• Texas Instruments Incorporated v. Bell Semiconductor, LLCInstituted
  PTAB · Nov 1, 2024 · IPR2024-01010 · APJ Brian D Range · IPR · Institution

  The Board instituted inter partes review of claims 1–6 and 8 on all petition grounds and granted Texas Instruments’ motion to join the NXP IPR as an understudy petitioner.

  RulingsInstitution decision

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

    “Thus, for the same reasons set forth in our institution decision in the NXP IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–6 and 8 are unpatentable. See NXP Dec. Accordingly, we institute an inter partes review of the same claims on the same grounds as the ones on which we instituted review in the NXP IPR. 35 U.S.C. § 314(a).” slip op. at 5

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “Petitioner agrees that, if joinder is granted, it will have an “understudy role.” Id. at 2–3, 6–8. Petitioner agrees to various restrictions as an understudy. Id. Along these lines, Petitioner will abide by the following conditions so long as NXP is actively participating in this proceeding: (a) TI shall not make any substantive filing and shall be bound by the filings of Petitioner NXP, unless a filing concerns termination and settlement, or issues solely involving TI; (b) TI shall not present any argument or make any presentation at oral argument unless an issue solely involves TI, or when addressing Board-approved motions that do not affect Petitioner NXP or its respective position; (c) TI shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving TI; (d) TI shall not seek discovery from Patent Owner on issues not solely involving TI; (e) TI will not rely on expert testimony beyond that submitted by Petitioner NXP unless Petitioner NXP is terminated from the case. If Petitioner NXP is not terminated from the case, TI agrees to rely entirely on, and be bound by, the expert declarations and depositions in the NXP IPR. Mot. 6–7. In sum, TI “will not assume an active role unless Petitioner NXP ceases to participate in the proceeding.” Mot. 2.13 The conditions above mean that joinder will have no impact on the NXP IPR trial schedule and will not complicate the NXP IPR briefing or discovery. These understudy provisions are consistent with the provisions imposed by, for example, Ecobee Techs. ULC v. EcoFactor, Inc., IPR 2022-01460, IPR2022-00473, Paper 7 (PTAB Jan. 24, 2023) and Apple Inc. v. INVT SPE LLC, IPR2019-00959, Paper 8 (PTAB May 30, 2019).” slip op. at 6

  None
  Patents in suitUS 7,345,245
• Motorola Mobility LLC v. Largan Precision Co., Ltd.Institution denied
  PTAB · Oct 28, 2024 · IPR2024-00688 · APJ Jon M Jurgovan · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 would have been obvious over the asserted grounds.

  RulingsInstitution decision

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

    “We determine, on the record before us, that Petitioner does not have a likelihood of success of showing that the “prolonged” etching process that Petitioner proposes to arrive at the structure of limitation 1.6 to be “unusually simple” nor is “the technology particularly straightforward.” CN182’s etching process uses an alkali (sodium bicarbonate) solution with a concentration from 5% to 35% at a temperature of 35 to 55°C stirred for a period of 3 to 5 hours in an ultrasonic generator with power of 300 to 500 watts. Ex. 1004 ¶¶ 7–12. This is done in CN182 to create a matte structure on the inner surface of the body composed of plastic material (polyethylene terephthalate (PET)) between two antistatic coatings comprised of carbon powder layers. See, e.g., Ex. 1004 ¶¶ 5–6. Petitioner does not indicate how much time beyond CN182’s stated range of 3 to 5 hours would be required for the “prolonged” etching process it proposes to achieve a minimum depth of 2.0 μm relative to the outer carbon powder layer, nor whether a POSITA would have considered the prolonged time to be practically viable. Petitioner also does not explain what the reaction is, what its etch rate is, whether its effect would be diminished or exhausted as reactants are consumed or affected by other substances present, or whether other variables, such as the alkali concentration, temperature, or power and frequency of the ultrasonic generator, would need to be changed and how much over the course of the “prolonged” etching process.” slip op. at 30

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner states as follows: The person of ordinary skill in the art in November 2016 (“POSITA” or “POSA”) would have held a bachelor’s degree in physics, optical sciences, or a closely related field, and approximately three years’ experience in optical system design, including stray light suppression. More education would compensate for less work experience and vice versa. POSITAs understood the fundamentals of stray light suppression. Pet. 35–36 (citing Ex. 1008, 587:18–20, 167, 595:32–33, xiii:24–26; Ex. 1003 ¶¶ 31–37). Petitioner further asserts that various texts in the record reflect the knowledge of a POSITA. Id. at 36 (citing Exs. 1007–1010). Petitioner alleges that a POSITA could be part of a team that includes a lens designer and a stray light specialist. Id. (citing Ex. 1007, 120; Ex. 1003 ¶¶ 33, 36, 38–41). Patent Owner states that Patent Owner “does not dispute Motorola’s articulation of the level of skill in the art in November 2016.” Prelim. Resp. 12–13 (citing Pet. 35–36). For this Decision, we adopt Petitioner’s undisputed proposal for the level of ordinary skill in the art as consistent with the evidence of record, including the ’660 patent and the prior art references on which Petitioner relies. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9

  • Expert testimonyPetitioner expert discountedOther

    “Patent Owner correctly argues that the evidence does not show that Petitioner’s declarant, Dr. Milster, has expertise in etching of plastic materials such as PET which CN182 discloses for use as the inner substrate layer. Prelim. Resp. 15 (citing Ex. 1003 ¶¶ 31–37). Dr. Milster states that he has “education, knowledge, skills, and experience in the fields of optics and lens design.” Ex. 1003 ¶ 29. This statement does not provide any evidence of expertise in etching plastic materials. Nor does he indicate that he has any expertise in this field in his curriculum vitae. Ex. 1003, Appendix A. Consequently, on this record, Dr. Milster’s testimony on the subject of etching plastic materials is entitled to little or no weight.” slip op. at 33

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

    “Petitioner proposes that the plain and ordinary meaning of the claim terms applies, and does not propose any specific construction for any claim term. Pet. 36. Patent Owner agrees with Petitioner’s statement regarding claim construction, i.e., that the plain and ordinary meaning applies and no express construction is required. Prelim. Resp. 12 (citing Pet. 36–37; Ex. 1003 ¶¶ 82–87). As Petitioner and Patent Owner do not dispute the meaning of any claim term, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”).” slip op. at 10

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,997,660
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00697 · APJ Barbara A Benoit · IPR · Final written decision

  Claims 1, 3, 4, and 8 were not proven unpatentable: Rauhala does not disclose the required simultaneous signal-strength determinations, and Masaaki does not cure the deficiency for claim 4.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Following institution, Patent Owner maintained the same level of ordinary skill proposed in its preliminary response and did not address our discussion of the level of ordinary skill in the art in the Institution Decision. PO Resp. 24–25; see also Prelim. Resp. 24. For the reasons discussed in the Institution Decision, we adopt and apply for this Decision the level of ordinary skill articulated by Petitioner and used previously in our Institution Decision. See Dec. 8–10. In light of our review of the complete record, we find that this formulation is consistent with the ’825 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Ex. 1002 ¶¶ 27– 31. Our decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

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

    “We agree with Patent Owner that the desired signal and interferer signal must be received at the same time. The plain language of the claim requires the wireless transceiver to “receiv[e] a wireless signal having a desired signal and an interferer signal,” the determining of a signal strength of the interferer signal and the determining of a signal strength of the desired signal must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. The specification supports this understanding. “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:20–22; see also id. at 5:31–33 (“FIGS. 2A and 2B illustrate examples of desired signals, interferers, and noise that may be received by one of the various circuits in a” slip op. at 21

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

    “We agree with Patent Owner that Rauhala does not state that the signal strengths are measured simultaneously or at the same time. Indeed, as discussed above, Rauhala indicates unequivocally in the same paragraph the opposite—that detector DET provides to control unit 42 “an indication about either the receive channel signal strength RSS or the strength of any signal on the reception band.” Ex. 1004 ¶ 17. Rauhala describes that “control unit 42 provides two one-bit control signals cA and cM” based on indications received from detector DET. Id. Importantly, Rauhala indicates that “at the same time as” describes how the control unit 42 uses the received inputs RSS and RSSn shown in Figure 4, which are described earlier in paragraph 17 as indications of either RSS or RSSn from detector DET. Id. (“Signal cA is 0 when signal RSS is greater than S4 and signal RSSn is at the 11 Dr. Baker’s reply declaration correctly quotes Rauhala paragraph 17 but cites to paragraph 18. We deem this harmless error. same time smaller than Sn. . . . Signal cM is 1 when signal RSS is not greater than S4 and signal RSSn is at the same time at least Sn. Otherwise, signal cM is 0.”). The burden remains on Petitioner to demonstrate by a preponderance of the evidence that Rauhala discloses the disputed limitations as arranged or combined in the claim. Petitioner does not persuasively reconcile these “either/or” statements regarding the functioning of detector DET with the “at the same time as” statements regarding control signals output by control unit 42 in paragraph 17. We do not find persuasive Petitioner counsel’s position expressed at the hearing that Rauhala’s “either/or” statements are “simply an imprecise description” (Tr. 16:22–24). We do not see a lack of precision in Rauhala’s “either/or” statements.” slip op. at 30

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “When asked at his deposition to explain Rauhala’s use of the word “or” regarding the functioning of detector DET, Dr. Baker asserted that “[detectors] can be designed to determine RSS or RSSn.” Ex. 2016, 85:5– 12. We find Dr. Baker’s testimony that “it’s reasonable that if you can design . . . the detector to detect one or the other, you can also design it to detect both” to be without factual support. Id. at 85:13–16. He points to no textbook or other independent evidence to support that would have led one of ordinary skill to design such a detector or to support that one of ordinary skill would have understood Rauhala’s detector to be so designed. Furthermore, Dr. Baker recognizes that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. We give little weight to Dr. Baker’s unsupported testimony that one could design a detector to detect both RSS and RSSn from the same wireless signal. 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.”); see also Xerox Corp. v. Bytemark, Inc., No. IPR2022-00624, 2022 WL 3648989, at *6 (PTAB 2022) (precedential) (Director affirming because “the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight”).” slip op. at 31

  Patent outcomesUS 10,129,825 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,129,825
• Lenovo (United States) Inc. / Motorola Mobility LLC v. Theta IP, LLCNo claims unpatentable
  PTAB · Oct 16, 2024 · IPR2023-00698 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 7–11, 13, and 19–21 were not shown unpatentable because Rauhala does not disclose simultaneous desired and interferer signal-strength determinations, defeating anticipation and the obviousness combination.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The two proposals are materially similar in the education requirement, but differ marginally in professional experience required (three versus five years). See supra. While we were persuaded, on the preliminary record, that both Petitioner’s and Patent Owner’s proposals were consistent with the problems and solutions in the ’202 patent and the prior art of record, on balance, we determined that Petitioner’s proposal was a better reflection of the level of skill in the prior art, and we therefore adopted it for our Institution Decision. See Institution Dec. 12–13. For this Decision, we adopt the description of the person of ordinary skill articulated by Petitioner and used previously in our Institution Decision. In light of our review of the complete record, we find that this formulation is consistent with the ’202 patent, the prior art of record, and is supported by the testimony of Dr. Baker. See Baker I Decl. ¶¶ 28–32. Our Decision would not change, however, if we had applied Patent Owner’s proposed level of ordinary skill.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “85:13–16. He admits that “Rauhala doesn’t teach the details of what’s in the detector.” Id. at 91:6–7. He points to no textbook or other independent evidence that would have led a person of ordinary skill to design such a detector. Our Trial Practice Guide cautions against crediting such unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). Patent Trial and Appeal Board Consolidated Trial Practice Guide 35 (Nov. 2019).7 We therefore give Dr, Baker’s unsupported testimony on this issue little weight.” slip op. at 24

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

    “We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). Having considered the positions of the parties, we find that for the purpose of this decision, we do not need to construe these terms to resolve a dispute.” slip op. at 9

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

    “requirement.” Pet. Reply 5. We do not agree with Petitioner. We find that the language of the claims supports Patent Owner’s argument that the desired signal and the interferer signal are received together. As discussed infra, claim limitations 7.7 and 7.8 recite determining a signal strength of the interferer signal and determining a signal strength of the desired signal. These determinations must be performed at the same time; otherwise, the determinations of signal strengths would not be of the same wireless signal. See Larson II Decl. ¶ 70; Baker II Decl. ¶¶ 48–49 (explaining that consideration of signal strengths detected at the same time would be “essential”). The specification of the ’202 patent further supports this finding: “When a receiver is actively receiving a desired signal, each block in the signal path has at its input the desired signal as well as noise and possibly interfering signals.” Ex. 1001, 5:22–24; see also Figs. 2A, 2B (showing interferer signals and desired signals together).” slip op. at 17

  Patent outcomesUS 10,524,202 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,524,202
• Iriusrisk, Inc. v. Threatmodeler Software Inc.No claims unpatentable
  PTAB · Oct 2, 2024 · IPR2023-00656 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because Keenan did not disclose the claimed stored threats, and the obviousness combinations did not establish the mapping limitations or a reason to combine.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “construction of “threat,” which we find in the context of the ’366 patent does not encompass “risk.” See supra § III.D.3.a.1 (discussing “‘Threats’ versus ‘Risks’”). We agree with Patent Owner that Petitioner’s premise that “risk” includes “threats” or knowing risk allows for determination of threats is false, and belied by the parties’ experts who do not disagree on this distinction, namely that “risk” is not a “threat,” but rather represents the likelihood of a threat occurring compounded by the impact of such a threat on a given system (discussed above). See Ex. 2002, 24:3–25:5, 31:5–33:2 (Petitioner’s expert, Mr. Hurlbut, agreeing that “Risk = Likelihood x Impact”); Ex. 2009 ¶ 80; PO Sur-reply 9–10. Thus, we find unavailing Petitioner’s attempt to walk backwards from Keenan’s explicit disclosure of “risk” modeling into an anticipatory (explicit) disclosure of stored “threats” that may give rise to such risk. Viewing Keenan in the light agreed upon by the parties’ experts, where “risk” is a product of the “likelihood” of a threat occurring and the “impact” of such a threat on a given system, persuades us that although Keenan discloses “risk,” “types of risk,” and “risk ranking” (see, e.g., Ex. 1004, 16:21–63), Keenan uses such “risk” as a given value without explicitly disclosing any underlying stored threats or use thereof. See Ex. 2009 ¶ 112 (“Keenan does not disclose a system for measuring risk. The risk for objects is determined before the objects are imported into the [Integrated Object Environment]. Keenan does not make that measurement.”). Indeed, in order to “store” “threats” in “one or more databases” as recited in claim 1, such “threats” must be identified (i.e., known) at some level of specificity to the system. Petitioner does not direct us to any persuasive evidence that Keenan explicitly discloses using “threats” or “storing” an identified “threat,” let alone storing such “threat” in a database along with its association with a particular threat model component, and even more so with a threat model component that itself is correlated with a third-party diagram component as recited in claim 1.” slip op. at 32

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also may be reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 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. Considering the subject matter of the ’366 patent, the background technical field, the prior art, and Petitioner’s unopposed definition of the skilled artisan, we apply the level of skill set forth above, which is consistent with the testimony of Mr. Hurlbut (Ex. 1003 ¶ 33).” slip op. at 10

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

    “43:21–61. Contrary to Petitioner’s arguments (Pet. Reply 3–5), this “subset” feature shows that the “threats” stored in databases in claim 1 represent “potential events” that may or may not occur depending on the composition of a given system undergoing threat modeling—a system may implicate all stored threats, some of them, or even just one of them, leaving the remaining stored threats for use in preparing threat models for other systems. See PO Sur-reply 2–3 (discussing Figure 2 and arguing that “not every threat is necessarily included in the threat model”). We find the claim language itself supports interpreting “threats” as “potential events that, if they occur, can cause adverse effects to a target system.”” slip op. at 19

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

    “Claim 1 recites, in part, “the one or more mapping files correlating the threat model components with [“third party diagram components”].” Ex. 1001, 43:30–35. Generally, from the standpoint of what claim 1 requires, the parties’ views of “mapping file” are in alignment. Claim 1 plainly recites that a “mapping file” (where a “file” in the context of computer systems is data itself) correlates data A with data B, and when construed in the context of the subject claim language, correlates threat model components (i.e., data A) with third party diagram components (i.e., data B). We find that this interpretation of “mapping files” is sufficient to resolve the controversy between the parties. See Nidec Motor, 868 F.3d at 1017.” slip op. at 39

  Patent outcomesUS 10,713,366 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,713,366
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · Aug 6, 2024 · IPR2023-00312 · APJ Jo-Anne M Kokoski · IPR · Final written decision

  Claims 1–17 are unpatentable as obvious: claims 1–3, 5–13, and 15–17 over Benjamin and Giere673; claims 4 and 14 over Benjamin, Giere673, and Parish.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “(“PHOSITA”) “would have been a person holding a Bachelor’s or Master’s level college degree in Mechanical Engineering, Materials Science, Physics, Electrical Engineering, or a related field, and two years of training or experience in the design of inkjet printheads or semiconductor circuit layout.” Pet. 6 (citing Ex. 1002 ¶¶ 108–110). Although Patent Owner “disagrees that a degree in Materials Science is sufficient,” it “does not dispute [Petitioner’s] characterization of the level of ordinary skill in the art for the purpose of [the] Response.” PO Resp. 34. Patent Owner does not explain its basis for this disagreement, or how the disagreement relates to Petitioner’s proposal, which requires, inter alia, “two years of training or experience in the design of inkjet printheads or semiconductor circuit layout.” Pet. 6; PO Resp. 34. In the Institution Decision, we adopted the assessment offered by Petitioner. Dec. 8. Because Petitioner’s definition of the level of skill in the art is consistent with the ’823 patent and the asserted prior art, we maintain it” slip op. at 9

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

    “Patent Owner disagrees, and contends “that ‘adjacent’ carries its plain and ordinary meaning throughout the claims.” PO Resp. 34. Patent Owner argues that “Petitioners’ proposed construction of ‘adjacent’ to mean ‘next to and can include’ is not necessary to a proper understanding of the scope and meaning of” the claims, “does not reflect the ordinary meaning of ‘adjacent,’ and is not supported by a proper reading of the claims or specification of the ’823 patent.” Id. at 36. for adjacent (i.e., “next to and can include”) does not reflect the plain and ordinary meaning of adjacent. Rather, we conclude that the term “adjacent” should be afforded its plain and ordinary meaning (e.g., next to) in light of the claim language and intrinsic evidence. As we discuss below, Petitioner’s showing for claims 1 and 11 is consistent with the plain and ordinary meaning of “adjacent.” See Section II.D.3, infra. Based on our review of the complete trial record and the claim construction arguments raised by the parties, we determine that it is not necessary to expressly construe any other claim terms to resolve the parties’ dispute. Realtime Data, 912 F.3d at 1375.” slip op. at 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We agree with Petitioner that a PHOSITA would have been motivated to combine the teachings of Benjamin and Giere673 to maintain the substrate at an optimum temperature for producing ink droplets in order to increase the quality of the ink drops, use less energy to fire the heater arrays, and more easily maintain the printhead assembly due to less residue being deposited on the die. Pet. 26; see also DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1358 (Fed. Cir. 2006) may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient” are universal motivators to combine/modify prior art.). We also agree with Petitioner that Benjamin and Giere673 address the similar problem of “reduced print quality caused by the printhead operating outside its optimal temperature,” and provide the similar solution of disposing a temperature sense resistor “on the printhead for determining the mean temperature of the printhead and using a controller to maintain the printhead at its optimal temperature by, for example, lengthening and shortening the firing pulses sent to the heater arrays.” Pet. 56 (citing Ex. 1002 ¶ 243). In addition, we agree that Benjamin and Giere673 optimize print quality based upon a temperature value provided by a TSR. Id. at 55–58; Ex. 1002 ¶¶ 242–257. Accordingly, we find that a PHOSITA would have been motivated to make the proffered combination. Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023) (“[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”) (citations omitted); KSR, 550 at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 20

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “dispute Petitioner’s evidence that the combination of Benjamin and Giere673 teaches the limitation of claims 1 and 11. See PO Resp. We also reviewed Petitioner’s explanations and supporting evidence as to how Benjamin and Giere673 teaches the other limitations of claims 1 and 11, and we agree with, and adopt as our own, Petitioner’s analysis. Pet. 7–19, 36– 44; Ex. 1002 ¶¶ 112–137, 170–189, 226–227. We also determine that Giere673. Accordingly, we determine that Petitioner establishes by a preponderance of the evidence that independent claims 1 and 11 of the ’823 patent would have been obvious over the combined teachings of Benjamin and Giere673. 4. Analysis of Claims 2, 3, 5–10, 12, 13, and 15–17 Petitioner contends that the combination of Benjamin and Giere673 teaches all of the limitations of claims 2, 3, and 5–10 that depend from claim 1, and claims 12, 13, and 15–17 that depend from claim 11. Pet. 44– 54; Ex. 1002 ¶¶ 190–225, 228–238. Patent Owner does not dispute that the combination of Benjamin and Giere673 teaches the limitations of these claims. See PO Resp. Having reviewed the parties’ arguments and evidence, we are persuaded that Petitioner’s discussion of the particular structures in Benjamin and Giere673, and the explanations in the Petition and the Pond Declaration, shows that the combination of Benjamin and Giere673 teaches all of the limitations of dependent claims 2, 3, 5–10, 12, 13, and 15–17. Accordingly, we determine that Petitioner establishes by a preponderance of the evidence that claims 2, 3, 5–10, 12, 13, and 15–17 of the ’823 patent would have been obvious over the combined teachings of Benjamin and Giere673.” slip op. at 35

  Patent outcomesUS 7,484,823 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,484,823
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · Jul 31, 2024 · IPR2023-00309 · APJ John D Hamann · IPR · Final written decision

  Claims 1–6 and 8–20 are unpatentable: claims 1–3, 5–6, 8–10, and 13–15 as obvious over Benjamin144 and Benjamin703; claims 4, 11–12, and 16–20 as obvious with Childers.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “time it was made, we consider the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962–63 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id. In our Decision on Institution, we adopted the definition Petitioner” slip op. at 7

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

    “Turning to the claim language, we agree with Petitioner that “proximity is measured along the trace relative to the bondpad,” and “[n]othing in the claims requires a comparison to other structures, like the heater arrays.” Pet. Reply 6. For example, claim 3 recites “wherein the 8 Deposition Transcript of Steven Dietl (Dec. 19, 2023). bondpad supplies power to the first heater array and the second heater array portions by power traces physically separated proximal to the bondpad.” Ex. 1001, 6:43–46 (emphasis added). In this context, “proximal” relates to the power traces, and where they are separated, relative to the bondpad. Id. In other words, the traces are separated nearer to the bondpad (which is the traces’ proximal end relative to the bondpad) then the end of the traces (which is the traces’ distal end relative to the bondpad). Id. This conclusion is consistent with the definitions for proximal and distal from the dictionary that Patent Owner identifies. In particular, “proximal” is defined as “situated nearer to . . . the point of attachment,” and “distal” is defined as “situated away . . . from the point of attachment.” Ex. 2001, 3; Ex. 1016, 3. Here, the point of attachment is the bondpad. Of note, the dictionary also states that proximal is “[t]he opposite of distal,” which reinforces that the distance comparison for the separation is relative to the ends of the power traces. Ex. 2001, 3. Obviously, there are two ends to the traces with one being proximal to the bondpad and the other distal thereto. And we find that consulting the dictionary definition is appropriate here under our circumstances. See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (approving of “consult[ing] a general dictionary definition of [a] word for guidance” in determining ordinary meaning); Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1325 (Fed. Cir. 2008) (“[O]ur decisions, including Phillips, do not preclude the use of general dictionary definitions as an aid to claim construction.”) (citation omitted).” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “Lastly, we have reviewed the experts’ testimony for this term. And we are persuaded by Dr. Pond’s testimony as we find it consistent with the claim language and the cited dictionary definitions. Ex. 2005,9 16:20–19:23. In contrast, we find Mr. Dietl’s testimony for this term contradicts the claim language and the cited dictionary definitions. See Ex. 2004 ¶¶ 55–57.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “Thus, we view the combination of Benjamin144 and Benjamin703 as comprising a single disclosure in view of the incorporation by reference. See, e.g., Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Or at a minimum, the incorporation by reference provides an explicit motivation for one of ordinary skill in the art to combine the references’ teachings. See Kahn, 441 F.3d at 988; see also Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (“Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.”). In addition, however, Petitioner argues that “utilizing a bondpad to supply FIRE energy signals to the fire lines 214 like in Benjamin[]703 would have been an obvious combination of prior art elements to yield predictable results.” Pet. 45–46; Ex. 1002 ¶¶ 207–208. We agree with Petitioner’s argument and find that one of ordinary skill in the art would have found it obvious to combine Benjamin144 and Benjamin703 in the manner Petitioner does. In sum, we find that Petitioner shows that the combination of Benjamin144 and Benjamin703 teaches the bondpad limitation and provides sufficiently articulated reasoning with rational underpinning to support combining Benjamin144 and Benjamin703’s teachings.” slip op. at 31

  Patent outcomesUS 7,290,864 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,290,864
• Canon U.S.A., Inc. / Canon Inc. v. Slingshot Printing LLCAll claims unpatentable
  PTAB · Jul 30, 2024 · IPR2023-00313 · APJ John D Hamann · IPR · Final written decision

  Claims 1–15 are unpatentable: claims 1–3, 5–12, 14, and 15 as obvious over Benjamin and Giere673; claims 4 and 13 as obvious over Benjamin, Giere673, and Parish.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner “does not dispute this characterization of the level of ordinary skill in the art . . . , except that [Patent Owner] disagrees that a degree in Materials Science is sufficient.” PO Resp. 31–32 (citing Ex. 2003 ¶¶ 32–34). Patent Owner does not explain its basis for this disagreement, or how the disagreement relates to Petitioner’s proposal, which requires, inter alia, “two years of training or experience.” Id.; Pet. 6. Because Petitioner’s definition of the level of skill in the art is consistent with the ’708 patent and the asserted prior art, we maintain it for purposes of this Final Written Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC, 57 F.3d at 1579; In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 9

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

    “We agree with Patent Owner. In particular, we agree that claim 1, for example, recites a region disposed adjacent a pair of heater arrays which is part of a broader region disposed between two adjacent ink vias, and it is the broader region that includes the two heater arrays. Ex. 1001, 8:31–35. We also agree that Petitioner’s proposed construction for adjacent (i.e., “next to and can include”) does not reflect the plain and ordinary meaning of adjacent. Rather, we conclude that the term “adjacent” should be afforded its plain and ordinary meaning (e.g., next to) in light of the claim language and intrinsic evidence. As we discuss below, Petitioner’s showing for claim 1 is consistent with the plain and ordinary meaning of “adjacent.” See infra Section V.C. We determine that no further constructions are needed for us to render our Final Written Decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11

  • Expert testimonyPetitioner expert creditedOther

    “We find persuasive Petitioner’s arguments that one of ordinary skill in the art would have been motivated to apply Giere673’s teachings to Benjamin by disposing Giere673’s TSR in a region of Benjamin’s printhead die (e.g., Region 2). Pet. 22; Ex. 1002 ¶ 159. As we discuss above, Benjamin teaches that a TSR is used to sense printhead die temperature. Ex. 1004, 79:60–67; Fig. 25B. And Giere673 teaches locating a single TSR on a substrate in a region (e.g., between heater arrays) to measure the substrate’s mean temperature. See Ex. 1005, Fig. 5 (locating TSR 510 in a region between two columns of resistor heater elements); id. at 4:55–56 (“One or multiple TSRs 510 can be used to provide an approximation of the mean temperature of the substrate.”) (emphasis added). We agree with Petitioner that one of ordinary skill in the art would have been motivated to combine the teachings to optimize the print quality using the temperature value measured by the TSR located on the substrate as taught by Giere673. Pet. 31 (citing Ex. 1002 ¶¶ 181–195 (testifying to functional benefits motivating the combination)). “‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023). Optimizing print quality is such a universal motivation. Ex. 1002 ¶¶ 181–182. We also agree with Petitioner and find that Benjamin and Giere673 address a similar problem (i.e., reduced print quality caused by the printhead operating outside its optimal temperature). Pet. 31 (citing Ex. 1002 ¶ 181). In addition, we agree that Benjamin and Giere673 optimize print quality based upon a temperature value provided by a TSR. Id. (citing Ex. 1002 ¶¶ 181–195). Accordingly, we find that one of ordinary skill in the art would have been motivated to make the proffered combination. Intel, 61 F.4th at 1379 ( “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”); KSR, 550 at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 24

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “We find persuasive Petitioner’s arguments that one of ordinary skill in the art would have been motivated to apply Giere673’s teachings to Benjamin by disposing Giere673’s TSR in a region of Benjamin’s printhead die (e.g., Region 2). Pet. 22; Ex. 1002 ¶ 159. As we discuss above, Benjamin teaches that a TSR is used to sense printhead die temperature. Ex. 1004, 79:60–67; Fig. 25B. And Giere673 teaches locating a single TSR on a substrate in a region (e.g., between heater arrays) to measure the substrate’s mean temperature. See Ex. 1005, Fig. 5 (locating TSR 510 in a region between two columns of resistor heater elements); id. at 4:55–56 (“One or multiple TSRs 510 can be used to provide an approximation of the mean temperature of the substrate.”) (emphasis added). We agree with Petitioner that one of ordinary skill in the art would have been motivated to combine the teachings to optimize the print quality using the temperature value measured by the TSR located on the substrate as taught by Giere673. Pet. 31 (citing Ex. 1002 ¶¶ 181–195 (testifying to functional benefits motivating the combination)). “‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023). Optimizing print quality is such a universal motivation. Ex. 1002 ¶¶ 181–182. We also agree with Petitioner and find that Benjamin and Giere673 address a similar problem (i.e., reduced print quality caused by the printhead operating outside its optimal temperature). Pet. 31 (citing Ex. 1002 ¶ 181). In addition, we agree that Benjamin and Giere673 optimize print quality based upon a temperature value provided by a TSR. Id. (citing Ex. 1002 ¶¶ 181–195). Accordingly, we find that one of ordinary skill in the art would have been motivated to make the proffered combination. Intel, 61 F.4th at 1379 ( “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”); KSR, 550 at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”).” slip op. at 24

  Patent outcomesUS 7,594,708 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 7,594,708
• Apple Inc. v. Immervision, Inc.All claims unpatentable
  PTAB · Jul 29, 2024 · IPR2023-00472 · APJ Kristina M Kalan · IPR · Final written decision

  Claims 1–7 are unpatentable: claims 1 and 3–7 are anticipated by Thibault, and claims 1–7 are obvious over Thibault.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “B. Level of Ordinary Skill in the Art In our Institution Decision, we adopted Petitioner’s undisputed contention that a POSITA (person of ordinary skill in the art) “would have had at least a Bachelor’s degree in an academic area emphasizing physics, optical engineering, electrical engineering and/or a similar discipline, and at least five years of experience in developing and designing optical imaging systems and have familiarity with image processing algorithms and optical design software” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 8 (citing Ex. 1003 ¶ 15). Patent Owner states: “Solely for purposes of this Response, Patent Owner does not object to Petitioner’s definition of a POSA [person of ordinary skill in the art].” PO Resp. 14 (citing Ex. 2001 ¶ 45). Accordingly, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12

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

    “To the extent necessary to determine whether the disputed language of limitation 1[e] encompasses both Figure 6 and Figure 7, we agree with Petitioner that the language of limitation 1[e] encompasses both Figure 6 and Figure 7. We determine we need not expressly construe any other claim terms. See Vivid Techs., 200 F.3d at 803.” slip op. at 27

  • Strike new argumentNew argument consideredDecided for petitioner

    “presented a more comprehensive claim construction position in its Petition, we are not persuaded that Petitioner’s “claim construction” positions in this proceeding are improperly responsive or belated. Claim construction can be an evolving issue. We have reviewed Petitioner’s presentation of its arguments at the outset, in the Petition, and we have addressed the Petition’s arguments regarding whether limitation 1[e] is an intended use, above. Regarding the remaining arguments, we note that our rules provide that a “reply may only respond to arguments raised in the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). The Board “will permit the petitioner, in its reply brief, to address issues discussed in the institution decision,” but a petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability. A party also may submit rebuttal evidence in support of its reply.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), available at https://www.uspto.gov/ TrialPracticeGuideConsolidated (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). We have reviewed the parties’ post-institution arguments regarding limitation 1[e], and we are not persuaded that the subsequent development of both parties’ positions on the interpretation of this term throughout the course of this proceeding is contrary to our rules. “There is no rule, for example, requiring a petition to describe all possible or reasonable claim constructions and to present invalidity theories under those constructions.” Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1380–81 (Fed. Cir. 2023). The Axonics court further opined that “we have continued to recognize that a petitioner is entitled under the APA to respond to new claim construction arguments made by a patent owner.” Id. at 1382. A recent Federal Circuit case addressing Axonics and a petitioner’s opportunity to respond to a patent owner’s newly presented claim construction argument, which was decided after oral hearing in this case, supports the Axonics approach. Apple v. Omni MedSci, No. 2023-1034, slip op. at 11–12 (Fed. Cir. June 21, 2024). This case summarizes some relevant pre-existing case law in reaching its conclusion that under “both Axonics and earlier precedents, the Board abused its discretion here in refusing to consider [petitioner] Apple’s reply argument.” Id. (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016), rev’d on other grounds sub nom. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018); Hamilton Beach Brands, Inc. v. f’real Foods LLC, 908 F.3d 1328, 1338–39 (Fed. Cir. 2018)).” slip op. at 21

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Thibault but, rather, only that “Thibault renders obvious claim 2.” Pet. 34 (citing Ex. 1003 ¶¶ 127–128). Petitioner argues that Thibault teaches “special optimization” of MTF to “control the image quality in production so that it remains in the specification.” Id. (citing Ex. 1004, 3). Petitioner further argues that “a POSITA would have understood that Thibault’s lens designs were intended to achieve ‘constant image quality across a whole field of view,’” or “that it would have been obvious to achieve such an outcome using known ‘guidelines’ within the industry.” Id. at 35 (citing Ex. 1003 ¶ 128). Petitioner provided no development of an anticipation position with respect to claim 2. Accordingly, although Petitioner’s uncontested position on claim 2 supports a finding of obviousness based on Thibault, because it is reasonable, not persuasively controverted, and supported by testimony, it does not support a finding of anticipation.” slip op. at 50

  Patent outcomesUS 10,795,120 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,795,120
• Apple Inc. v. Ald Social, LLCAdverse judgment
  PTAB · Jul 23, 2024 · IPR2023-01399 · APJ Barbara A Benoit · IPR · Adverse judgment

  The Board entered adverse judgment against ALD Social, LLC on claims 1–16 of the ’158 patent and terminated IPR2023-01399 after finding Patent Owner unequivocally abandoned the contest.

  RulingsAdverse judgment

  • Adverse judgmentAdverse judgmentGranted

    “judgment against itself at any time during a proceeding, and abandonment of the contest is construed by the Board to be a request for adverse judgment. See IPR2023-01398, Paper 8, 3 (citing 37 C.F.R. § 42.73(b)); IPR2023-01399, Paper 7, 3 (citing 37 C.F.R. § 42.73(b)). Our orders also stated: Under the specific circumstances of this case, we determine Patent Owner’s failure to file long-overdue mandatory notices required by 37 C.F.R. § 42.8(a)(2) to demonstrate Patent Owner’s abandonment of the contest. Under 37 C.F.R. § 42.5(c), in the particular circumstances of this case, and in the interests of justice, we set a deadline for Patent Owner to file mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2) no later than June 10, 2024. IPR2023-01398, Paper 8, 4 (emphasis in original); IPR2023-01399, Paper 7, 4 (emphasis in original). Our orders further explained that we “would view, in the particular circumstances of this case, Patent Owner’s filing of mandatory notices by the deadline as an indication that Patent Owner had not abandoned the contest.” IPR2023-01398, Paper 8, 4; IPR2023-01399, Paper 7, 4.” slip op. at 5

  None
  Patents in suitUS 9,402,158

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.