two years of experience” whereas Petitioner’s requires at least three years of experience. However, as Mr. Alberth acknowledges during deposition, “[a] difference of bachelor’s plus two or bachelor’s plus three does not make that much of a big a difference” (Ex. 1047, 78:9–12), both would be able to understand the ’941 patent and cited prior art (id. at 78:13–18), perform the same analysis, and come to the same conclusions regarding the prior art (id. at 78:19–79:3). Thus, we determine that Petitioner’s proposal is consistent with the level of skill reflected in the prior art references of record. See Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007) (listing the type of problems encountered in the art, prior art solutions to those problems, and the sophistication of the technology as factors that may be considered in determining the level of ordinary skill in the art). The prior art itself may be sufficient to demonstrate the level of skill in the art at the time of the invention. See Okajima, 261 F.3d at 1355 (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Pet. Reply 2 (citing Ex. 1003 ¶¶ 367–374). In fact, Patent Owner states that there is no “dispute that Walton040’s own methodology already accounts for time varying factors including user mobility, frequency-selective fading and intercell interference.” PO Sur-reply 10 (citing PO Resp. 46–49; Ex. 2027, 133:11–135:6). In view of Li017’s solution for the intercell interference problem, and the similarity of the technical environments of the two references, there is ample evidence that Li017’s technique would operate predictably well in Walton040. For example, Li017 describes that “each subscriber continuously monitors the reception of the pilot symbols and measures the SINR and/or other parameters,” in order “to select one or more clusters with good performance.” Ex. 1009 ¶ 44. Thereafter, each subscriber may “report[] these SINR measurements to their base station through an access channel.” Id. ¶ 45. The SINR for a given subcarrier cluster “may comprise the average of the SINR values of each of the subcarriers in the cluster,” “may be the worst SINR among the SINR values of the subcarriers in the cluster,” or may be “a weighted averaging of the SINR values of the subcarriers in the cluster.” Id. ¶ 45. “Upon receiving the feedback from a subscriber, the base station further selects one or more clusters for the subscriber among the candidates.” Id. ¶¶ 45, 47. Similarly, Walton040 describes that “the terminals may derive the SNR for each transmission channel and report downlink CSI to the base station via a reverse channel,” and that “[t]he base station would then use this information . . . to determine the channel . . . assignments.” Ex. 1008 ¶ 93. Petitioner’s proposed modification simply allocates subcarriers as a group, as opposed to individually, where both Walton040 and Li017 use similar methods to determine which subcarriers are best for a given terminal/subscriber. In particular, Petitioner argues that “modifying Walton040’s BS to incorporate Li017’s cluster selection process and informing the subscriber of the selected subchannel configuration would have required minimal modifications (e.g., providing logic in Walton040’s BS to select the configuration based on existing CSI and inform the terminal).” Pet. 82 (citing Ex. 1003 ¶¶ 370–371).” slip op. at 28
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“configuration.” Rather, Patent Owner asserts that the plain meaning requires something more than an indication of a subchannel. See PO Resp. 53–54, 60. This comports with the general preference for “[a] claim construction that gives meaning to all the terms of the claim.” Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). We thus look to Petitioner’s combination for the indication of something more than solely an indication of the identity of a subchannel, namely, information encompassed by the term “configuration.”12 As noted above, Petitioner points to Li017’s notification of a cluster allocation through a control channel. Pet. 95 (citing Ex. 1009 ¶ 48; Ex. 1003 ¶ 421). Petitioner emphasizes that an allocated cluster can be either a coherence or diversity cluster, and that “[t]hese different subcarrier configurations correspond to different subchannel configurations.” Pet. Reply 13–14 (citing Ex. 1009 ¶ 111, Figs. 9, 12). Patent Owner argues that Li017 discloses informing a user of an assigned base station subchannel, but not a “subchannel configuration.” PO Resp. 61. In other words, “the parameter transmitted to the user is only a cluster/subchannel selection.” Id. at 63. We disagree with Patent Owner that Li017’s notification is solely an indication of a subchannel. See PO Resp. 62. As shown in Li017, the 12 To the extent Patent Owner continues to pursue the line of argument presented in the Preliminary Response that the claimed subchannel configuration must be specific to a single mobile station, and must be adaptable (see id. at 56–60; Prelim. Resp. 36–47), we do not need to address Patent Owner’s proposed interpretation for the reasons discussed above (see supra § II.C). allocation of a coherence cluster indicates a close grouping of subcarriers, whereas use of a diversity cluster indicates a disparate grouping of subcarriers—i.e., “coherence” and “diversity” are indicators of a particular configuration of an allocated subchannel. See Ex. 1009 ¶ 111. Limitation 1G, addressed below, defines a subchannel configuration as being “characterized by localized subcarriers or distributed subcarriers,” and Patent Owner does not dispute that localized subcarriers and distributed subcarriers correspond to coherence clusters or diversity clusters. See, e.g., PO Resp. 36 (“Li017’s ‘clusters’ are a collection of OFDM subcarriers, and are akin to the ’941 Patent’s subchannels.”). It thus follows that the term “subchannel configuration” includes an indication that the subchannel is comprised of either coherence or diversity clusters comprised of subcarriers, such as Li017’s notification to a subscriber of its allocated cluster. See Ex. 1009 ¶¶ 48, 111. Thus, we find that Petitioner has proven, by a preponderance of the” slip op. at 34
- BurdenNot reached
“802.16a-2001 and 802.16a-2003, with or without further combination with Heath. Pet. 29–75. Because Petitioner has shown that claims 1–14 are unpatentable based on the asserted grounds analyzed above, we do not reach these additional asserted grounds. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (“The Commission . . . is at perfect liberty to 14 We addressed claims 2 and 9 in a limitation-by-limitation analysis in our Institution Decision. See Inst. Dec. 62–63. reach a ‘no violation’ determination on a single dispositive issue.”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984, 990 (Fed. Cir. 2020) (recognizing that “[t]he Board has the discretion to decline to decide additional instituted grounds once the petitioner has prevailed on all its challenged claims”).” slip op. at 38
Patent outcomesUS 10,075,941 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,075,941
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.