• Boe Technology Group Co., Ltd. / Beijing Boe Display Technology Co. et al. v. Element Capital Commercial Company Pte. LtdInstitution denied
  PTAB · Oct 12, 2023 · IPR2023-00696 · APJ Russell E Cass · IPR · Institution

  The Board denied institution on claim 1 because Petitioner did not show a reasonable likelihood that any asserted Inukai-based ground rendered it unpatentable.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b) . The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes that no formal claim constructions are necessary in this proceeding. Pet. 18. Patent Owner agrees. Prelim. Resp. 4. We determine that it is not necessary to construe any claim terms for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1374 (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 11

  • Skill levelSkill level board ownDecided for patent owner

    “Both parties agree that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a Master’s degree in electrical engineering, physics, or a related field.” Pet. 2 (citing Ex. 1003 ¶¶ 26–27); Prelim. Resp. 4–5 (citing Ex. 2001 ¶¶ 22–23). The parties, however, disagree about the work experience one of ordinary skill would have had. Petitioner asserts that one of ordinary skill would have had “at 1 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 2 (citing Ex. 1003 ¶¶ 26–27). Patent Owner contends that one of ordinary skill would have had “at least two years of relevant work experience in the field of display device technology.” Prelim. Resp. 4–5 (citing Ex. 2002 ¶¶ 21–23). Both parties agree that “[a]dditional education can remedy lack of work experience and vice versa.” Pet. 2; Prelim. Resp. 5. We note that the ’760 patent and challenged claim concern both display device technology and integrated circuit design for display devices. The ’760 patent and challenged claim do not appear to concern integrated circuit manufacturing processes. Accordingly, for purposes of this Decision, we determine that a person of ordinary skill in the art would have had a Master’s degree in electrical engineering, physics, or a related field and at least two years of relevant work experience in the field of integrated circuit design for display devices. However our decision in this proceeding would not change if we adopted either Petitioner’s or Patent Owner’s definition of the person of ordinary skill.” slip op. at 12

  • Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner

    “sufficiently show that Inukai 576 discloses a wiring portion that “crosses” a control line. As noted above, Petitioner acknowledges that the right protrusion’s “full outline is not explicitly shown,” but contends that one of ordinary skill “would have understood or found obvious that the protrusion would have been the same length as the protrusion on the right, due to the ‘endcap rule.’” Pet. 51. However, based on the present record, we agree with Patent Owner that Petitioner fails to provide sufficient support that the “endcap rule” is universally applied. In this regard, we find reasonable Dr. Silzars’s testimony that the “endcap rule” is, “at best, a design generalization which may be used in some applications for semiconductor manufacturing, heavily dependent on what materials are used, what the purpose of the semiconductor [is] and especially the manufacturing process.” Ex. 2001 ¶ 60. Petitioner relies on the Borodovsky patent, but Borodovsky merely describes the general concept that an endcap of a transistor gate may extend some minimum distance beyond an active region so as to ensure that any rounding of the endcap does not occur over the active region. Ex. 1010, 4:21–33; Ex. 2001 ¶ 63; Pet. 52–53. Borodovsky, however, does not suggest how the rule would have been applied to Inukai 576. See Ex. 2001 ¶ 63. Petitioner also does not point to anything in Borodovsky that states that the “endcap rule” requires gate electrodes of the same size or length. See Ex. 2001 ¶ 64. Borodovsky’s design rule merely requires that the endcap extends at least a minimum length, not an exact length, beyond the active region, and states that “other size up amounts may be used.” Ex. 1010, 9:42–46; Ex. 2001 ¶ 64. Thus, assuming Inukai 576’s protrusions are of different length, as pictured, Petitioner’s evidence does not show persuasively that the shorter protrusion would violate the “endcap rule” merely because it is shorter than the other protrusion. We note that Dr. Liu testifies that one of ordinary skill would “have known that in order to maintain a consistent current voltage characteristic for the double-gate transistors, the two channel portions of the double-gate structure would be made as uniformly identical as possible.” Ex. 1002 ¶ 114. Dr. Liu, however, does not provide any evidence or citation for this statement. Id. Dr. Liu also states that “[t]he endcap rule applies to all gates fabricated in the transistor,” so one of ordinary skill “would have understood that the two gates over transistor 107 have equal length,” and thus “the two protrusions would extend equal distance beyond the semiconductor layer.” Id. Again, however, Dr. Liu does not explain why the “endcap rule” would require or suggest this outcome, particularly because the description of the “endcap rule” merely requires that gates have a certain minimum length beyond the semiconductor layer they intersect, not that the gates be of equal length. Id.” slip op. at 35

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR
  Patents in suitUS 8,525,760
• Netflix, Inc. v. Robocast, Inc.Institution denied
  PTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution

  The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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.” For the reasons explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by 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). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10

  • Prior constructionPrior construction adoptedDecided for patent owner

    “we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther

    “As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,155,451
• Sercomm Corp. v. Atlas Global Technologies, LLCInstitution denied
  PTAB · Apr 12, 2023 · IPR2022-01519 · APJ Josiah C Cocks · IPR · Institution

  The Board denied institution for claims 1–19 because Petitioner did not show Chun was prior art, defeating both proposed obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a). Petitioner’s burden includes demonstrating that the evidence on which it relies constitutes prior art to the subject patent” slip op. at 5

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “We find the above-noted arguments persuasive. They account for what is actually set forth in the Korean provisionals, are supported by the testimony of Dr. Psounis, and are unaddressed by Petitioner.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A person of ordinary skill in the art (“POSA”) at the time of the alleged invention would have a bachelor’s degree in electrical engineering, computer science, computer engineering, or a similar discipline, and either a master’s degree in one of these fields of study or a minimum of two years of experience working in the wireless communications industry. An individual with an advanced degree in a relevant field would require less experience in the design of wireless communication systems and methods.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2020); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Neither party offers any specific construction for any claim term. See Pet. 7; Prelim. Resp. 11. For purposes of this Decision on Institution, we have given all claim terms their ordinary and customary meaning and determine that it is not necessary to make that meaning explicit for any term.” slip op. at 7

  Claim construction§ 102 anticipationcites Phillips
  Patents in suitUS 9,912,513
• Sercomm Corporation v. Atlas Global Technologies, LLCInstitution denied
  PTAB · Apr 11, 2023 · IPR2022-01520 · APJ Stephen E Belisle · IPR · Institution

  The Board denied institution because Sercomm did not show a reasonable likelihood of proving claims 1–9 and 11–19 unpatentable under any asserted ground.

  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) (2022). We may not institute an inter partes review “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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Applying those standards, and upon consideration of the information presented in the Petition, Preliminary Response, and related briefing, we determine that Petitioner has not demonstrated a reasonable likelihood of prevailing with respect to any of challenged claims 1–9 and 11–19 of the ’919 patent. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Accordingly, based on the record before us, we deny institution of an inter partes review of the ’919 patent.” slip op. at 2

  • Skill levelSkill level board ownOther

    “Neither party argues that the outcome of this case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. Although slight differences exist in the formulation of such skill level between the parties, we discern no meaningful differences because none of those differences would affect the outcome of our analysis. Considering the subject matter of the ’919 patent, the background technical field, the prior art, and parties’ proposed definitions of the skilled artisan, we apply the level of skill cumulatively set forth above by the parties, which is consistent with testimony of both parties’ experts (Ex. 1003 ¶ 41; Ex. 2003 ¶ 48).” slip op. at 14

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningPrior construction adoptedDecided for patent owner

    “‘number of the one or more station information fields in the NDPA’ found earlier in the claims by explaining that this number is the number of station information fields in the NDPA, rather than, for example, the number of a particular station information field.” Prelim. Resp. 21. Patent Owner argues “Petitioner’s construction simply removes the term ‘cardinality’ from this claim element,” and “introduces ambiguity into the claims by suggesting that the number could be either the number of station information fields or the number (or index) of the station information field directed to a station,” which is the very ambiguity “the patentee sought to avoid” during prosecution.” Id. at 20–22; see id. at 21–27. We agree with Patent Owner and find Petitioner’s arguments unpersuasive. See, e.g., Ex. 1002, 159 (Examiner stating, “The applicant proposed amending the claim to further define the process of determining a number and further defining the number as a cardinality wherein the cardinality is a number of elements in a set or group.” (emphasis added)).6” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “We agree with Patent Owner and find Petitioner’s arguments unpersuasive. In particular, we find Petitioner does not show sufficiently, let alone with particularity, how or why 802.11ac allegedly discloses (explicitly or inherently) the combined features of “determining” that the number of elements in the set of STA Info fields “is one,” and “in response to” that determination, transmitting first CSI feedback in response to receiving the NDP. Instead, as noted by Patent Owner (Prelim. Resp. 32), Petitioner merely contends that, because 802.11ac’s VHT SU beamforming can be performed with a single station, 802.11ac allegedly discloses sending feedback in response to determining that the number of the one or more STA Info fields in the NDPA is one. We find Petitioner’s reasoning here unpersuasive, and agree with Patent Owner and its expert that Petitioner does not explain, sufficiently and with particularity, how any disclosure in 802.11ac describes channel sounding feedback being sent or received in response to determining the number of STA Info fields. See Prelim. Resp. 31–33; Ex. 2003 ¶¶ 104–109; see also Prelim. Resp. 28–31. For the foregoing reasons, we are not persuaded that the cited evidence adequately supports Petitioner’s contention that 802.11ac discloses limitation 1.D, namely “in response to determining that the number of the one or more station information fields in the NDPA is one, transmitting first Channel State Information (CSI) feedback in response to receiving the NDP,” as recited in independent claim 1.” slip op. at 23

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,020,919
• TCT Mobile (US) Inc. / TCL China Star Optoelectronics Technology Co., Ltd. et al. v. Semiconductor Energy Laboratory Co., Ltd.Institution denied
  PTAB · Jul 21, 2022 · IPR2022-00441 · APJ Jennifer Meyer Chagnon · IPR · Institution

  The Board denied institution on claims 1–3 because Petitioner did not show a reasonable likelihood of proving obviousness over Umezaki and Lo or anticipation of claim 2 by Umezaki.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech. Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner proposes the following definition for the person of ordinary skill in the art: a graduate degree in electrical engineering or computer engineering or a similar discipline, with at least three years of relevant industry or research experience, including experience designing or implementing OLEDs in combination with pixel or/and driving circuits. Pet. 19–20 (citing Ex. 1002 ¶ 26). Patent Owner has not provided an assessment of the level of ordinary skill in the art and does not contest Petitioner’s proposal. See generally Prelim. Resp. For purposes of this Decision, we apply Petitioner’s proposed level of ordinary skill in the art, which is consistent with the ’290 patent and the asserted prior art.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Petitioner proposes constructions for two claim terms: “electrically connected” and “transistor.” See Pet. 15–19. Patent Owner does not propose any claim constructions at this stage of the proceeding. See generally Prelim. Resp. Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). We determine that express construction of the terms identified by Petitioner is not necessary for purposes of this Decision.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “We recognize that Petitioner cites to Umezaki’s disclosure that “[t]he first to eleventh wirings 121 to 131 can be freely connected as long as a flip-flop operates similarly to FIGS. 1A to 1C.” Ex. 1003 ¶ 204 (cited at, e.g., Pet. 25). We agree with Patent Owner, however, that “[t]his disclosure does not stand for the proposition that any input can be arbitrarily applied to any wiring without regard to their impact on the proper and intended operation of the circuit.” Prelim. Resp. 28; see also Ex. 1003 ¶ 204 (providing as an example that power supply lines 124, 128, 129, 131, and 131 of Fig. 1A are combined to a single power supply line 506 in Fig. 5A). As Patent Owner notes, Umezaki stresses that the flip-flop must operate similarly to that of Figures 1A to 1C. Prelim. Resp. 28 (citing Ex. 1003 ¶ 204). Petitioner does not explain sufficiently how Umezaki’s fourth wiring 504 is a power supply line or why a person of ordinary skill in the art would have been motivated to input a potential to fourth wiring 504 rather than inputting the disclosed clock signal. See Pet. 32 (simply stating that 504 is a power supply line without further explanation). Petitioner also does not demonstrate that the resulting flip-flop would operate similarly to the circuits in Figures 1A to 1C if such a change was made.” slip op. at 20

  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,777,290
• TCT Mobile (US) Inc / TCL China Star Optoelectronics Technology Co., Ltd et al. v. Semiconductor Energy Laboratory Co., Ltd.Institution denied
  PTAB · Jul 19, 2022 · IPR2022-00151 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because claims 1–6 were supported by the earlier priority application, making Kwon unavailable as prior art, and the petition lacked adequate reasons to combine Kwon and Yamazaki.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ arguments and the evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “[A] patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). The earlier filed application provides support for the claims of the later application if the earlier application “reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Petitioner contends the ’671 application does not include support for the following limitation of claims 1 and 4: “wherein a capacitance is formed in a region overlapping with the channel formation region by arranging the gate electrode, the second insulating film, and the power supply line in this order” (the “capacitance limitations”). Pet. 6. According to Petitioner, support for the capacitance limitations was added for the first time in the ’766 application. Pet. 6. slip op. at 6

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “Petitioner has not presented an adequate rationale to combine Kwon and Yamazaki to arrive at the claimed invention. Among other things, Petitioner argues “[a] person of ordinary skill would have been motivated to replace the channel formation region of [Kwon] with the channel formation region of [Yamazaki] to solve the TFT threshold voltage variation issue identified in [Kwon].” Pet. 38 (citing Ex. 1002 ¶ 114). Further, Petitioner asserts that OLED current can be reduced by increasing the channel length of the TFT such that a person of ordinary skill would have been motivated to use a TFT with a larger channel length as taught by Yamazaki. Pet. 36–37. But we agree with Patent Owner that the ’049 patent itself suggests that relationship, not Kwon or Yamazaki, and that Petitioner’s suggested motivation to combine Kwon and Yamazaki is guided by improper hindsight. See Prelim. Resp. 52–53. Petitioner’s reliance on the Kanicki Declaration is misplaced, as Dr. Kanicki’s testimony is conclusory and does not state the basis for that testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). We also agree with Patent Owner that Petitioner failed to establish that a person of ordinary skill would have had a reasonable expectation of success in combining the references. Prelim. Resp. 54–59 (citing Samsung Elecs. Co. v. Elm 3DS Innovations, LLC, 925 F.3d 1373 (Fed. Cir. 2019) among other cases). We agree with Patent Owner that the semiconductor technology at issue in this proceeding is complex and that a skilled artisan’s expectation of success should have been explained and supported by evidence. Prelim. Resp. 55; see also Samsung, 925 F.3d at 1382–83 (affirming the Board, which “repeatedly stated that integrated-circuit technology is complex and, as such, looked for specific evidence that a person of ordinary skill in the art would have reasonably expected success in combining [prior art fabrication process and dielectric material]”). Petitioner and Dr. Kanicki are silent as to whether a skilled artisan would have had a reasonable expectation of success and we do not see evidence presented by Petitioner from which we would infer that a skilled artisan would have had that expectation. Accordingly, we determine Petitioner has not presented adequate reasons for combining Kwon and Yamasaki.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightTeaching away not foundDecided for patent owner

    “Petitioner has not presented an adequate rationale to combine Kwon and Yamazaki to arrive at the claimed invention. Among other things, Petitioner argues “[a] person of ordinary skill would have been motivated to replace the channel formation region of [Kwon] with the channel formation region of [Yamazaki] to solve the TFT threshold voltage variation issue identified in [Kwon].” Pet. 38 (citing Ex. 1002 ¶ 114). Further, Petitioner asserts that OLED current can be reduced by increasing the channel length of the TFT such that a person of ordinary skill would have been motivated to use a TFT with a larger channel length as taught by Yamazaki. Pet. 36–37. But we agree with Patent Owner that the ’049 patent itself suggests that relationship, not Kwon or Yamazaki, and that Petitioner’s suggested motivation to combine Kwon and Yamazaki is guided by improper hindsight. See Prelim. Resp. 52–53. Petitioner’s reliance on the Kanicki Declaration is misplaced, as Dr. Kanicki’s testimony is conclusory and does not state the basis for that testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”).” slip op. at 10

  § 102 anticipation§ 103 obviousness
  Patents in suitUS 10,680,049
• TCT Mobile (US) Inc / TCL China Star Optoelectronics Technology Co., Ltd et al. v. Semiconductor Energy Laboratory Co., Ltd.Institution denied
  PTAB · Apr 26, 2022 · IPR2021-01573 · APJ Nathan A Engels · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “unless the information presented in the Petition and any response thereto shows “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) (2018). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ arguments and the evidence of record, we conclude that the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail in showing the unpatentability of any of the challenged claims. Accordingly, we decline to institute inter partes review.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “(1) Adachi’s embodiments disclosing blue phosphorescent OLEDs as described in columns 13–16, and (2) the red fluorescent OLED mentioned in Adachi’s background discussion. This is not appropriate in an anticipation analysis. See Net MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369–71 (Fed. Cir. 2008) (explaining that anticipation requires a clear disclosure of the claimed invention with elements arranged as in the claim and without any need for combining distinct disclosures).” slip op. at 8

  § 102 anticipation
  Patents in suitUS 7,372,199
• Unified Patents, LLC v. Smart Path Connetions, LLCInstitution denied
  PTAB · Apr 25, 2022 · IPR2021-01551 · APJ David C Mckone · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on any challenged claim under the asserted anticipation or obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). 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.” For the reasons explained below, we decline to institute an inter partes review of the ’599 patent.” slip op. at 2

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner

    “’599 patent. As Patent Owner observes, claim 41, which depends from claim 32, recites “wherein said metric comprises a cost factor that is computed between one of said ingress nodes and said respective one of said nodes.” This suggests that “a metric,” as recited in claim 32, is broader than, and not limited to, a number of spans between two nodes. See Phillips, 415 F.3d at 1314–15 (“[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.” (citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)). The Specification confirms that “a metric” is broader than Patent Owner’s understanding. For example, the Specification states: In the detailed examples given below, the metric is defined in such a way that the route selected is the one with the lowest metric score. Alternatively, many different metrics can be defined. For example, the metric may be defined so that the dynamic selection of ingress and exit points could be responsive to a maximum value of the metric. Ex. 1001, 9:49–54 (emphasis added). Thus, we conclude that “a metric” is not limited to a number of spans or hops between two nodes and can include other properties, such as bandwidth.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “person of ordinary skill in the art “would have had at least a Bachelor’s degree in Optical, Electrical, Computer, and/or Network Engineering (or related subject matter), and two to three years of relevant industry experience, or the equivalent thereof.” Pet. 18 (citing Ex. 1002 ¶¶ 99–104). Patent Owner takes no position with respect to Petitioner’s proposal and 9 The record does not include allegations or evidence of objective indicia of nonobviousness. makes no proposal of its own. Prelim. Resp. 19–20. Petitioner’s proposal is reasonable in light of the descriptions in the ’599 patent and prior art, and is supported by expert testimony. For purposes of this decision, we adopt Petitioner’s proposed level of skill in the art.” slip op. at 16

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “modification when it describes that the “default COST for OSPF purposes is modified” to be in terms of bandwidth. Pet. 27 (citing Ex. 1004, 23:1–39). According to Petitioner, “this formula could be similarly modified to prioritize other ‘COSTs,’ e.g., number of spans.” Id. Petitioner argues that this would have been “more efficient.” Id. (citing Ex. 1002 ¶¶ 171–174). Dr. Sichitiu testifies, in conclusory fashion, that minimizing delays would be a priority and that optimizing for the number of spans would optimize for other aspects such as delay, bandwidth, and reliability. Ex. 1002 ¶ 173. However, the conclusory nature of the testimony, and the lack of an 16 Patent Owner complains that the Petition “presents a mishmash claim chart that is indiscernible and indecipherable . . . as to what the actual theories are.” Prelim. Resp. 39 n.1. We agree that the Petition’s combination of its anticipation and obviousness theories into one claim chart with few helpful guideposts results in a set of theories that is not a model of clarity. Nevertheless, we focus on the theory presented in the Petition that would most closely address the deficiencies noted above for Petitioner’s anticipation theory. explanation of the basis for it, renders the testimony less helpful. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Petitioner next argues that selecting an optimal ingress node was recognized in the art as a problem and that modifying COST to represent number of spans was a known technique that would have predictably addressed this problem. Pet. 28–29 (citing Ex. 1002 ¶¶ 162–173, 175–177). Petitioner argues that this combination “would have predictably resulted in M/G-POP 53 consistently ‘select[ing]’ either M-POP 43 or 45 as the ‘ingress node’ for each ‘calculated’ route according to the constituent ‘COST’ (‘responsively to said metric’).” Id. (alteration by Patent Owner). Dr. Sichitiu’s testimony that selecting an optimal ingress node was a recognized problem is conclusory and does not identify a basis. Ex. 1002 ¶ 176. We agree with Patent Owner (Prelim. Resp. 28) that Petitioner’s argument and testimony suffer from hindsight bias. Moreover, Petitioner does not provide meaningful explanation as to why this combination would have predictably resulted in M/G-POP 53 selecting either M-POP 43 or 45 as the ingress node. As Patent Owner observes, “Petitioner fails to address how a POSITA would reconfigure Sistanizadeh and maintain its particularized network to stay operable.” Prelim. Resp. 31.” slip op. at 28

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,551,599
• Juniper Networks, Inc. v. Smart Path Connections, LLCInstitution denied
  PTAB · Jan 5, 2022 · IPR2021-01170 · APJ Steven M Amundson · IPR · Institution

  The Board denied institution because Juniper did not show a reasonable likelihood that claims 1–22 were unpatentable under any of its three obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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) (2018).” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion under § 325(d) to deny institution because Petitioner “relies on references that are the same or substantially the same” as art the Examiner considered during the ’580 patent’s prosecution. See Prelim. Resp. 14–30; Prelim. Sur-reply 1–3. For instance, Patent Owner asserts that the Examiner considered Huang3 during the ’580 patent’s prosecution and that Huang “discloses path protection in MPLS networks” similar to RFC4090, FastReroute-07, deBoer, and Doshi. Prelim. Resp. 21, 25–26; see id. at 18–19, 29–30; Prelim. Sur-reply 4. Petitioner argues that “the Petition’s prior art and obviousness combinations aren’t similar or cumulative” to art the Examiner considered during the ’580 patent’s prosecution. Pet. 85. For the reasons explained below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail in proving the unpatentability of any challenged claim on any ground of unpatentability presented in the Petition. See infra §§ IV.E.3(e)–(f), IV.F, IV.G.2(d)–(f). Hence, we do not consider discretionary denial under § 325(d).” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on Dr. Lavian’s testimony, Petitioner asserts that a person of ordinary skill in the art would have had either “a bachelor’s degree in electrical engineering, computer engineering, computer science, or a closely related field, and three to four years of experience in the design and development of telecommunication networks and components using RFC-based architectures and protocols” or “a Master’s degree or similar post-graduate work in electrical engineering, computer engineering, computer science, or a closely related field, and less years of design and development experience.” Pet. 7 (citing Ex. 1003 ¶¶ 95–97). Patent Owner asserts that Petitioner’s “proposed level of ordinary skill does not affect the ultimate analysis.” Prelim. Resp. 40. Patent Owner “takes no position with respect to Petitioner’s proposed level of skill.” Id. Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’580 patent and the asserted references.” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner “construes each of the ’580 claim terms as having its ordinary and customer [sic] meaning” and does not propose a construction for any claim term. Pet. 8. Patent Owner “requests that the Board adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art.” Prelim. Resp. 11. Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 7,463,580
• Shenzhen Mediatek Tong Technology Co., Ltd. v. The Noco CompanyRehearing denied
  PTAB · May 17, 2021 · IPR2020-01387 · APJ Jameson Lee · IPR · Rehearing

  The Board denied rehearing, leaving in place the denial of institution on claims 1–3, 5, 8–17, 19–21, and 23 because Petitioner did not show an abuse of discretion.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not reached

    “We recognize that Paragraph 50 of Zhang describes two ways to measure the voltage “at the two terminals” of the vehicle battery, and the other way is by the small teeth of the output power clip. Ex. 1006 ¶ 50. But Zhang describes the two ways as occurring “at the same time,” and not as alternative implementations. Thus, measurements at both points are taken to obtain the voltage at the two terminals of the vehicle battery. Dr. Hartup does not address or explain how a measurement can be taken at the input terminal of the DC contactor that would be indicative of the voltage of the external vehicle battery connected to the output terminal of the DC contactor, if the DC contactor is not already closed. Ex. 1003 ¶ 59. The Petition does not address Zhang’s disclosure of measuring the voltage of the vehicle battery on the input side of the DC contactor at the same time a measurement is taken by the small teeth of the output power clip. Paper 9, 33 (emphasis added).” slip op. at 3

  • BurdenDecided for patent owner

    “II. STANDARD OF REVIEW When rehearing a decision on institution, we do not review the merits of the decision de novo, but instead review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The party requesting rehearing has the burden to show that the decision should be modified. 37 C.F.R. § 42.71(d). Additionally, the request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply.” Id.” slip op. at 2

  § 102 anticipation
  Patents in suitUS 9,007,015

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.