• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01074 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because the petition did not show Teodosiu disclosed the required location identifier, and the proposed combinations did not remedy that deficiency.

  RulingsInstitution decision

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

    “In summary, we determine that Petitioner has not shown that the cited art discloses all the limitations of any challenged claim and we deny institution on this basis. III. CONCLUSION On the record before us, we conclude that there is not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition. Therefore, we do not institute inter partes review on any claims or any challenge to the claims of the ’721 patent.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5–6 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 19–21). 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 definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 10

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

    “2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims 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) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, construe any claim terms in order to make this decision.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the Mir Declaration. See Pet. 20 (citing Ex. 1002 ¶¶ 87–91). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a geographical location of the wireless device” as recited in each independent claim of the ’721 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 89. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 90. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a geographical location of the wireless device.”” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,880,721
• Cisco Systems, Inc. v. XR Communications, LLC D/B/A Vivato TechnologiesInstitution denied
  PTAB · Nov 28, 2022 · IPR2022-00958 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Cisco did not show a reasonable likelihood that claims 15–22 and 30–35 were obvious over Kasami.

  RulingsInstitution decision

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

    “we agree with Patent Owner that Petitioner does not show sufficiently that Kasami teaches element 15B.2 and specifically, at least the first, second, and third channels. Petitioner relies on a modification of the first embodiment of Kasami. Pet. 15–51. As discussed above, Kasami’s first embodiment illustrated in Figure 1 includes a single access point, i.e., “Access point 1.” Ex. 1005, Fig. 1. Kasami describes that “access point 1 can communicate with the plurality of stations 4-1 and 4-3 via the substantially same channel or adjacent channel.” Id. at 5:63–66. As discussed above, Petitioner does not rely on the adjacent channel but instead, relies on description pertaining to another embodiment in Kasami and general knowledge of a person having ordinary skill in the art. Pet. 15–51. Petitioner does not provide sufficient reasoning to modify the Figure 1 embodiment of Kasami in accordance with teachings relating to Kasami’s other embodiment or the general knowledge of a person having ordinary skill in the art. Id. at 10–51. Petitioner also relies on the testimony of its expert Dr. Jeffay to map Kasami’s antenna beams 3-1 to 3-3 such that according to Petitioner each of antenna beams 3-1 to 3-3 is part of a first, second, and third access point, respectively, (id. at 21–22) and also is a first, second, and third receive channel, respectively (id. at 36). Dr. Jeffay’s testimony cites as support a reference describing frequency channels, spatial channels, and use of different channels for communication with mobile systems. See, e.g., Ex. 1003 (citing Ex. 1011, 1:35–39, 1:43–47, 12:33–38, 13:26–29). Neither Dr. Jeffay’s testimony nor the other reference remedies the deficiency in the 1 so as to achieve the mapping set forth by Petitioner to meet the elements recited in claim 15. Additionally, Petitioner may not rely on Dr. Jeffay’s testimony alone for element 15B.2. Testimony cannot take the place of disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. See Consolidated Trial Practice Guide (“Consolidated Practice Guide”) at 36; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). More specifically, the Consolidated Practice Guide sets forth the following: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. For example, because “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), a petitioner asserting anticipation cannot rely on its expert to supply disclosure of a claim element that is not expressly or inherently present in the reference. Similarly, in an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself. Consolidated Practice Guide at 36. For the reasons given, we determine that Petitioner has not shown sufficiently that Kasami teaches each recitation of independent claim 15.” slip op. at 23

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

    “we agree with Patent Owner that Petitioner does not show sufficiently that Kasami teaches element 15B.2 and specifically, at least the first, second, and third channels. Petitioner relies on a modification of the first embodiment of Kasami. Pet. 15–51. As discussed above, Kasami’s first embodiment illustrated in Figure 1 includes a single access point, i.e., “Access point 1.” Ex. 1005, Fig. 1. Kasami describes that “access point 1 can communicate with the plurality of stations 4-1 and 4-3 via the substantially same channel or adjacent channel.” Id. at 5:63–66. As discussed above, Petitioner does not rely on the adjacent channel but instead, relies on description pertaining to another embodiment in Kasami and general knowledge of a person having ordinary skill in the art. Pet. 15–51. Petitioner does not provide sufficient reasoning to modify the Figure 1 embodiment of Kasami in accordance with teachings relating to Kasami’s other embodiment or the general knowledge of a person having ordinary skill in the art. Id. at 10–51. Petitioner also relies on the testimony of its expert Dr. Jeffay to map Kasami’s antenna beams 3-1 to 3-3 such that according to Petitioner each of antenna beams 3-1 to 3-3 is part of a first, second, and third access point, respectively, (id. at 21–22) and also is a first, second, and third receive channel, respectively (id. at 36). Dr. Jeffay’s testimony cites as support a reference describing frequency channels, spatial channels, and use of different channels for communication with mobile systems. See, e.g., Ex. 1003 (citing Ex. 1011, 1:35–39, 1:43–47, 12:33–38, 13:26–29). Neither Dr. Jeffay’s testimony nor the other reference remedies the deficiency in the 1 so as to achieve the mapping set forth by Petitioner to meet the elements recited in claim 15.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “Discretion Under 35 U.S.C. § 314(a) Relying on the framework from Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner asserts we should exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review based on the district court proceedings. Prelim. Resp. 22–40. We need not address Patent Owner’s contentions concerning discretionary denial under § 314(a) because Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’939 patent.” slip op. at 26

  • Skill levelSkill level board ownOther

    “We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’939 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the Specification of the ’939 patent and the asserted prior art reference. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 4 Patent Owner does not present objective evidence of nonobviousness. one of ordinary skill in the art, with the “at least” phrase omitted.” slip op. at 9

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,289,939
• E. & J. Gallo Winery v. Vineyard InvestigationsInstitution denied
  PTAB · Oct 17, 2022 · IPR2022-00792 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because Petitioner did not show that the cited art taught or suggested the per-plant emitter limitations in claims 1–48.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the 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”)). Petitioners cannot satisfy their burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 7

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

    “Id. at 20–21.17 Thus, Petitioner equates “sprinkler head” in Miller to “emitter” as recited and “adjacent each tree in the region” in Miller to “associated with . . . one of the plants” as recited. And, Petitioner concludes that an ordinarily skilled artisan would have understood Miller’s disclosure of a “sprinkler head adjacent each tree” to teach that “Miller’s feed lines and controller could be readily configured to operate a sprinkler head on a per plant basis.” See Pet. 21. Petitioner does not explain how or why placing a sprinkler head adjacent each tree means that the feed lines and controller 16 “[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1075 (Fed. Cir. 2015) (emphasis added). 17 In addition to the evidence from Miller referred to above, Petitioner also cites paragraphs 84–90 of the Declaration of Gill Tsouri, Ph.D. See Pet. 19, 22 (citing Ex. 1002 ¶¶ 84–90). However, paragraphs 84–90 of the Tsouri Declaration merely consist of verbatim copies of passages in the Petition and the contention that Miller thus teaches this element. See especially Ex. 1002 ¶ 87 (consisting of a verbatim copy of the paragraph quoted above from the Petition). We do not find the testimony in the Tsouri Declaration to be persuasive or helpful to our analysis. Petitioner fails to show how or why Miller discloses a system that can operate a sprinkler head on a per plant basis which is Petitioner’s basis for contending Miller teaches “each emitter is associated with . . . one of the plants” as recited in claim 1.” slip op. at 13

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

    “Because we deny institution on the merits, we do not reach Patent Owner’s arguments as to discretionary denial under § 325(d).” slip op. at 17

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,645,881
• Aviagames, Inc. v. Skillz Platform Inc.Institution denied
  PTAB · Aug 4, 2022 · IPR2022-00531 · APJ Terrence W Mcmillin · IPR · Institution

  Institution was denied because the Petition failed to show a reasonable likelihood of proving any challenged claim obvious over the asserted grounds.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (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”)). Petitioners cannot satisfy their burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10

  • BurdenDenied

    “teaches the “unique match number” as recited in claim 1 of the ’564 patent.11 Petitioner fails to explain what relationship, if any, the “tournament game identifier number[ ]” bears to the stream of pseudo random number seeds allegedly taught by Halliburton. Because each tournament in Halliburton has an identifier number does not support the conclusion that the “tournament game identifier number[ ]” characterizes the stream of pseudo random number seeds or otherwise supports concluding that the “tournament game identifier number[ ]” is a “unique match number” as recited. The Petition provides no support for concluding that Halliburton’s depiction of a “tournament game identifier number[ ]” teaches a “unique match number” as recited in claim 1 of the ’564 patent. We determine that the Petition fails to show that Halliburton teaches or suggests the first limitation of claim 1 of the ’564 patent.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “11 Paragraph 235 of Exhibit 1003 (Declaration of Stacy Friedman) is cited in the Petition without any description or explanation of the testimony or how or why it supports the conclusions reached. Nonetheless, we have considered this cited testimony which provides: “Halliburton’s FIG. 6 shows that its tournament IDs are for the decks provided and consequently, the claim language is met.” Ex. 1003 ¶ 235. We find this testimony to be conclusory and not helpful to understand how Halliburton’s tournament IDs meet the claim language. 37 C.F.R. § 42.65(a) provides, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” We accord little or no evidentiary weight to the cited paragraph of Exhibit 1003.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[a] person of ordinary skill at the time of the alleged priority date of the ’564 Patent would have had at least a bachelor’s degree in computer science, computer engineering, or electrical engineering (or equivalent work experience) and would have had at least two years or more additional of practical experience specifically with designing and developing electronic gaming systems. Pet. 20–21 (citing Ex. 1003 ¶¶ 22–24). Patent Owner states that “[f]or purposes of this preliminary response only, [Patent Owner] does not dispute this definition.” Prelim. Resp. 8. Petitioner’s undisputed proposal appears consistent with the technology described in the Specification and the cited prior art. In order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,649,564
• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · May 11, 2022 · IPR2022-00050 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on claims 1–30 because Petitioner did not show a reasonable likelihood that the asserted references qualified as prior art.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, 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”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “But, even accepting these premises, we disagree with the conclusion Petitioner asks us to draw from them. In particular, Petitioner appears to contend that we should find that the ’974 application does not provide written description support for the claims of the ’638 patent merely because the scope of the claims includes a configuration that is not expressly described in that document. See Pet. 15–16, 22. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“An applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); Application of Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the description requirement in section 112.”).” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “D. Obviousness Grounds Petitioner contends that the subject matter of claims 1–30 of the ’638 patent would have been obvious over various combinations of Oakes-I, Oakes-II, Medina, and Roach (collectively, “the asserted references”). Pet. 5, 32–100. Petitioner argues that the asserted references are prior art because the claims of the ’638 patent are not entitled to a priority date earlier than July 28, 2017. Id. at 4–5, 11–29. Patent Owner contends that Petitioner fails to establish a reasonable likelihood of success because Petitioner fails to sufficiently show that the asserted references qualify as prior art. Prelim. Resp. 18–59. Having reviewed the parties’ arguments and evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that the asserted references are prior art,8 and as a result, Petitioner fails to sufficiently show that any claim would have been unpatentable based on the asserted references.” slip op. at 16

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “In the first Joint Motion to Seal, the parties request entry of a Protective Order that is substantially the same as the Board’s Default Protective Order (see Consolidated Trial Practice Guide16 at 107–122 (App. B, Protective Order Guidelines and Default Protective Order)). Paper 9, 2.17 The parties also request sealing of Exhibit 2006 and sealing of portions of the Preliminary Response relating to that exhibit. Id. at 2–3. The portions of the Preliminary Response (Paper 11) requested to be sealed can be identified from the redacted version of the Preliminary Response filed as Paper 12. Based on the representations in the Joint Motion to Seal (Paper 9), the parties have shown good cause for entering the Protective Order and for sealing Exhibit 2006 and the identified portions of the Preliminary Response.” slip op. at 37

  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,402,638
• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Apr 27, 2022 · IPR2022-00049 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution for claims 20 and 22 because Petitioner did not show a reasonable likelihood that the asserted combinations rendered them obvious.

  RulingsInstitution decision

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

    “IV. CONCLUSION The Petitioner has not persuasively established that a skilled artisan would have been motivated to combine the cited references so as to render any of the challenged claims unpatentable. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes review as to any claim of the ’638 patent is instituted; and” slip op. at 26

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

    “Pet. 25–27 (emphasis added) (alterations in original). Although this passage is somewhat lengthy, the only reasons provided for combining the relevant teachings of Garcia and Byrne are “to avoid wasting communications resources and adding delays,” “avoid wasting resources and adding delays,” and “reducing wasteful network transmission and delays.” See id. However, the only argument as to the existence of the alleged motivating waste and delay is: “Garcia sends images by ‘a mobile telephone communications network, for example a GSM/GPRS network. . . A POSITA would have known that such networks are bandwidth and resourceconstrained, and that communications over such networks take[ ] time.” Id. at 25 (quoting Ex. 1103, 11:21–12:1). In the Petition, there is no explanation or reasoning to support concluding, based on Garcia’s statement that images are sent using a mobile telephone communications network, that a skilled artisan would recognize waste and delay even if such networks are bandwidth and resource-constrained and that communications over such networks take time. See id. And, there is no explanation or reasoning for concluding that a skilled artisan would recognize that to “check for errors before the submitting” in the manner taught by Byrne would help alleviate waste and delay in Garcia’s system. The only articulated rationale to combine in the Petition is a simple, unelaborated assertion that a skilled artisan would have known that “networks are bandwidth and resource-constrained” and “communications over such networks take time.” This assertion is too general10 and conclusory to accorded much weight and is inadequate to support the finding of rationale to combine. There is no elaboration in the Petition as to what is meant by this sentence. The Petition fails to explain what pertinent knowledge a skilled artisan would have had and how exactly this would have motivated the combination of the relevant teachings of Garcia and Byrne.” slip op. at 20

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

    “Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312– 19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). There is a “heavy presumption,” however, that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We determine we need not explicitly construe any claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Preliminary Response and Exhibit 2006); Paper 13 (relating to the Reply); and Paper 17 (relating to the Sur-reply). In each of these motions, the parties seek to protect as confidential certain information that relates to the issue of whether Petitioner has properly identified all the real parties in interest in its Petition. See 35 U.S.C. § 312(a)(2). As we deny the Petition on the merits and do not grant the request to institute an inter partes review, the issue of identification of the real parties in interest to this proceeding is moot. Therefore, we do not reach the arguments and evidence of the parties relating to whether Petitioner identified all the real parties in interest in the Petition, and we make no reference in this Decision to the documents and information that the parties seek to protect as confidential.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,402,638
• Samsung Electronics Co. Ltd. v. Led Wafer Solutions, LLCInstitution denied
  PTAB · Apr 12, 2022 · IPR2021-01554 · APJ Jeffrey W Abraham · IPR · Institution

  Institution was denied for claims 1–9 because Petitioner did not show Tanaka disclosed or suggested a thermally conductive layer disposed on the second LED surface.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner has failed to demonstrate sufficiently that Tanaka discloses or suggests a thermally conductive layer disposed on the second LED surface of the semiconductor LED. Petitioner does not contend that Tanaka includes an express disclosure of metal wiring being “disposed on” the second LED surface of Tanaka’s semiconductor LED. Instead, Petitioner states only that a person of ordinary skill in the art would have understood that metal wiring 80 is disposed on the second LED surface because there are portions of metal wiring 80 that overlap the second LED surface in the vertical direction. Pet. 17–18. We find this statement to be conclusory and lacking adequate support.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “emitting diodes (LEDs).” Pet. 5 (citing Ex. 1002 ¶¶ 20–21). Patent Owner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or a similar field, and at least . . . two years of professional experience, or its equivalent, in the manufacture of light sources using light emitting diodes (“LEDs”).” Prelim. Resp. 5. Patent Owner states that its position and Petitioner’s position are “substantially similar.” Prelim. Resp. 5. We agree with Patent Owner that the parties’ positions are substantially similar. However, for the purposes of this Decision, we determine that Petitioner’s slightly broader proposed level of ordinary skill in the art (which does not limit professional experience to the manufacturing of light sources) is consistent with the ’612 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review.” slip op. at 8

  • BurdenDenied

    “We agree with Patent Owner that Petitioner has failed to demonstrate sufficiently that Tanaka discloses or suggests a thermally conductive layer disposed on the second LED surface of the semiconductor LED. Petitioner does not contend that Tanaka includes an express disclosure of metal wiring being “disposed on” the second LED surface of Tanaka’s semiconductor LED. Instead, Petitioner states only that a person of ordinary skill in the art would have understood that metal wiring 80 is disposed on the second LED surface because there are portions of metal wiring 80 that overlap the second LED surface in the vertical direction. Pet. 17–18. We find this statement to be conclusory and lacking adequate support. In support of its assertion, Petitioner cites to paragraph 72 of Tanaka, which describes wiring pattern 80 being “directly connected” to electrodes 51 and 52. Ex. 1005 ¶ 72; Pet. 17. As noted above, Petitioner does not contend that electrodes 51 and 52 comprise the second LED surface. Instead, Petitioner maps the second LED surface in Tanaka to the lower surfaces of P-type semiconductor layer 74 and N-type semiconductor layer 72. Pet. 14–17. Petitioner, however, fails to explain sufficiently why paragraph 72 of Tanaka supports its conclusion that a person of ordinary skill in the art would have understood wiring layer 80 to be disposed on the lower surfaces of P-type semiconductor layer 74 and N-type semiconductor layer 72, surfaces not discussed in that paragraph. Petitioner also cites to paragraph 65 of Dr. Baker’s declaration in support of its assertion. Pet. 17– 18. This paragraph, however, offers nothing beyond what appears in the Petition. Compare Ex. 1002 ¶ 65 with Pet. 17–18; 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 12

  Nonecites KSR · Graham
  Patents in suitUS 9,502,612
• Samsung Electronics Co., Ltd. v. Led Wafer Solutions, LLCInstitution denied
  PTAB · Mar 22, 2022 · IPR2021-01526 · APJ Lynne E Pettigrew · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 2, and 5–10 were unpatentable over any asserted obviousness ground.

  RulingsInstitution decision

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

    “institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the parties’ briefing and the evidence of record, we conclude the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’822 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “On the present record, we agree with Patent Owner that the parties’ “positions are substantially similar.” Id. However, for the purposes of this institution decision, we determine that Petitioner’s slightly broader proposed level of ordinary skill in the art is consistent with the ’822 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 5 With respect to the fourth Graham factor, the parties do not present arguments or evidence regarding objective indicia of non-obviousness. Therefore, the obviousness analysis at this stage of the proceeding is based on the first three Graham factors. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review.” slip op. at 7

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

    “Petitioner contends that no claim terms require express construction for purposes of applying the prior art. Pet. 11–12. Patent Owner submits that, at this stage of the proceeding, the Board should adopt the ordinary and customary meaning of the claim terms as understood by one of ordinary skill in the art. Prelim. Resp. 21. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

  • BurdenNot shown unpatentable

    “We agree with Patent Owner that Petitioner has not made an adequate showing with respect to this limitation, at least because Petitioner has not shown sufficiently that a person of ordinary skill in the art would have understood Wirth’s current spreading layer 5 to be part of the claimed “semiconductor LED.” As Patent Owner points out, Wirth discloses that current spreading layer 5 is disposed on, and functionally distinct from, semiconductor function region 2. See Prelim. Resp. 36 (citing Ex. 1007, 18:60–62). For instance, Wirth discloses that “the current spreading layer further is preferably distinguished by high transparency to a radiation to be generated in or received by the semiconductor function region 2.” Id. (emphasis omitted) (quoting Ex. 1007, 19:4–7). Furthermore, although Wirth discloses that current spreading layer 5 can comprise a semiconductor material, as Petitioner contends, Wirth explains that a TCO (Transparent Conducting Oxide) material is preferred. Ex. 1007, 25:37–41. More specifically, Wirth explains that a TCO material is preferred due to its high conductivity in the lateral direction, which facilitates uniform current inflow into the semiconductor region, and its high radiation-transparency over a broad range of wavelengths. Id. at 18:65–19:3, 19:10–19. On this record, we determine that Petitioner has not explained adequately why a person of ordinary skill in the art would have considered Wirth’s current spreading layer to be part of the claimed “semiconductor LED” in view of Wirth’s teachings, not addressed by Petitioner, that current spreading layer 5 is separate from semiconductor function region 2 and preferably made of a conducting material rather than a semiconductor material. See Pet. 19–20. As Patent Owner points out, and as shown in Wirth’s Figure 2, current spreading layer 5 completely covers the top surface (the claimed “first surface”) of semiconductor function region 2 (the “semiconductor LED”) and therefore prevents the semiconductor LED from contacting the bottom surface of envelope 4 (the “optically transparent layer”), even if isolation material 10b is removed. Prelim. Resp. 38–39. Thus, for at least this reason, we determine that Petitioner has not demonstrated sufficiently that Wirth teaches or suggests “a first surface of said semiconductor LED contacts a first portion of a bottom surface of said optically transparent layer,” as recited in claim 1.” slip op. at 13

  Claim constructioncites Phillips · KSR · Graham
  Patents in suitUS 9,786,822
• Seoul Semiconductor, Co. Ltd. v. Led Wafer Solutions, LLCInstitution denied
  PTAB · Mar 15, 2022 · IPR2021-01479 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show motivation to combine Sugizaki with Schubert or Nakamura with a reasonable expectation of success.

  RulingsInstitution decision

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

    “rational underpinning to combine the known elements from the cited art in the fashion claimed in order to support a conclusion of obviousness. See KSR, 550 U.S. 418. The Petition provides no adequate explanation as to why a skilled artisan would have chosen to use an undoped layer as the light emitting layer of an LED based on the collective teachings of the cited references. We determine that the Petition does not sufficiently support a determination that a skilled artisan would have been motivated to use an undoped layer in a LED as recited in claims 1 and 12 of the ’405 patent.” slip op. at 24

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

    “combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). And, the view of the cited art set forth in the Petition is too narrowly focused and does not reconcile or take into account in any way the complete teachings of the cited references as to doping the light emitting layer. In particular, although the references establish that the use of an undoped, light emitting layer was known, the references provide reasons why a skilled artisan might choose to use a doped, light emitting layer. Petitioner, however, fails to identify any specific reason for combining the relevant teachings of the cited references to arrive at the claimed invention. And, the disclosures in the cited references as to the level of doping of the active or light emitting layer of LEDs do not establish that intrinsic (undoped) layers were conventional or most commonly used.” slip op. at 24

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “that “[a] person of ordinary skill at the time of the invention of the ’405 Patent would have had a Bachelor’s Degree in electrical engineering, materials science, physics or a similar discipline, with one to two years of experience in the field of LED packaging design.” Pet. 7 (citing Ex. 1013 § V). Patent Owner states that it “takes no position with respect to Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 31. Petitioner’s undisputed proposal is consistent with the technology described in the Specification of the ’405 patent and the cited prior art. In order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art. D. Consideration of Alleged Obviousness in View of Sugizaki and Schubert” slip op. at 13

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Petitioner asserts that the term “intrinsic” as used in the claims of the ’405 patent should be construed as “undoped or not-doped.” Pet. 10 (“[T]he term ‘intrinsic’ when used to characterize a semiconductor means undoped or not-doped.”). In support of this construction, Petitioner cites the Specification of the ’405 patent (Ex. 1001, 3:61–64), two technical dictionaries (Exs. 1007 and 1008), and the Doolittle Declaration (Ex. 1013 ¶ 32). See id. at 9–10. As noted previously, Patent Owner requests that we adopt the ordinary and customary meaning of the claim terms as understood by a skilled artisan. Prelim. Resp. 11. However, Patent Owner fails to provide any argument or evidence as the ordinary and customary meaning of “instrinsic” in the context of the claims of the ’405 patent or to otherwise provide any explanation regarding the meaning of the term “intrinsic.” See generally id. Based on this record, for the limited purpose of determining whether the Petition shows that there is a reasonable likelihood that the Petitioner would prevail with respect to any of the claims challenged in the Petition and whether institution of a trial is appropriate, we adopt Petitioner’s construction of “intrinsic” as meaning “undoped or not-doped.”” slip op. at 11

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,952,405
• Seoul Semiconductor, Co. Ltd. v. Led Wafer Solutions, LLCInstitution denied
  PTAB · Mar 15, 2022 · IPR2021-01516 · APJ Jeffrey W Abraham · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that the cited combinations would motivate a skilled artisan to use an intrinsic LED region.

  RulingsInstitution decision

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

    “review. 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 the Director determines . . . 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 set forth below, upon considering the Petition, Preliminary Response, Reply, Sur-Reply, and the evidence of record, we determine the information presented in the Petition fails to establish a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we deny the Petition, and do not institute an inter partes review.” slip op. at 2

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

    “It is Petitioner’s burden to provide an articulated reason with some rational underpinning to combine the known elements from the cited art in the fashion claimed in order to support a conclusion of obviousness. See KSR, 550 U.S. 418. The Petition provides no adequate explanation as to why a skilled artisan would have chosen to use an undoped layer as the light emitting layer of an LED based on the collective teachings of the cited references. We determine that the Petition does not sufficiently support a determination that a skilled artisan would have been motivated to use an undoped (i.e., intrinsic) region in an LED as claim 1 of the ’137 patent requires. Based on this record, we determine that Schubert and Nakamura establish that it was known in the prior art to use an intrinsic (undoped) region or layer in an LED. However, we further determine that Petitioner has not adequately shown in the Petition a motivation to combine with a reasonable expectation of success the teachings of Herrmann as to a light emitting layer with the teachings of either Schubert or Nakamura as to the use of an intrinsic (undoped) region or layer in an LED in light of the teachings in both Schubert and Nakamura relating to the use of doped, light emitting layers.” slip op. at 20

  • Expert testimonyPetitioner expert discountedOther

    “We determine this presentation is vague and conclusory as to why or how a skilled artisan would have combined the teachings of Herrmann and either Schubert or Nakamura to arrive at the invention recited in any claim of the ’137 patent and fails to consider and account for all the teachings of the asserted combination of references.13 With regard to the “assumption” that “creation of semiconductor layers for use in a light emitting diode was within the level of ordinary skill in the art” and “[t]hat assumption would encompass the deposition of layers having a desired level of doping, i.e., to include no doping,” we note that “obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015). And, the view of the cited art set forth in the Petition is too narrowly focused and does not reconcile or take into account in any way the complete teachings of the cited references as to doping the light emitting layer. In particular, although the references establish that the use of an undoped, light emitting layer was known, the references provide reasons why a skilled artisan might choose to use a doped, light emitting layer. Petitioner, however, fails to identify any specific reason for combining the relevant teachings of the cited references to arrive at the claimed invention. And, the disclosures in the cited references as to the level of doping of the active or 13 In making this determination, we have considered the declaration testimony of Dr. DenBaars in cited (but unexplained) paragraphs 34–37 of Exhibit 1014. We find that, like the presentation in the Petition, this testimony fails to discuss or account for the teachings in both Schubert and Nakamura relating to doping the active or light emitting layer.” slip op. at 19

  • Skill levelSkill level petitioner adoptedOther

    “that “[a] person of ordinary skill at the time of the invention of the ’137 Patent would have had a Bachelor’s Degree in electrical engineering, materials science, physics or a similar discipline, with one to two years of experience in the field of LED packaging design.” Pet. 3. Patent Owner states that “[b]ecause the proposed level of ordinary skill does not affect the ultimate analysis, Patent Owner takes no position with respect to Petitioner’s proposed level of skill.” Prelim. Resp. 17. Petitioner’s undisputed proposal is consistent with the technology described in the Specification of the ’137 patent and the cited prior art. In order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art. D. Consideration of Alleged Obviousness Based on Herrmann or Beeson in” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,941,137

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.