- DBR Finance, Inc. v. Rugged Cross Hunting Blinds, LLCNo claims unpatentablePTAB · May 29, 2025 · IPR2024-00291 · APJ Cynthia L Murphy · IPR · Final written decision
The Board held claims 1–19 not unpatentable because Petitioner did not prove the proposed Whybrew–Strength combinations disclosed the claimed mesh panels with spaced holes.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We question, therefore, whether someone having an education in textile engineering or physics, but no experience in the field of hunting blinds, would be consistent with the level of skill portrayed by the ’535 Patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note that Petitioner’s expert’s experience, education, and qualifications are rooted in textiles, fibers and physics, and sophisticated subjects related thereto. See Ex. 1007 ¶¶ 14–20. But his deposition revealed that he has little or no experience in the field of hunting blinds. See Ex. 2038, 8–14.5 5 The same might be said of Patent Owner’s expert. See Ex. 2031, ¶¶ 6–7; Ex. 1023, 16. However, our obviousness analysis leaned lightly, if at all, on her declarations and testimony.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“1. Mesh Material In the Petition, Petitioner asks that “the term ‘mesh material’” be interpreted in accordance with “a plain and ordinary usage.” Pet. 25. Per Petitioner, the “plain and ordinary” meaning of the term “mesh material” is “a woven material of open texture with spaced holes therein.” Id. Per Petitioner, “[o]ther typical terms used to describe a mesh-like material” are “a screen material, or a netting material, which are believed to be synonyms.” Id. Patent Owner does not dispute that a mesh material would have an open texture with spaced holes therein. See PO Resp. 18. We find that Petitioner’s proposed construction aligns with the ’535 Patent’s specification. See Ex. 1001. The drawings in the ’535 Patent depict the mesh material 26 as having an array of uniformly spaced circular holes forming a net-like structure (see id., Fig. 1A, 1B, 4, 9) or an array of uniformly spaced rectangular openings (see id. Fig. 8) forming a screen-like structure. The embodiments of the mesh material 26 listed in the ’535 Patent (e.g., a mesh banner material, scrims, a network of fibers, etc.) are materials having net-like or screen-like structures. See id. at 6:47–7:28.6” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Our construction aligns with the claim language; Petitioner’s proposed construction does not. See Ex. 1001, 10:4–19. The independent challenged claims set forth “one or more panels of mesh material” and then set forth “said one or more panels comprising: a first side with a camouflage pattern; and a second side with a dark color coating.” Id. at 10:4–11. The recited “said one or more panels” corresponds to the previously recited “one or more panels of mesh material,” not panels comprising a material that was only a “mesh” prior to printing/coating. See id. Also, the independent challenged claims set forth that “the one or more panels of the mesh material define an outer surface of the camouflage structure.” See id. at 10:18–19, 1:23–24 (emphasis added). And the panel(s) defining a hunting blind’s outer surface would include the dark color coating. Our construction aligns with the ’535 Patent’s specification; Petitioner’s proposed construction does not. See Ex. 1001. The ’535 Patent repeatedly describes the relevant panel material in the hunting blind (i.e., post printing/coating) as a mesh material. See id., Abst., 1:19–5:34, 6:47–7:28, 9:16–54, Figs. 1A, 1B, 9. The ’535 Patent expressly describes and depicts the mesh material 26 as including the camouflage pattern and the dark-color coating. See id. at 1:52–56, 3:24–25, 3:31–33, Figs. 1A, 1B. The ’535 Patent says that “panels” of this coated mesh material 26 “are used to form” a hunting blind. Id. at 3:22–26. The ’535 Patent says that “[m]esh material is presented for a hunting blind with a camouflage pattern printed on a first side and a second side with a color coating.” Id. at Abst. The ’535 Patent says that “mesh material of interwoven fabric is provided for a hunting blind including a camouflage pattern printed on a first side and a second side with a dark color coating.” Id. at 1:19–22; see also id. at 1:44–49. Our construction aligns with the ’535 Patent’s prosecution history; Petitioner’s proposed construction does not. See Ex. 1006. As mentioned above, throughout prosecution of the ’535 Patent, the same prior art material was mapped to the claimed panel(s) of mesh material. See Ex. 1006, 64–72, 122–106. The mapped-to prior art mesh material was described during prosecution as an “interwoven fabric” with “a pattern” printed on a first side and “a dark color coating” on a second side. Ex. 1006, 64; see also id. at 122. And the mapped-to prior art mesh material (i.e., which included not only the interwoven fabric but also the printed pattern and the dark color coating) had a “net-like structure” with an array of uniformly spaced “net holes” that are “not closed.” Ex. 2021, 4:1–5, see also id. at 2:58–3:6, 4:34–45, Figs. 1, 2a. Thus, we understand that claimed panel(s) of mesh material must have” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“However, Patent Owner does not bear the burden of proving Strength’s camouflage material 10 does not have holes. Rather, Petitioner bears the burden of proving that Strength’s camouflage material 10 does have holes. And Petitioner’s arguments that undermine Patent Owner’s position that Strength’s camouflage material 10 does not have holes, concurrently undermine Petitioner’s position that Strength’s camouflage material 10 does have holes. Per Petitioner, “Strength is silent on whether visible holes exist in the fabric” (Pet. Reply 8) and “the Strength reference doesn’t discuss anything about holes” (Tr. 14). Petitioner’s expert testified that it was his “understanding that Strength is silent” on “whether or not there are holes.” Ex. 2038, 44. Petitioner contends that Strength’s silence about the presence/ absence of holes hinders Patent Owner from proving that Strength’s camouflage material 10 does not have holes. See Pet. Reply 8. We agree. But this same silence likewise hinders Petitioner from proving that Strength’s camouflage material 10 does have holes.” slip op. at 35
Patent outcomesUS 11,399,535 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,399,535 - PTAB · Sep 4, 2024 · IPR2023-00693 · APJ Cynthia L Murphy · IPR · Final written decision
The Board canceled challenged claims 1–5, 9–10, 12–17, and 23–25, and denied substitute claims 26–41 for lack of written-description support for the amendments.
RulingsFinal written decision- 112 supportMotion to amend, deniedDenied
“A. Written Description The test for sufficiency of a written description is whether the disclosure “clearly allow[s] persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991)). The disclosure must “reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351.” slip op. at 13
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“The RMTA is non-contingent, and, therefore, Patent Owner is making two requests: 1) cancel the claims challenged in the Petition; and 2) add the substitute claims proposed in the motion. We grant in-part the RMTA by canceling the claims challenged in the Petition. We deny in-part the RMTA by not adding the proposed substitute claims.” slip op. at 2
Nonecites PhillipsPatents in suitUS 9,064,376 - Toast, Inc. v. Gratuity, LLCInstitutedPTAB · Mar 27, 2024 · IPR2023-01408 · APJ Cynthia L Murphy · IPR · Institution
Instituted IPR of claims 1–13 on all asserted grounds; the Board found a reasonable likelihood that claim 1 is unpatentable over Marshall.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. In particular, we determine that factors 2– 4 weigh against denial of institution and factor 5, which is the lone factor favoring denial of institution, does not outweigh factors 2–4. Factor 1 is neutral. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Marshall (alone and with Phillips and Webb) when addressing the claims added during prosecution that ultimately issued as the Challenged Claims.” Pet. 68. As pointed out by Petitioner, “Marshall was never considered by the Examiner” against the claims that ultimately issued as claims 1–13 of the ‘050 Patent. Pet. 67, see also Ex. 1008, 263–289, 323–353. As also pointed out by Petitioner, “even when the Examiner considered Marshall” against claims that were subsequently cancelled, “he considered Marshall only as a secondary reference.” Pet. 67, see also Ex. 1008, 203–236, 263–289, 323–353. Patent Owner argues that Petitioner “fails to provide an adequate explanation as to how the examiner erred.” Prelim. Resp. 22. Patent Owner contends that Petitioner’s explanation “makes no sense,” and is “both conclusory and uncompelling.” Id. We disagree with Patent Owner’s characterization of the Petitioner’s position, especially because it is supported by prosecution history of the ’050 Patent. (See Ex. 1008, 203–236, 263–289, 323–353.) Patent Owner also argues that the prosecution history of the ‘050 Patent “establishes that the Examiner reviewed Marshall thoroughly and applied it against the claims, some of which he rejected and other he later allowed.” Id. at 21. To support this argument, Patent Owner points to findings made by the Examiner during prosecution of the ‘050 Patent. See id. at 20. These findings, however, related to the Examiner’s rejections against claims that were subsequently cancelled. See Ex. 1008, 203–224. And these findings were made in conjunction with Marshall being applied as a secondary reference to reject those claims. See id. The Examiner rejected those claims over a combination of three prior art references (Kessler, Delany, and Tidwell), and added Marshall, in lieu of using official notice, to show that it was known in the art to configure a processor to execute computer executable instruction stored in a memory. See id. at 211–214. Thus, these findings do not contradict Petitioner’s position that overlooking Marshall as primary obviousness reference in connection with the Challenged Claims was a material error. The prosecution history does not sufficiently show that the Examiner considered Marshall, Philips, Web, or the combinations of these references asserted in the Petition, with respect to the claims that issued as the ’050 Patent. In particular, the Examiner asserted as Reasons for Allowance that the prior art did not teach” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Patent Owner argues that “Marshall fails to disclose a cloud-based computing system remote from a plurality of client business systems” as recited in independent claim 1. Prelim. Resp. 22. Per Patent Owner, the cited-by-Petitioner paragraphs in Marshall (Ex. 1004) say “nothing about ‘cloud computing,’ only data transmission.” Id. at 22–23. And, per Patent Owner, the cited-by-Petitioner paragraphs from a declaration (Ex. 1002), do not provide “any additional evidence” beyond Marshall’s cited paragraphs. Id. at 22. We disagree with Patent Owner’s characterization of the evidence presented by Petitioner. The cited paragraphs of Marshall talk not only about data transmission, but also data transmission to remote locations via the Internet. See Ex. 1004, ¶¶ 25, 110. Also, one of these paragraphs talks about data transmission to a remote location being performed “via uploading and downloading via HyperText Transfer Protocol (‘HTTP’), Extensible Markup Language (‘XML’), and/or HTML as is known in the art.” Id. ¶ 110. The 9 The ’050 Patent says that “[i]n some embodiments, [a] point of sale system 110 and/or [an] employee records system 112 may be implemented in cloud computing systems reducing the burden on businesses to host these systems using local computing resources.” Ex. 2002, 4:65–5:2. If so, “[t]he gratuity management system 100 may be similarly implemented in a cloud computing system that interfaced with cloud-based point of sale and/or employee record systems.” Id. at 5:2–5. The gratuity management system “is contemplated to operate in conjunction with both local and cloud-based point to sale and/or employee record systems.” Id. at 4:8–11. cited paragraphs from the declaration provide additional evidence that these “communication protocols describe by Marshall (HTTP, XML, HTML) support a cloud-based infrastructure” and that “cloud computing solutions were well known and commonly used in the art by 2012.” Ex. 1002, ¶ 148. Thus, collectively, Petitioner’s evidence adequately establishes for the purposes of institution that Marshall indicates to POSITA that Marshall’s gratuity management system would be a cloud computing system remote from the plurality of client business systems.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,741,050 - PTAB · Sep 26, 2023 · IPR2023-00642 · APJ Benjamin D M Wood · IPR · Institution
The Board instituted review of claims 1–4, 14, 15, 19–22, 24, and 25 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Beach-127 and Wiese.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine that, on the current record, Petitioner is reasonably likely to show that the combination of Beach-127 and Wiese teaches the window limitation. First, we agree with Petitioner that “Wiese teaches ‘a window that extends into optical communication with the sealed interior cavity.” Pet. 39. Wiese teaches “a window at the housing” of tool 1, the window transmissive to the signal—which may be optical—of a transceiver within the sealed interior of the tool. Ex. 1004 ¶ 5, 14, 15. Second, Petitioner, through its Declarant, adequately explains how one of ordinary skill in the art would have incorporated Wiese’s teachings with Beach-127, i.e., Dr. Rodger’s two example configurations. Ex. 1022 ¶¶ 132–136. The second example, in particular, reflects Wiese’s teachings, as the window is sealed and the antenna/transceiver combination is within the sealed interior of the tool. Thus, Petitioner has reasonably shown, at this stage of the proceeding, that one of ordinary skill in the art would have had a reasonable expectation of success in combining Beach-127 and Wiese. Third, Petitioner has articulated a reason why one of ordinary skill in the art would have combined Beach-127 and Wiese, and supported the articulated reason with rational underpinning. That is, according to Petitioner, one of ordinary skill in the art would have modified Beach-127’s Figure 2 embodiment with a window that extends into optical communication with the sealed interior cavity, in accordance with Wiese’s teachings, because that configuration allows downloading information without having to open the downhole assembly at surface locations, which otherwise would take time and subject the downhole assembly to damage or contamination. Pet. 38–39 (citing Wiese ¶¶ 3, 10). Petitioner further contends that using Wiese’s optical communication link to communicate between Beach-127’s transceiver and remote unit would have constituted the application of known techniques to a known device ready for improvement to obtain predictable results. Id. at 41–42.” slip op. at 29
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Although Beach-127 has previously been before the Office, the same cannot be said for Wiese. It does not appear that Wiese was identified in an IDS or considered by the Examiner during the examination of the grandparent application, the parent application, or the application that issued as the ’013 patent. Further, Wiese differs from Beach-127: whereas Beach- 127 does not expressly disclose or depict a window as part of its device, or disclose optical communication with the interior of the device, Weise does both. As noted above, Wiese describes a MWD/LWD bottom hole assembly that includes “a window at the housing, the window being transmissive to the signal of at least one transceiver of a tool having a memory in operable communication with the transceiver, such that the signal is receivable outside of the housing through the window.” Ex. 1004 ¶ 5. The signal may be optical, e.g., IR, in which case the window is “optically transmissive.” Id. ¶ 14, claim 8. This difference between Wiese and Beach-127—teaching an optically transmissive window—is material, because it addresses the sole limitation in dispute at this stage of the proceeding. Thus, although Beach-127 was considered by the Examiner, the combination of Beach-127 and Wiese was not. Moreover, for the grounds that rely on the combination of Beach-127 and Wiese, the Petition relies on Beach-127 essentially to teach the same limitations that the Examiner previously found Beach-127 to teach or suggest. See, e.g., Ex. 1011, 54–56; Pet. 22–48.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had “a bachelor’s degree in petroleum, mining, mechanical, or electrical engineering (or a closely related field), and at least two years’ experience in designing and developing electromechanical downhole tools, including working with sensors and electronics.” Pet. 10–11.7 Patent Owner does not address the level of ordinary skill in its Preliminary Response, and therefore does not oppose Petitioner’s contention. At this stage of the proceeding, we adopt Petitioner’s unopposed definition for purposes of this Decision. We also presume that the cited prior art references reflect the level of ordinary skill at the time of the invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Petitioner proposes constructions for “window” and “selectively sealed.” Pet. 11–13. Patent Owner responds that “[n]o claim construction is necessary to deny institution,” and its “arguments for denial do not hinge on the outcome of an actual controversy about construction of a claim term.” Prelim. Resp. 28. No claim term requires an express construction for us to determine whether to institute an inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 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))). Accordingly, we proceed with the understanding that each term should be accorded its plain and ordinary meaning.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,830,013 - PTAB · Jul 18, 2023 · IPR2023-00350 · APJ Cynthia L Murphy · IPR · Institution
Review instituted for claims 1–8 on all asserted grounds, based on a reasonable likelihood of success on the Publicover anticipation challenge and the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In Part Two of the Advanced Bionic framework, we determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact the patentability of the challenged claims.” Id. at 8 n.9. Here, the prosecution history of the ’687 Patent reflects that the Office materially erred by overlooking Publicover’s non-illustrated embodiments. As discussed above in Section V, the prosecution history reflects that the different treatment of Application Claim 1 (i.e., rejected as anticipated by Publicover) and Application Claim 11 (i.e., not anticipated by Publicover) seemed to rest on Application Claim 11 requiring the support members to be connected to the barrier net only at or near an upper peripheral part of the barrier (i.e., a top-only connection (c)), while Application Claim 1 did not. As discussed above in Section VI, a claim that did not required a top-only connection (c) could be anticipated by Publicover’s non-illustrated embodiment. And Petitioner demonstrates that when Publicover’s non-illustrated embodiment is taken into consideration, there is a reasonable likelihood that Issued Claim 1 is anticipated by Publicover. Infra § VIII. Thus, we decline to exercise our discretion to deny the Petition under § 325(d).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude that Petitioner demonstrates a reasonable likelihood that it will prevail on its challenge to Issued Claim 1 as anticipated by Publicover. We have reviewed Petitioner’s cited evidence and explanation regarding why Publicover anticipates claims 2–8 and find them sufficient at this stage. At this stage, Patent Owner raises no other arguments regarding these claims other than those considered above with respect to claim 1. On this record, we determine that Petitioner has shown a reasonable likelihood of success that Publicover anticipates claims 2–8.” slip op. at 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “However, a reference can anticipate a claim even if it ‘d[oes] not expressly spell out’ all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). “[A] reference may still anticipate if that reference teaches that the disclosed components or functionalities may be combined and one of skill in the art would be able to implement the combination.” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016). slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“With respect to Ground 2—Obviousness of claims 3 and 4 over Publicover and Coan, Petitioner relies on Coan “[i]f Publicover is determined not to teach ‘so that in their natural rest state the enclosure support members extend away from the mat.” Pet. 40. Patent Owner contends that Coan does not teach this limitation, and because the rigid nature of Coan’s enclosure, Coan teaches away from the combination with Publicover. Prelim. Resp. 50–53. Patent Owner further argues that Petitioner only offers a conclusory motivation to combine the references. Given our conclusion above, we do not resolve this argument, which may have some merit. The parties should address these arguments further during trial.” slip op. at 22
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,854,687 - PTAB · Mar 6, 2023 · IPR2022-01475 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR of claims 1–4, 8–11, and 14–16 on all asserted grounds, finding a reasonable likelihood that the Lennox, Harris, and Nailor combination renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen 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.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying the above standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’305 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–4, 8–11, and 14–16) of the ’305 patent, based on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)] stipulation, which is dispositive on the question of discretionary denial.” Pet. 64. In particular, Petitioner stipulates that, if IPR is instituted on the grounds set forth in this Petition, it will not pursue in the Parallel Proceeding the specific grounds asserted in the Petition against the challenged claims, or any other ground that could have been reasonably raised in the Petition against the challenged claims. Id. at 65 (citing Sotera, Paper 12 at 13–14). We will not discretionarily deny institution in view of parallel district court litigation when a petitioner stipulates not to pursue in that parallel litigation the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. See Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, 3, 7–8.3 Because Petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, or at least 3 years of experience designing, manufacturing, installing, and/or finishing drywall using accessories such as grilles or grates.” Pet. 12 (citing Ex. 1003 (Kaczkowski Decl.) ¶ 65). For purposes of the Preliminary Response, Patent Owner does not dispute Petitioner’s proposal. Prelim. Resp. 4–5. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’305 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). C. Claim Construction” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because we find that Petitioner has shown a reasonable likelihood of prevailing on the second challenge—the combination of Lenox, Harris and Nailor— under either party’s construction of the preamble, we find that no construction of the preamble is necessary at this time. 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))). 2. “Flexible” Both parties seek construction of the term “flexible.” See Pet. 19; Prelim. Resp. 10–11. Here, we find that none of the patentability challenges raised in the Petition turn on the meaning of the term “flexible.” Accordingly, we determine that no construction of the term is necessary. See Nidec, 868 F.3d at 1017.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,871,305
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.