- PTAB · Feb 20, 2025 · IPR2024-00996 · APJ Ken B Barrett · IPR · Institution
The Board instituted review of claims 13–18 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes 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 erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that: [A] person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had a bachelor’s degree or higher in electrical engineering, at least 3 years of experience designing or researching electronic circuits, and familiarity with power electronics and inductive power transfer circuits. Pet. 8 (citing Ex. 1003 ¶ 20). Patent Owner states that, “[f]or purposes of this preliminary response, Patent Owner adopts the Petitioner’s proposal.” Prelim. Resp. 17. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[a]ll claim terms should be construed according to the Phillips standard,” and “[h]ere, given the remarkable overlap between the preferred embodiment of the ’461 patent and the prior art/predictable combinations articulated in Grounds 1A–3, Petitioners submit that no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 8. Patent Owner states that, “[t]o simplify the issues before the Board, Patent Owner has not asserted any claim constructions in this preliminary response and adopts the Petitioner’s position that ‘[a]ll claim terms should be construed according to the Phillips standard.’” Prelim. Resp. 17 (quoting Pet. 8). On this record and for purposes of this decision, we determine that no” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments. Patent Owner does not cite to evidence, such as expert testimony, to support its implied argument that Olson’s measured current is “fundamentally different” from the current received by the primary coil. See Prelim. Resp. 31–32. Petitioner’s declarant, Dr. Woods, on the other hand, testifies, inter alia, that “[t]he ‘[c]urrent measured by current measure block 226 is used in the calculation of power, which as depicted in FIG. 14, measures the ‘power in’ provided to transmit block 214/primary coil 54.” Ex. 1003 ¶ 37 (citing Ex. 1004 ¶¶ 74–75, Fig. 14) (first alteration added); see also, e.g., id. ¶ 42 (Dr. Woods testifying that the measured current to the power supply “is the current driving the external antenna 52, via the transmit block 214 and to the primary coil 54.” (citing Ex. 1004 ¶¶ 74–75, 112, Fig. 14)). Paragraph 75 of Olson, cited in support of that testimony, provides: “The power in is gauged by the power generated by charging unit 50 and is determined by multiplying the voltage of the internal voltage of charging unit 50, e.g., the voltage of a battery or batteries internal to charging unit 50, by the current driving external antenna 52.” Ex. 1004 ¶ 75 (emphasis added). We note that external antenna 52 includes primary coil 54. See, e.g., Fig. 14. Dr. Woods’ testimony is, at this stage, unrebutted. Patent Owner also argues that “Petitioner fails to provide any evidence regarding the function of Olson’s microprocessor 212 in relation to measuring input power,” and that, “[w]hile Olson describes a power calculation in paragraph [0075], Olson does not describe this power calculation as performed by microprocessor 212.” Prelim. Resp. 32 (citing Pet. 16; Ex. 1004 ¶ 72) (first alteration added). At this preliminary stage of the proceeding, we do not agree with Patent Owner’s arguments regarding the microprocessor. Although Patent Owner does not bear the burden to show patentability, we observe that Patent Owner does not suggest that there is another component in Olson’s external charging device that might perform the admittedly-disclosed power calculation. See Prelim. Resp. 32–33. Dr. Woods testifies that microprocessor 212 receives the measured current and the input voltage of the charging device, and, from those values, calculates power in. See Ex. 1003 ¶¶ 43–44 (citing, inter alia, Ex. 1004 ¶¶ 71–78, Fig. 14); see also Ex. 1004 ¶ 74, Fig. 14 (Olson stating that “[c]urrent measured by current measure block 226 is used in the calculation of power in along with the voltage of batteries 160,” and Figure 14 depicting the signal from measure block 226 as an input to microprocessor 212). Dr. Woods’ testimony is, at this stage, unrebutted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,626,461 - PTAB · Feb 20, 2025 · IPR2024-00995 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–6, 8, and 10–13 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“inter partes 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 erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. The art or arguments presented in the Petition are not “substantially the same” as those previously presented to the Office when there are differences between them that are material to the Office’s prior consideration of the art and arguments. Wolfspeed, Inc. v. Trs. of Purdue Univ., IPR2022-00761, Paper 13 at 7–8 (Vidal Mar. 30, 2023).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’204 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’204 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey–Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“different from the resonant frequency of the inductive couple.” Ex. 1001, 21:16–20. The Specification then states the following: “Preferably the transmission frequency is selected to lie within one of the near-linear regions 6, 8 [of Figure 6b] where the slope of the frequency-amplitude graph is less steep.” Id. at 21:20–23; see also id. at 21:56–59 (“Referring back to FIG. 6b, the frequency of transmission is selected to be in the approximately linear region 8 of the curve between a lower frequency value of fL and an upper frequency value of fU.”9); Pet. 8 (citing the same).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,083,204 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 18 is unpatentable as anticipated by Shkedi and Zhu; claims 1, 15, 41, and 52 were statutorily disclaimed, and the alternative obviousness grounds were not reached.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 26, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 15, 41, and 52. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 18. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 33, “Reply”), and Patent Owner filed a Sur-reply (Paper 37, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Upon consideration of the parties’ arguments and for the reasons explained below, we agree with Petitioner that Patent Owner’s additional requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision for the following reasons. First, the construction of “grid point” we adopt here is supported by the Specification of the ’358 patent. Namely, the ’358 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:57–67. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’358 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Furthermore,” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone only need be in the area or vicinity of the original user selected location. Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 8,400,358 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,400,358 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Final written decision
Claim 2 is unpatentable as anticipated by Shkedi; the Board did not reach the alternative obviousness ground based on Shkedi and Spain.
RulingsFinal written decision- Adverse judgmentAdverse judgmentOther
“After institution, Patent Owner filed a Patent Owner Response (Paper 27, “PO Resp.”). Patent Owner also filed a statutory disclaimer of claims 1, 3, and 11. PO Resp. 1; Ex. 2024. Accordingly, the only claim remaining for our consideration at trial is claim 2. See 35 U.S.C. § 253 (disclaimer of claims considered effective as if part of original patent); 37 C.F.R. § 42.107 (Board will not institute trial on disclaimed claims). Petitioner filed a Reply (Paper 34, “Reply”), and Patent Owner filed a Sur-reply (Paper 39, “Sur-reply”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art for purposes of this proceeding. PO Resp. 11–12 (citing Ex. 2020 ¶¶ 47–48). For purposes of this Final Written Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“contention that, because the district court referred to the data points within an area being statistically similar as the defining characteristic of a NUG region, the claimed grid points cannot exist until after the calibration data is gathered and analyzed. See PO Resp. 18–19. This contention, even if correct, is not persuasive because it is generally improper to read limitations from specific embodiments into the claims. See Cadence Pharms. Inc. v. Exela PharmSci Inc., 780 F.3d 1364, 1369 (Fed. Cir. 2015) (“[E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent’s written description limitations that are not found in the claims themselves.” (internal quotations omitted)); see also SuperGuide Corp. v. DirecTV Enters., 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.”). Patent Owner’s assertion that the ’379 provisional application and the ’784 patent both describe evaluating the statistical similarities of calibration data (PO Resp. 10, 20) also fails to provide a sufficient reason to import a requirement to evaluate the calibration data into the construction of “grid point” or “non-uniform grid point.” Similarly, Patent Owner’s assertion that is “of great importance” because it is fundamental to generating the grid points is unpersuasive. See PO Resp. 27. Even describing evaluation as being “of great importance” is an insufficient basis for importing a requirement for evaluation. See Texas Instruments, Inc. v. U.S. Int’l Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986) (“[The Federal Circuit] has cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.”).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We agree with Petitioner. The pertinent disclosure from Shkedi reads: Simply stated, if a mobile telephone (at a user selected location) measures a plurality of service antenna signals and stores these with their respective service antenna identifications, then that mobile telephone (or an equivalent unit) upon observing an identical list of service antennas with substantially identical respective signal strengths—can reasonably conclude that it is within a predetermined proximity of the original user selected location. Ex. 1006, 8:41–48. Here, we find that the language “within a predetermined proximity of the original user selected location” refers to an area around the original user selected location. In other words, “within a predetermined proximity of the original user selected location” discloses that, instead of being exactly at the original user selected location, the mobile telephone Indeed, in acknowledging “that Shkedi assumes the user is within some ‘predetermined’ distance of [the original user selected] location” (PO Resp. 33), Patent Owner effectively confirms this interpretation of Shkedi’s disclosure. That is, being within some predetermined distance of the original user selected location is equivalent to being within a circle centered on the original user selected location and having a radius equal to the predetermined distance. That Shkedi allegedly only “assumes” that the user is within the predetermined distance of the original user selected location does not detract from the fact that Shkedi’s disclosure of “within a predetermined proximity of the original user selected location” describes an area around the original user selected location.” slip op. at 34
Patent outcomesUS 7,561,104 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,561,104 - Nike, Inc. v. Sherrywear LLCInstitutedPTAB · Feb 11, 2025 · IPR2024-01127 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 1–8, 12, 13, and 15–18 based on the asserted §103 grounds, finding a reasonable likelihood of prevailing.
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 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.” After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, 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 ’551 patent. Accordingly, we institute an inter partes review of claims 1–8, 12, 13, and 15–18 of the ’551 patent on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“cumulative of Boatright. During prosecution of the ’878 patent (which is a parent of the ’551 patent at issue in this proceeding), Boatright was distinguished because it did not have an upper edge of the cup that lies “along a same edge line as at least a portion of a top edge of the chest strap,” as required by claim 1. Prelim. Resp. 15 (citing Ex. 2066, 105). Vidal shows “an upper edge of the side patch lying along a same edge line as at least portion of the top edge of the chest strap” (as required by claim 1) in that Vidal’s Figure shows such alignment. Moreover, Vidal states that the shape of its pocket (i.e. side patch) “can be adapted to the shape of the side strap.” Ex. 1027, 3:19–20. Given these disclosures, Vidal is not cumulative of Boatright. As to Sherwood and Gentry, Patent Owner’s arguments that these references relate to bras with pockets such that Vidal is cumulative to them are unconvincing as Vidal is relied upon to teach more than a bra with pockets. For these reasons, part one of the Advance Bionics framework is not satisfied for Vidal. Both parties agree that Handras was presented to the Office in an Information Disclosure Statement. Pet. Reply 1; Prelim. Resp. 15. Accordingly, the first part of the framework is satisfied for Handras.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of skill in the art “would have had at least two years of experience working in the design and or/construction of women’s exercise apparel, intimate apparel, and/or sports bras and bras, specifically.” Pet. 17–18 (citing Ex. 1001 ¶ 155). Petitioner asserts further that “[f]ormal education in a relevant field, such as fashion and textile design, may compensate for less experience.” Id. Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’551 patent and the asserted prior art. 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 neededNot reached
“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) (as amended Oct. 11, 2018). Our rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention. See Phillips, 415 F.3d at 1312–13. In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Id. at 1315–17. The parties do not present any claim constructions, and we determine that no formal claim construction is necessary for this decision. 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.’”)” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,219,551 - Nike, Inc. v. Sherrywear LLCInstitutedPTAB · Feb 11, 2025 · IPR2024-01125 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–10 and 18 on all asserted grounds, finding a reasonable likelihood of success on the York–Pintor and Handras–Pintor obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of all challenged claims based on all the grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“substantially the same as Pintor, for purposes of this Decision, we need not address this issue.10 As discussed below, even if the asserted references are substantially the same, we are persuaded that Petitioner has demonstrated, under the second prong of the Advanced Bionics framework, that the Office erred in a manner material to the patentability. To determine whether Petitioner has sufficiently shown material error, we look at, for example, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Advanced Bionics, 9. As explained above, during prosecution of the ’288 patent, the examiner rejected the then-pending claims over Newman in view of Pintor. Ex. 1004, 151–52. Petitioner argues, however, that the examiner considered Pintor “only as a secondary reference to Newman.” Pet. 96. According to Petitioner, the examiner “overlooked how a POSA would have understood Pintor’s disclosures and what a POSA would have been motivated to do with them, especially in light of references like Barg, York, and Handras.” Id. at 10. On this record, we find Petitioner’s argument persuasive. Patent Owner does not dispute that Pintor discloses “a bra with left and right cups, shoulder straps, and a chest strap,” and “additionally discloses the bra cups 10 Patent Owner further asserts that the examiner “considered several other patents and patent applications relating generally to bras with pockets, both as provided in an IDS and as a result of the Examiner’s own searching, including U.S. 7,585,200 to McLaren, and U.S. 5,496,205 to Lee.” Prelim. Resp. 17. Patent Owner does not explain the relevance of McLaren and Lee. See generally Prelim. Resp. Such a bare bone assertion is insufficient to show those other patents and patent applications are cumulative to the prior art asserted in the Petition. comprised of polyurethane and the pockets made of elastic material.” Prelim. Resp. 18. The examiner, however, relied on Pintor for teaching a single limitation, that is, Pintor’s pocket “holds the claimed items therein.” Ex. 1004, 152. Patent Owner is correct that, when rejecting the pending claims over Sherwood, the examiner did not have to repeat Pintor’s teachings of the limitations taught in Sherwood. The examiner, however, failed to consider Pintor’s teaching in its entirety after the applicant distinguished the pending claim over Sherwood. Ex. 1006, 92 (the applicant arguing “Sherwood teaches a front padding that is stitched in place” in contrast to the pending claims’ requirement that “the opening is capable of repeated receiving and removal of items when the bra is being worn by the user”). That, in our opinion, is material error.” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“b. Evidence Related to Nike Products Patent Owner argues that there is “a high degree of correspondence between features of [Nike’s] Swoosh on the Run and the claims of the ‘036 patent.” Prelim. Resp. 29 (citing Ex. 2053). The evidence, however, do not support a conclusion that Nike’s Swoosh on the Run is coextensive with the ’036 patent’s claimed invention. Indeed, Patent Owner submits claim charts allegedly showing that Nike’s Swoosh on the Run infringes not only the ’036 patent (Ex. 2053), but also four other patents in the family (Exs. 2054–2057). Those other claim charts demonstrate that Swoosh on the Run includes many features not claimed in the ’036 patent. See e.g., Ex. 2055 (showing Swoosh on the Run has a back pocket). Thus, on this record, Patent Owner has not persuasively shown a rebuttable presumption of nexus between Nike’s Swoosh on the Run and the challenged claims. Patent Owner asserts that “there is significant evidence that NIKE copied the patented application in the ‘036 patent.” Prelim. Resp. 28–29. According to Patent Owner, “NIKE received copies of patents and sample products from [the named inventor of the ’036 patent] Ms. Goff prior to filing its patents or marketing any of the allegedly infringing products.” Id. at 29. Patent Owner alleges that “each of the Swoosh Pocket Bra, the Swoosh Bra, and the Swoosh on the Run has several points of similarity both to the product depicted and described in Ms. Goff’s patents as supplied to NIKE and to the product samples Ms. Goff sent to NIKE.” Id. Ms. Goff testifies that she corresponded with Nike about her Pocket Bar and submitted examples of her products. See Exs. 2001, 2035. Patent Owner’s evidence, however, does not sufficiently demonstrate that a specific product was replicated. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (“[C]opying requires the replication of a specific product.”). In addition, neither Ms. Goff’s testimony nor the Nike Idea Submission is specific to the ’036 patent’s claimed invention. See generally Exs. 2001, 2035. For example, none of the pictures in the Nike Idea Submission sufficiently shows certain feature of the ’036 patent’s claimed invention, which includes “the upper edge of the patch being offset from an upper edge of the cup.” See, e.g., Ex. 2035, 2–4. On this record, Patent Owner has not presented sufficient evidence of copying.” slip op. at 20
- Obviousness (§103) › Objective indicia / secondary considerations › CopyingDecided for petitioner
“Patent Owner asserts that “there is significant evidence that NIKE copied the patented application in the ‘036 patent.” Prelim. Resp. 28–29. According to Patent Owner, “NIKE received copies of patents and sample products from [the named inventor of the ’036 patent] Ms. Goff prior to filing its patents or marketing any of the allegedly infringing products.” Id. at 29. Patent Owner alleges that “each of the Swoosh Pocket Bra, the Swoosh Bra, and the Swoosh on the Run has several points of similarity both to the product depicted and described in Ms. Goff’s patents as supplied to NIKE and to the product samples Ms. Goff sent to NIKE.” Id. Ms. Goff testifies that she corresponded with Nike about her Pocket Bar and submitted examples of her products. See Exs. 2001, 2035. Patent Owner’s evidence, however, does not sufficiently demonstrate that a specific product was replicated. See Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) (“[C]opying requires the replication of a specific product.”). In addition, neither Ms. Goff’s testimony nor the Nike Idea Submission is specific to the ’036 patent’s claimed invention. See generally Exs. 2001, 2035. For example, none of the pictures in the Nike Idea Submission sufficiently shows certain feature of the ’036 patent’s claimed invention, which includes “the upper edge of the patch being offset from an upper edge of the cup.” See, e.g., Ex. 2035, 2–4. On this record, Patent Owner has not presented sufficient evidence of copying.” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,808,036 - Nike, Inc. v. Sherrywear LLCInstitutedPTAB · Feb 11, 2025 · IPR2024-01123 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–4, 11, and 12 on all asserted grounds, finding a reasonable likelihood of prevailing on the obviousness challenge based on Barg and Pintor.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of all challenged claims based on all the grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“if the asserted references are substantially the same, we are persuaded Petitioner has demonstrated, under the second part of the Advanced Bionics framework, that the Office erred in a manner material to the patentability. To determine whether Petitioner has sufficiently shown material error, we look at, for example, “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Advanced Bionics, 9. As explained above, during prosecution of the ’288 patent, the examiner rejected the then-pending claims over Newman in view of Pintor. Ex. 1004, 151–52. Petitioner argues, however, that the examiner considered Pintor “only as a secondary reference to Newman.” Pet. 98. According to Petitioner, the examiner “overlooked how a POSA would have understood Pintor’s disclosures and what a POSA would have been motivated to do with them, especially in light of references like Barg, York, and Handras.” Id. at 9.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“Importantly, Petitioner does not solely rely on the design-choice argument. Instead, Petitioner refers to Pintor for “expressly disclos[ing] a patch on the breast cups with a ‘substantially straight’ opening.” Id. (citing Ex. 1022, 6:6–10, Figs. 1, 2, 4, 7). Indeed, Pintor teaches that “[t]he shape of the [pocket opening] 32 is typically determined by the shape of the side 34D, which may be concave, as shown in FIG. 2, or may be substantially straight, convex, or have any combination of curved or linear components defining an aesthetically pleasing design.” Ex. 1022, 6:6–10. Petitioner argues that an ordinarily skilled artisan “would have been motivated to make the top edge of the patch linear for secure holding of a rectangular item, such as an electronic device or rectangular key, ensuring the item is held snugly within.” Pet. 31 (citing Ex. 1001 ¶ 180). Petitioner further asserts that a linear upper edge would “help ensure the pocket’s visibility is obscured by the cup.” Id. (citing Ex. 1001 ¶ 180). In sum, Petitioner relies on specific teaching in Pintor and unrebutted testimony of Ms. Baran to support its argument that an ordinarily skilled artisan would have had a reason to modify Barg’s patch with a curved upper edge to a linear upper edge. On this record and for purposes of this Decision, we find Petitioner does not resort to impermissible hindsight.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayDecided for petitioner
“Second, a reference teaches away “when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The mere disclosure of alternative designs, however, does not teach away, and “just because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). Here, as Patent Owner recognizes (Prelim. Resp. 23), Pintor merely states that “the position, size, angle and configuration of previously proposed pockets may not be optimally designed.” Ex. 1022, 1:45–47 (emphasis added). In other words, although Pintor points out certain shortcomings of prior-art pocket bras, it does not “criticize, discredit, or otherwise discourage the solution claimed.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). On this record and for purposes of this Decision, Patent Owner has not shown sufficiently that the references cited here discourage an ordinarily skilled artisan from modifying Barg’s patch having a curved upper edge with Pintor’s patch having a linear upper edge.” slip op. at 18
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,295,288 - Nike, Inc. v. Sherrywear LLCInstitutedPTAB · Feb 11, 2025 · IPR2024-01128 · APJ Lynne H Browne · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7, and 10, finding a reasonable likelihood that Nike would show them obvious over Spagna, Rose, or Glass.
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 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.” After 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 ’800 patent. Accordingly, we institute an inter partes review of claims 1–3, 5, 7, and 10 of the ’800 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of skill in the art “would have had at least two years of experience working in the design and or/construction of women’s exercise apparel, intimate apparel, and/or sports bras and bras, specifically.” Pet. 17–18 (citing Ex. 1001 ¶ 155). Petitioner asserts further that “[f]ormal education in a relevant field, such as fashion and textile design, may compensate for less experience.” Id. Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’800 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We agree with Petitioner that the record demonstrates that Spagna suggests limitation [1G]. First, Spagna explicitly suggests the use of synthetic materials for the construction of the bra. Ex. 1028 ¶ 17. We agree with Petitioner that a person of skill in the art, and for that matter anyone who has worn a bra, would have found it obvious make Spagna’s bra from a stretchable synthetic fabric. Indeed, we posit that it would have been hard in 2007 to find a bra that was not made of a stretchable synthetic fabric. Second, Spagna gives no indication that it contemplates making its pouch (i.e., the claimed pocket) from a different material than the bra. Rather, in describing a similar pocket in the front of the brassiere (Ex. 1028 ¶ 18), Spagna states that “the brassiere 20 and pouch may be manufactured during a single manufacturing process” which at least suggests making the bra and pouch from the same material. Further, Patent Owner’s arguments requiring an explicit motivation are unconvincing. Rather, all that is required is “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” 6 In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). For purposes of institution, Petitioner’s reasoning is sufficient.” slip op. at 13
- Obviousness (§103) › KSR rationalesInstituted
“We agree with Petitioner that the record demonstrates that Glass suggests limitation [1G]. Although, Glass, being a design patent, does not address the material from which its sports bra is fabricated, Petitioner has sufficiently demonstrated that the use of a stretchable fabric was well known at the time of the invention. Moreover, we agree that the choice of fabric for the pocket is a design choice and note that it is one of only two finite number of choices (stretchable or non-stretchable) and When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. KSR Int’l Co. V. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 21
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,244,800 - Nike, Inc. v. Sherrywear LLCInstitutedPTAB · Feb 10, 2025 · IPR2024-01124 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–4, 11, 14, 15, and 17 under both asserted § 103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Even if we were to determine that the Petition’s combinations of Vidal and Spanga and Handras and Spanga were previously presented to the Office and thus, part one of the Advance Bionics framework was satisfied, we find that part two is not satisfied.” slip op. at 11
- 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 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.” After 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 ’878 patent. Accordingly, we institute an inter partes review of claims 1–4, 11, 14, 15, and 17 of the ’878 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’878 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“In an inter partes review proceeding, a patent claim shall be construed 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) (as amended Oct. 11, 2018). Our rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention. See Phillips, 415 F.3d at 1312–13. In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Id. at 1315–17. The parties do not present any claim constructions, and we determine that no formal claim construction is necessary for this decision. 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.’”)” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,723,878 - Nike, Inc. v. Sherrywear LLCInstitutedPTAB · Feb 10, 2025 · IPR2024-01122 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR of claims 1, 2, 4, and 7 on both asserted §103 grounds, finding a reasonable likelihood that claim 1 would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In determining whether to deny institution under § 325(d) we use a two-part framework, as follows: (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 GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). The Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d). Id. at 9 (referencing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph)). Under § 325(d), the art and arguments must have been previously presented to the Office during proceedings, such as examination of the underlying patent application, pertaining to the challenged patent. Advanced Bionics, Paper 6 at 7.” slip op. at 9
- 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 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.” After considering the Petition, the Preliminary Response, Preliminary Reply, Preliminary Sur-reply, 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 ’016 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed definition of a person of ordinary skill in the pertinent art, as it is consistent with the ’016 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction In an inter partes review proceeding, a patent claim shall be construed 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) (as amended Oct. 11, 2018). Our rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention. See Phillips, 415 F.3d at 1312–13. In construing claims in accordance with their ordinary and customary meaning, we take into account the specification and prosecution history. Id. at 1315–17. The parties do not present any claim constructions, and we determine that no explicit claim construction is necessary for this decision. 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.’”)” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,289,016
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.