• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00744 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 1–3, 5, 6, 8–10, and 12–14 were not shown unpatentable because Halbert did not disclose the claimed ranks operating at the specified data rate.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner does not provide a different assessment of the level of ordinary skill, but Dr. Przybylski states that an individual with the level of experience identified by Petitioner “would have less knowledge and familiarity” than presumed by Petitioner’s definition. Ex. 2003 ¶ 46. Dr. Przybylski, however, provides no further discussion explaining this apparent disagreement with Petitioner, nor does he set forth what level of knowledge and familiarity a person of ordinary skill in the art would have had. Based on the complete trial record, we determine that Petitioner’s proposed skill level is consistent with the level of ordinary skill evidenced by the ’314 patent and the asserted prior art, and we adopt that skill level with the exception of the phrases “at least,” which introduce vagueness as to the amount of experience.” slip op. at 6

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

    “We disagree with Petitioner’s interpretation. Taking Petitioner’s point that “‘specified data rate’ means only that the data rate is specified in some way” (Pet. Reply 4), we do not see how, once the rate is specified, claim 1’s later recitations of “the specified data rate” could refer to any other rate, as Petitioner’s arguments suggest. Petitioner argues that “it is clear that the ‘specified data rate’ that provides antecedent basis for later recitations of that term is merely the data rate specified for ‘communicat[ing] data’ between the ‘memory module’ and the external ‘memory controller of the computer (alteration by Petitioner). We agree with this statement, and later recitations of “the specified data rate,” therefore, refer to the data rate that is so specified. Petitioner provides no persuasive argument to support its position that later recitations of “the specified data rate” could be satisfied by data rates that are not the “specified data rate.”” slip op. at 7

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

    “PO Resp. 19; see also Ex. 2003 ¶¶ 68–72 (Dr. Przybylski’s testimony explaining this annotated figure). Halbert’s Figure 5 is a timing diagram for two consecutive read operations (Ex. 1005 ¶¶ 16, 37), and Patent Owner includes annotations to show each of ranks 140 and 142 outputting data onto their respective data busses at half the rate that data are output from data interface circuit 120 on the DQ data line. In particular, Halbert explains that each of ranks 140 and 142 is “capable of performing m-bit-wide data transfers.” Ex. 1005 ¶ 30. On a read command, rank 140 sends m-bit-wide data to bi-directional data register 126 on line RDQ0 at the same time that rank 142 sends m-bit-wide data to bi-directional data register 128 on line RDQ1, as shown in Figure 5 between T7n and T8n. Ex. 1005 ¶¶ 31–32, 39. Halbert discloses that register 126 or from register 128 to output to buffer 122, which are then output on line DQ. Ex. 1005 ¶ 33. Halbert explains that “[d]ata is serialized from the data registers onto the memory data bus by reading 2m bits into the data registers during one memory device read cycle, and then driving these bits, m at a time, through MUX 124.” Ex. 1005 ¶ 33. As shown in Halbert’s Figure 5, over one clock cycle (T7n–T8n), each of ranks 140 and 142 outputs one piece of m-bit-wide data, and over one clock cycle (T8–T9), those two pieces of m-bit-wide data are output on line DQ to the system memory data bus. Halbert explains that the second read operation proceeds in the same fashion as the first and that “[t]he net result is that the memory data bus transfers 4m bits of data in two memory bus clock cycles (four mbit transfers), with only two data accesses performed at each memory device on the module.” Ex. 1005 ¶ 42. Thus, Halbert’s memory module outputs data to the system memory data bus at twice the rate that each of ranks 140 and 142 outputs data. See Ex. 2003 ¶¶ 68–73 (Dr. Przybylski’s credible testimony explaining Halbert’s data rates).” slip op. at 11

  Patent outcomesUS 10,489,314 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,489,314
• Micron Technology, Inc. / Micron Semiconductor Products, Inc. et al. v. Netlist, Inc.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00745 · APJ Daniel J Galligan · IPR · Final written decision

  Claims 15–20 and 22–33 were not shown unpatentable because Petitioner did not adequately explain how the proposed combination would use active and non-active chip select signals.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have been someone with an advanced degree in electrical or computer engineering and at least two years working in the field, or a bachelor’s degree in such engineering disciplines and at least three years working the field,” and Petitioner identifies particular knowledge that a person of ordinary skill in the art would have had. Pet. 3–4 (citing Ex. 1003 ¶ 52).” slip op. at 5

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

    “C. Claim Construction We need not construe expressly any claim terms to decide the issues before us. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6

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

    “As outlined above, Petitioner presents reasoning as to why a person of ordinary skill in the art would have included chip select signals in Halbert’s Figure 4 device. See Pet. 20–31 (addressing limitations 15.4 and 15.5). But Petitioner’s contentions about the use of chip select signals do not address sufficiently how Halbert’s Figure 4 device would operate with active and non-active chip select signals, as recited in claim 15. Indeed, as Patent Owner points out (PO Resp. 12), Petitioner’s contentions for limitation 15.6 only rely on Halbert’s Figure 2 prior art device. See Pet. 31–32. Petitioner’s lack of explanation as to how active and non-active signals would affect the operation of Halbert’s Figure 4 device is significant, as explained below.” slip op. at 12

  Patent outcomesUS 10,489,314 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 10,489,314
• Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentable
  PTAB · Oct 3, 2023 · IPR2022-00576 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 13, 14, and 23–29 were not shown unpatentable as obvious over Roberts and Taraschuk, with or without Wright, because the asserted combinations did not teach or suggest the claimed delta features.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We do not discern a substantial difference between the parties’ definitions for the level of ordinary skill in the art. Instead, we determine that the parties’ definitions are substantially similar. We adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’872 patent and asserted prior art of record. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 9

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

    “We need not construe any claim term in our Decision in order to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 9

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

    “for a LUT having the recited deltas except for Dr. Blumenthal’s analysis. Although Wright generally teaches compensating for mismatches, Dr. Blumenthal’s analysis fills in limitations 13.8 and 13.9––Petitioner does not set forth a sufficiently supported reason for using the specific values recited in limitations 13.8 and 13.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. . . . Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 59 (citing Ex. 1003 ¶ 265). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 60. Although there are three possible relationships between two, consecutive deltas, there are many possible sequences of deltas––Petitioner does not sufficiently show a finite number of solutions in its challenge.” slip op. at 30

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

    “We agree with Patent Owner’s argument that the portions of Taraschuk in column 7, lines 61–67 and column 8, lines 13–15 cited by Petitioner in its challenge to claim 13 teach “an end-to-end approach” “because that calculation involves predistortion of the input M-bit word by subtracting a digitized analog sample of the ultimate output,” and as such, teach “[a]n approach that necessarily does one combined correction for all of the nonlinearities that occur in-between those ends—whether bit mismatches in the digital logic or non-linearities in the Mach-Zehnder modulator.” PO Sur-reply 18 (citing PO Resp. 30–36; Ex. 2018 ¶¶ 48, 49, 85–87, 89, 103; Ex. 1006, 7:34–39, 7:61–67). We further agree with Patent Owner’s assertion that [Patent Owner] and Prof. Dallesasse are not suggesting that Dr. Blumenthal should model the logic-level mismatches. But rather pointing out that calculating an idealized sinusoidal response in isolation is not obvious (or flowing naturally) from a reference that can only deal with compensating the combined response of the modulator and digital logic mismatches together—via real-time pre-distortion fed back from the ultimate output and subtracted from the input. Dallesasse testifies that Dr. Blumenthal starts with the premise that all that is required is deriving a complementary function to the sinusoidal response. . . . But this ignores that the disclosure of Taraschuk describes compensating “the sinusoidal response of the modulator” and “logic level mismatches through the D/A converter” together. . . . Dr. Blumenthal’s complementary sinusoidal correction curve won’t do that. The combined non-linearity from the multiple sources likely won’t simply be evenly sinusoidal. Taraschuk does not disclose, or in my opinion render obvious, any pre-calculation solution. (Taraschuk mentions a real-time analog feedback loop to pre-distort, which would not involve pre-calculation.) And it certainly does not suggest one that could deal with the combined and likely complex non-linearities described.” slip op. at 28

  Patent outcomesUS 11,133,872 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,133,872
• Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentable
  PTAB · Sep 29, 2023 · IPR2022-00575 · APJ Monica S Ullagaddi · IPR · Final written decision

  Claims 1–12, 15–22, and 30 were not shown unpatentable under § 103 over Roberts and Taraschuk because the combination did not teach or suggest the claimed mapping.

  RulingsFinal written decision

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

    “Inst. Dec. 25–26 (citing Ex. 1006, 8:2, 8:8, 6:61–65; Ex. 1003 ¶ 147; Prelim. Resp. 46). Based on our review of the complete record developed during trial, we are persuaded to modify our preliminary determinations. For the reasons discussed below, we are persuaded that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion because the ’872 patent specification distinguishes analog pre-distortion (see Ex. 1001, 1:55–2:34) and the prosecution history specifically distinguishes analog pre-distortion from the claimed approach (see Ex. 1002, 172). We find persuasive Dr. Dallesasse’s testimony that “a person of ordinary skill in the art reading the [’872] patent would understand that th[e] [claimed] approach differs from pre-distortion based on real-time measured analog modulator output.” Ex. 2018 ¶ 33 (citing-in-part Ex. 1001, 2:3–7 (’872 patent disclosing common, prior art solutions such as “an analog predistortion circuit to feed the modulator”)); see also Ex. 1001, (the ’872 patent describing the need for a “digital to analog converter” that would “improve[] linearity of response without sacrificing efficiency or dynamic range” as in the common, prior art solutions). Dr. Dallesasse explains how “the prosecution history of the ’872 patent [illustrates] that when [Patent Owner] changed ‘correct for non-linearities’ to the more specific language ‘determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,’” “the Examiner then allowed the claims over a rejection based on Roberts, which “suggests that there are ways to ‘correct for non-linearities’ that do not meet the amended Ex. 2009, 2; Ex. 2003). During prosecution, Patent Owner argued: Roberts does not disclose a “digital-to-digital mapping,” where, “for a given plurality of N digital input data bits, the mapping to the corresponding M digital output data bits is determined based on a pattern for actuating drive voltages that alters the linearity of an optical response of the modulator,” as recited in amended claim 1. Instead, the linear compensation in Roberts is performed pursuant to a compensation function c(t) when the Vx(n) multi-bit sample streams are generated. Importantly, this linear compensation in Roberts occurs before the mapping of Vx(n) to Sx(n). As a result, the mapping between Vx(n) to Sx(n) in Roberts, such as the mapping shown in Table 1 of Roberts, is not a part of the linear compensation operation performed in Roberts. Ex. 1002, 172 (emphasis added). We interpret the quoted passage to exclude analog pre-distortion because we interpret the argument distinguishing Robert’s compensation as happening “before the mapping” to refer to pre-distortion techniques––in particular, those accomplished by analog compensation function, c(t). Id. Both the ’872 patent and Patent Owner’s arguments during prosecution support Dr. Dallesasse’s testimony and Patent Owner’s position that the scope of claim 1 does not encompass linear compensation methods effected by analog pre-distortion.” slip op. at 21

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

    “mapping is based on an analog feedback loop, by . . . quoting from the reference and leaving out the very next sentence” has merit. Sur-Reply 8 (citing Pet. Reply 23). Petitioner does not sufficiently address the cited teachings and in particular, Taraschuk’s teachings of calculating a difference between a “sampled analog output signal (S) and corresponding M-bit word” to a calculate a mapping “required to obtain the desired output analog signal level.” Ex. 1006, 7:34–39. We are persuaded Petitioner does not sufficiently rebut Patent Owner’s contention that Roberts’ and Taraschuk’s teachings of linear compensation are implemented by analog pre-distortion. Petitioner cannot ignore these teachings of Taraschuk and consider only the portions that support its challenge. See Pet. Reply 17 (citing Pet. 43–45; Ex.1006, 7:56–60) (“Patent Owner’s emphasis on Taraschuk’s digital feedback loop is also misplaced because the Petition simply relied on Taraschuk’s linearizer 44 as a discrete, known device for performing non-linear compensation of a Mach-Zehnder modulator.” (emphasis added)). Petitioner cannot set forth the teachings of Taraschuk in such a piecemeal sufficiently explain why the converter of Taraschuk relies on analog pre-distortion, or explain why analog pre-distortion is encompassed by the invention recited in independent claim 1, Petitioner does not sufficiently carry its burden.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable

    “Second, Petitioner concludes that “a POSITA would have found it obvious to map input bits to output bits within the look-up table such that the output bits correspond to voltage values to be transmitted to electrodes of an optical modulator,” but offers no support other than Robert’s teaching that the DSP’s output is a multi-bit parallel binary signal. See id. at 51 (citing Ex. 1005, 6:40–42). That is, the sole basis for Petitioner’s conclusion that it would have been obvious to perform the claimed method is that the output is the same. Id. This is impermissible hindsight. Third, Petitioner essentially argues that a person would have found it obvious to perform the mapping because Taraschuk teaches a look-up table and non-linear compensation. Id. at 51–52. Yet the claim recites how the mapping is performed, which is left unaddressed by Petitioner. Id. That is, Petitioner has not shown where Taraschuck teaches mapping a given number look-up table, so that the output bits compensate for the non-linear effects of the optical modulator. Id. at 52. Rather, Petitioner provides a piecemeal analysis that uses the ’872 patent’s specification as a blueprint to pull together a look-up table, non-linear compensation, and a modulator to arrive at the claimed invention. See id. Thus, all three rationales for limitation 1.9 are deficient. See PO Resp. 27.” slip op. at 30

  • Skill levelSkill level petitioner adoptedOther

    “We do not discern a substantial difference between the parties’ definitions for the level of ordinary skill in the art. Instead, we determine that the parties’ definitions are substantially similar. We adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’872 patent and asserted prior art of record. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 8

  Patent outcomesUS 11,133,872 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,133,872
• Hope Medical Enterprises, Inc. v. Fennec Pharmaceuticals, Inc.No claims unpatentable
  PTAB · Sep 1, 2023 · IPR2022-00125 · APJ Julia Heaney · IPR · Final written decision

  The Board granted the revised noncontingent motion to amend, canceled claims 18 and 20, and entered substitute claims 28 and 29, which were not proven obvious.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner, relying on the testimony of Dr. Rogers, contends that a person of ordinary skill in the art would have [had] a bachelor’s degree or equivalent in any of the pharmaceutical sciences with at least 5 years of experience in solid state chemistry; a master’s degree in any of the pharmaceutical sciences with at least 3 years of experience in solid state chemistry; or a Ph.D. in any of the pharmaceutical sciences with 1 year of experience in solid state chemistry. Pet. 8 (citing Ex. 1008 ¶¶ 24–28). Petitioner further states that such “[a] person could also have qualified as a [person of ordinary skill in the art] with some combination of (1) more formal education and less technical or professional experience or (2) less formal education and more technical or professional experience.” Id. Patent Owner does not dispute Petitioner’s proposed definition of a person of ordinary skill. See generally MTA, RMTA. Having considered the parties’ arguments and evidence, we adopt the level of ordinary skill in the art proposed by Petitioner, because it is consistent with the disclosures of the ’363 patent and the prior art of record. We note, however, that neither party contends that the outcome of this case would differ based on our adoption of any particular definition of a person of ordinary skill in the art.” slip op. at 12

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

    “In our Preliminary Guidance, we construed “for a pharmaceutical composition” to mean “in combination with pharmaceutically acceptable excipients,” based on the ’363 patent’s definition providing that “[t]he terms ‘formulation’ or ‘pharmaceutical composition’ as used herein refers to the drug in combination with pharmaceutically acceptable excipients.” Prelim. Guid. 5–6 (citing Ex. 1001, 12:26–28; Ex. 2010, 17:11–12; Ex. 2011, 26:26– 27). We also encouraged the parties to address whether “for a pharmaceutical composition,” which appears in the preamble of substitute claims 28 and 29, is limiting, as opposed to a statement of intended use or purpose. Id. at 6. Following our Preliminary Guidance, the parties submitted further arguments concerning the term “for a pharmaceutical composition.” Patent Owner argues the term requires that the claimed process provide STS that is sufficiently pure for use in a pediatric patient (see RMTA 8–11) and that the word “drug” in the ’363 patent’s definition of “pharmaceutical composition” requires that the anhydrous STS is of sufficient purity for pharmaceutical use. Reply RMTA 3. Petitioner argues that the construction set forth in our Preliminary Guidance was correct. See Sur-reply RMTA 2–3. Having considered the arguments and evidence, we do not further construe the term “for a pharmaceutical composition” in this Decision because, as discussed in our analysis of obviousness below, it is not necessary to construe the term in order to determine whether Petitioner has met its burden of demonstrating by a preponderance of the evidence that proposed substitute claims 28 and 29 are unpatentable. 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 13

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend, grantedGranted

    “1. Reasonable Number of Substitute Claims A motion to amend must “propose a reasonable number of substitute claims.” 35 U.S.C. § 316(d)(1)(B); see 37 C.F.R. § 42.121(a)(3) (“A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims.”). Patent Owner proposes the same number of substitute claims as the original challenged claims that are cancelled, i.e., a one-to-one substitution for a total of two substitute claims. MTA 2; RMTA. “There is a rebuttable presumption that a reasonable number of substitute claims per challenged claim is one (1) substitute claim.” Lectrosonics, Paper 15 at 4; see 37 C.F.R. § 42.121(a)(3). Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner proposes a reasonable number of substitute claims. 2. Support in the Original Disclosure Patent Owner has identified written description support in the originally filed disclosure of the ’363 patent for the new limitations added for the proposed substitute claims. See RMTA 5–8. We have reviewed Patent Owner’s assertions of support in the original disclosure for the proposed revised substitute claims and determine that sufficient support exists. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 3. Respond to a Ground of Unpatentability “A motion to amend may be denied where . . . [t]he amendment does not respond to a ground of unpatentability involved in the trial.” 37 C.F.R. § 42.121(a)(2)(i). Patent Owner asserts that the proposed revised substitute claims are patentable over the combination of references that forms the basis of the obviousness ground on which we instituted trial. RMTA 12–13. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement. 4. Scope of the Claims Patent Owner asserts that the proposed revised substitute claims do not enlarge the scope of original claims 18 and 20. RMTA 5. We have reviewed Patent Owner’s assertion that the purity amendments of proposed revised substitute claims 28 and 29 narrow the claims’ scope. Id. Petitioner does not argue otherwise. See generally Opp. RMTA. Therefore, we determine that Patent Owner has met this requirement.” slip op. at 17

  • BurdenNot shown unpatentable

    “determine the evidence relied on by Petitioner does not support Petitioner’s position that a person of ordinary skill in the art would have been motivated to combine Levenson, Sherman, Edwards, and USP. Petitioner’s contention that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman is based on Dr. Rogers’s testimony that “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151; see Pet. 36, 38. Dr. Rogers further testified it would have been obvious to add Edwards’s dehydrating step to the preparation of STS pentahydrate “which is obtained following the teachings of Levenson and Sherman” because “Edwards itself discloses dehydrating [STS] pentahydrate.” Id. ¶ 154. The Petition included these arguments even though they were inconsistent with Petitioner’s previous statement, during the Sherman prosecution, that Levenson taught STS heptahydrate, and therefore “does not provide any teaching with respect to [STS] pentahydrate.” Ex. 2013, 97. This prior inconsistent statement undercuts Petitioner’s rationale for combining Levenson, Sherman, and Edwards in this proceeding. Moreover, Petitioner’s rationale for combining the references in this proceeding is inconsistent with its statements about Levenson during the Sherman prosecution. Recognizing this inconsistency, Petitioner now takes the position that the Petition and Dr. Rogers’s testimony were incorrect. Paper 32; see Tr. 21:14–22:7, 59:1–2 (reemphasizing that “Petitioner maintains the statements that it made in the Sherman prosecution regarding Levenson”). Petitioner attempts to rationalize the inconsistency between its statements in the Sherman prosecution (including that “Levenson does not provide any teaching with respect to [STS] pentahydrate”) and its position in this proceeding by arguing that Dr. Rogers relies on Levenson as teaching surface activation “regardless of any particular hydrates Levenson discloses.” Tr. 22:8–9. That argument is not persuasive, because Dr. Rogers’s declaration clearly states the primary reason for his opinion that it would have been obvious to a person of ordinary skill in the art to combine the teachings of Levenson with Sherman: “[b]oth references disclose synthesis of sodium thiosulfate pentahydrate.” Ex. 1008 ¶ 151. Contrary to Petitioner’s argument, Dr. Roger’s reliance on the surface activation teachings of Levenson is because he believes that both references pertain to STS pentahydrate; the surface activation teachings are not stated as an independent reason to combine the references. Id. Petitioner provides no further explanation of how a person of ordinary skill in the art would have been motivated to combine Levenson’s teachings regarding manufacture of STS heptahydrate with Sherman’s and Edwards’s teachings regarding STS pentahydrate, or how a person of ordinary skill would have regarded the difference between STS hydrates. Dr. Rogers’s acknowledgement of stability differences among STS hydrates highlights the insufficiency of Petitioner’s showing in this regard. See Ex. 2005, 35, 39. Having changed its position at the close of trial and having effectively withdrawn Dr. Rogers’s testimony as to similarities between Levenson and” slip op. at 24

  Patent outcomesUS 10,792,363 not shown unpatentable
  Claim constructioncites KSR · Graham
  Patents in suitUS 10,792,363
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00291 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–9 and 15–17 were not shown unpatentable because the asserted combinations did not disclose the construed network-based portal residing on a server side of a network.

  RulingsFinal written decision

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

    “network-based portal” as recited in the challenged claims is sufficiently broad to encompass residing at either a client or server side of a network, as Petitioner contends, or is limited to residing at the server side, as Patent Owner contends. On the preliminary record, we declined to adopt Patent Owner’s exclusion of residing at a client side when extending our invitation to the parties to elaborate on their positions. Dec. 11. But we are mindful that “the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if convinced its initial inclinations were wrong.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). slip op. at 14

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”).” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 19:63, 20:4, 20:6, 20:11, 20:15–16, 20:21–22, 20:29–30, 20:42–43, 20:46–47; see PO Resp. 19 (Patent Owner contending that, because of the repeated recitation of “network-based portal” throughout the body of independent claim 1, the “preamble therefore breath[e]s life and meaning into claim 1”). Contending that a “network-based portal” is “a web page or interface that connects multiple users to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 36. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. Because the deficiency in Petitioner’s showing applies to the claims that depend from claim 1 because they inherit the “network-based portal” limitations, we also conclude that Petitioner does not show that any of claims 2–5, 15, or 17 is unpatentable under 35 U.S.C. § 103(a) over Diacakis; that any of claims 7–9 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland; nor that” slip op. at 38

  Patent outcomesUS 10,708,727 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,708,727
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00202 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–20 were not shown unpatentable because the asserted obviousness grounds did not show a network-based portal residing on the server side of a network.

  RulingsFinal written decision

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

    “Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 16

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “The full record developed at trial includes the Declaration of Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 46–64. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Our evaluation also necessarily remains cognizant that “[i]n 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”)). This burden never shifts to Patent Owner. See Dynamic 3 Petitioner filed a second Declaration by Dr. Almeroth after institution (such that it was not available on the preliminary record), but that Declaration is provided primarily as supplemental evidence under 37 C.F.R. § 42.64(b)(2) to address objections by Patent Owner to the authenticity of various other exhibits. Ex. 1038 ¶ 2. Dr. Almeroth’s second Declaration otherwise merely incorporates Dr. Almeroth’s “technical opinions” by reference to his first Declaration, without providing any further facts or expressing any further opinions that bear on the merits, including claim construction. Id. ¶ 1. Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 14

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 24. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 70–75. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “Both the preamble and the body of independent claim 1 recite “a network-based portal.” Ex. 1001, 20:3, 20:11, 20:20, 20:23, 20:29, 20:31, 20:48, 20:54; see PO Resp. 19 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 1). Contending that a “network-based portal” is “a web page or interface that connects clients to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 34. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 1 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with respect to Petitioner’s analysis of independent claims 11 and 19. See Pet. 55–57 (Petitioner’s analysis of claim 11 relying substantially on analysis of claim 1), 59–60 (Petitioner’s analysis of claim 19 relying substantially on analysis of claim 1). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 1– 20 is unpatentable under 35 U.S.C. § 103(a) over Diacakis.” slip op. at 36

  Patent outcomesUS 10,142,810 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,142,810
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00295 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–12, 22–24, and 33–67 were not shown unpatentable because the asserted combinations did not establish the claimed server-side network-based portal.

  RulingsFinal written decision

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

    “The issue before us is therefore well-defined, namely whether a “network-based portal” as recited in the challenged claims is sufficiently broad to encompass residing at either a client or server side of a network, as Petitioner contends, or is limited to residing at the server side, as Patent Owner contends. On the preliminary record, we declined to adopt Patent Owner’s exclusion of residing at a client side when extending our invitation to the parties to elaborate on their positions. Dec. 23–25. But we are mindful that “the Board is not bound by any findings made in its Institution Decision. At that point, the Board is considering the matter preliminarily without the benefit of a full record. The Board is free to change its view of the merits after further development of the record, and should do so if” slip op. at 14

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

    “Both the preamble and the body of independent claim 7 recite “a network-based portal.” Ex. 1001, 21:53, 21:58, 22:2, 22:14–15, 22:19, 22:20–21, 22:27, 22:33, 22:38–39; see PO Resp. 28 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 7). Under our adopted construction, Petitioner does not show that the combination of Tanigawa and Hullfish meets the claim requirements of a “network-based portal.” That is, Petitioner’s reliance on a client-resident interface to meet the claim’s recitation of a “network-based portal” is incompatible with our construction of that phrase. We accordingly conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 7 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish. The same deficiency exists with respect to Petitioner’s analysis of independent claims 38 and 46. See Pet. 64 (Petitioner’s analysis of claim 38 relying substantially on analysis of claim 7), 65–67 (Petitioner’s analysis of claim 46 relying substantially on analysis of claim 7). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53, 55, 57, 58, or 64– 66 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa and Hullfish; that any of claims 8, 9, 43, 44, 47, 48, 50, or 54 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, and Loveland; that any of claims 37, 42, 56, 59–63, or 67 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, and Takahashi; or that claim 45 is unpatentable under 35 U.S.C. § 103(a) over Tanigawa, Hullfish, Loveland, and Takahashi.” slip op. at 36

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Dr. Rouskas (Patent Owner’s expert), who directly opines on this issue. Ex. 2005 ¶¶ 60–85. Although the record also includes a Declaration by Petitioner’s expert, Dr. Almeroth, that Declaration was filed with the Petition and neither responds to Dr. Rouskas’s opinions nor provides any testimonial evidence to support Petitioner’s positions beyond what was available at the preliminary stage of the proceeding.3 See generally Ex. 1003. In evaluating the fully developed record, we necessarily accord greater weight to Dr. Rouskas’s testimony than to Petitioner’s attorney argument as advanced in Petitioner’s Reply. See, e.g., Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“[U]nsworn attorney argument . . . is not evidence and cannot rebut . . . other admitted evidence . . . .”). Our evaluation also necessarily remains cognizant that “[i]n 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. 3 Petitioner filed a second Declaration by Dr. Almeroth after institution (such that it was not available on the preliminary record), but that Declaration is provided primarily as supplemental evidence under 37 C.F.R. § 42.64(b)(2) to address objections by Patent Owner to the authenticity of various other exhibits. Ex. 1039 ¶ 2. Dr. Almeroth’s second Declaration otherwise merely incorporates Dr. Almeroth’s “technical opinions” by reference to his first Declaration, without providing any further facts or expressing any further opinions that bear on the merits, including claim construction. Id. ¶ 1. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d 1316, 1326– 27 (Fed. Cir. 2008)) (discussing the burden of proof in inter partes review). Against this backdrop, we address the parties’ arguments, ultimately concluding that Patent Owner articulates the more persuasive position that a “network-based portal” as recited in the claims is limited to residing at a server side of a network.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

  Patent outcomesUS 10,492,038 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,492,038
• Epic Games, Inc. v. Ingenioshare, LLCNo claims unpatentable
  PTAB · May 19, 2023 · IPR2022-00294 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 7–12, 22–24, and 33–67 were not shown unpatentable because the petitioner did not establish that Diacakis disclosed the construed server-side network-based portal.

  RulingsFinal written decision

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “entitled to no weight because it “repeats the [Patent Owner Response] nearly verbatim,” “appears to contain opinions he did not develop,” and “is contradicted by Dr. Rouskas’s own deposition testimony.” Reply 3–4. Although Petitioner makes multiple allegations of deficiencies in Dr. Rouskas’s direct testimony, none of these allegations is sufficiently developed with specific examples. First, we disagree that mere verbatim duplication between an expert declaration and an attorney brief defines “a classic example of a cursory expert declaration the Board disregards.” See id. at 3. The Board’s concern is rather whether expert testimony “cite[s] to any additional supporting evidence or provide[s] any technical reasoning to support [its] statement[s].” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential); see also id. at 16 (“Dr. Jones offers only a verbatim restatement of the assertion being supported, without any supporting evidence or technical reasoning” (emphasis added)). As Patent Owner asserts, “Petitioner fail[s] to provide a single example of how Dr. Rouskas’s testimony is ‘cursory or unsupported.’” Sur-reply 1.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in Computer Science, or an equivalent field, and three to five years of experience working with Internet communication systems.” Pet. 25. According to Petitioner, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Dr. Almeroth supports this articulation. See Ex. 1003 ¶¶ 92–97. Patent Owner does not propose any different expression of the level of ordinary skill, and Dr. Rouskas testifies that he has “employed Dr. Almeroth’s definition” in his Declaration. Ex. 2005 ¶ 21. Because we find Petitioner’s proposal reasonable, consistent with the level of skill reflected by the prior art, and supported by the testimony of Dr. Almeroth, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12

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

    “5. Summary As we note above, we find certain of Patent Owner’s arguments adequately rebutted by Petitioner, such that we do not consider them in our assessment. Nevertheless, Patent Owner retains compelling arguments for its proposed construction, supported by expert testimonial evidence, including dictionary definitions and the ’038 patent specification’s reference to a “portal or a gateway.” We find such references more compellingly refer to “portal” and “gateway” as synonyms rather than alternatives. In addition, Patent Owner provides convincing evidence and argument that rebuts the concern raised by the Board at institution whether Patent Owner’s proposed construction would exclude preferred embodiments. Petitioner, who bears the overall burden, addresses that concern only with attorney argument, which we accord less weight. In light of these considerations, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network.” slip op. at 27

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

    “Both the preamble and the body of independent claim 7 recite “a network-based portal.” Ex. 1001, 21:53, 21:58, 22:2, 22:14–15, 22:19, 22:20–21, 22:27, 22:33, 22:38–39; see PO Resp. 21 (Patent Owner noting repeated recitation of “network-based portal” in independent claim 7). Contending that a “network-based portal” is “a web page or interface that connects clients to a network,” Petitioner identifies client-resident user-interface 112 of Diacakis as meeting the claim’s requirement for such a feature. Pet. 34–35. As explained above, after evaluating the record evidence developed during the trial, we do not adopt such a broad construction of “network-based portal.” Supra § II.D. Instead, we construe “network-based portal” as Patent Owner advocates, namely as residing on a server side of a network. Id. Because Petitioner does not show that Diacakis discloses a “network- based portal” as so construed, we conclude that Petitioner does not show, by a preponderance of the evidence, that independent claim 7 is unpatentable under 35 U.S.C. § 103(a) over Diacakis. The same deficiency exists with respect to Petitioner’s analysis of independent claims 38 and 46. See Pet. 55–56 (Petitioner’s analysis of claim 38 relying substantially on analysis of claim 7), 57–58 (Petitioner’s analysis of claim 46 relying substantially on analysis of claim 7). Because the deficiency in Petitioner’s showing also applies to the dependent claims, which inherit the “network-based portal” limitations, we conclude that Petitioner does not show that any of claims 7, 10–12, 22–24, 33–36, 38–41, 46, 49, 51–53, 55, 57, 58, or 64–66 is unpatentable under 35 U.S.C. § 103(a) over Diacakis; that any of claims 8, 9, 43, 44, 47, 48, 50, or 54 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Loveland; that any of claims 37, 42, 56, 59–63, or 67 is unpatentable under 35 U.S.C. § 103(a) over Diacakis and Takahashi; or that claim 45 is unpatentable under 35 U.S.C. § 103(a) over Diacakis, Loveland, and Takahashi.” slip op. at 34

  Patent outcomesUS 10,492,038 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,492,038
• Platinum Optics Technology Inc. v. Viavi Solutions Inc.No claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00631 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–3, 5–8, 10–12, 14, 16–21, and 23 were not shown unpatentable because the asserted combinations did not establish the claimed hydrogenated silicon properties.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Supported by Mr. Willey’s testimony, Petitioner proposes that a person of ordinary skill in the art would have had “a Bachelor’s degree or equivalent in physics, or in a related science or engineering field, along with at least 5 years of experience in optical coating design and the manufacturing of optical filters, including various deposition techniques.” Pet. 13 (citing Ex. 1002 ¶¶ 66–68). According to Petitioner, “[a]dditional education (e.g., a Master’s degree with exposure to coating design and manufacturing) may substitute for some industrial experience in optical thin film design, and more industrial experience can substitute for a different educational background. Id. (citing Ex. 1002 ¶ 66). Patent Owner neither directly addresses Petitioner’s proposal nor provides its own proposal. See Tr. 35:15–18 (Patent Owner confirming for the record that it has not proposed a different level of ordinary skill than Petitioner’s proposal). Petitioner’s proposal is reasonable and consistent with the prior art presented. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). We accordingly adopt Petitioner’s proposal.” slip op. at 11

  • Expert testimonyPatent owner expert creditedDecided for patent owner

    “Based on the statements Dr. Clemens made under oath in his Declaration, we find that he qualifies as a person having at least ordinary skill in the art according to our adopted definition. The questions Petitioner raises about Dr. Clemens’s qualifications were insufficiently explored on cross-examination to impeach that testimony. With respect to Petitioner’s further complaint that Dr. Clemens “did not review all the evidence in rendering his opinions, did not select the materials he reviewed, and did no independent research on the question of enablement,” we agree with Patent Owner that Petitioner cites no authority for the propositions that expert witnesses must review all exhibits or perform independent research. Sur-reply 27. Indeed, we do not find it particularly unusual for an expert witness to focus his analysis and opinions on specific issues identified by counsel, and Dr. Clemens properly discloses the underlying facts and data upon which his opinions are based. See 37 C.F.R. § 42.65(a). We thus accord due weight to Dr. Clemens’s testimony.” slip op. at 15

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

    “Petitioner contends that “the claims do not need an express construction to resolve the issues presented in this proceeding” but nevertheless “provides its proposed interpretations of two terms [namely, ‘center wavelength’ and ‘passband’] to clarify how Petitioner is applying the prior art to the claims.” Pet. 13. Patent Owner does not directly address Petitioner’s proposed constructions for these terms, and appears generally to treat the terms in a manner consistent with Petitioner’s proposals. We conclude that no express claim construction is necessary for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 16

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

    “One difficulty with Petitioner’s position is that it treats the refractive index and extinction coefficient as independent variables in its argument. But the prior art is clear that the adjusting the hydrogen content of Si:H to achieve a desired extinction coefficient necessarily affects the refractive index—and, as we discuss above, that such adjustments do so in a direction counterproductive to the combination of parameters the inventors sought. And we agree with Patent Owner that the refractive index and extinction coefficient “are not parameters subject to simple adjustment, but properties resulting from the parameters of the fabrication process.” PO Resp. 52 (citing Ex. 2001 ¶¶ 121–122; Ex. 1016, Figs. 2–3). At the Oral Hearing, Petitioner conceded that Patent Owner’s characterization is accurate when considering the hydrogenated silicon material. See Tr. 65:7– 12. When Petitioner refers to the refractive index and extinction coefficient as result-effective variables, Petitioner means that those parameters are variables that can affect the properties of the claimed optical filter. See id. at 64:6–65:12. As we note above, Petitioner’s argument thus presumes that the refractive index and extinction coefficient can be independently adjusted to achieve desired filter properties—but the asserted prior art teaches against such independence because the known method of adjusting the hydrogen content of Si:H not only affects both the refractive index and extinction coefficient, but does so in a manner counterproductive to the inventors’ objective.” slip op. at 35

  Patent outcomesUS 9,354,369 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,354,369

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.