- PTAB · Mar 6, 2025 · IPR2024-01223 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 on all asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).” slip op. at 5
- Parallel petitionsNot reached
“B. Denial Based on Multiple Petitions Patent Owner asserts we should deny the petition in IPR2024-01222 because it is one of two petitions challenging the same claims of the ’389 patent. See Paper 7, 3. Patent Owner does not, however, argue we should deny the Petition in this case. See id. (arguing that “to the extent a trial is warranted, the Board should institute . . . [only] the IPR2024-01223 petition.”). Because Patent Owner contends only that we should deny the petition in IPR2024-01222, we do not address that issue here.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“C. Claim Construction 1. “depositing by shadow mask, sputtering, ink jet deposition, screen printing evaporation” Claim 40 recites “wherein the step for selectively depositing at least one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 15 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 6–7. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“D. Level of Skill in the Art Petitioner argues a person of ordinary skill in the art “would have had a bachelor’s degree in Electrical Engineering, Materials Science, or a related field, and at least one year of experience in display technologies” and that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Pet. 14–15. Patent Owner does not dispute the level of ordinary skill in the art. For this Decision, we agree with and adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’389 patent. 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 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - PTAB · Mar 6, 2025 · IPR2024-01222 · APJ Garth D Baer · IPR · Institution
The Board instituted IPR on claims 34–37 and 40–46 over all petitioned grounds after finding a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“has not requested a stay and there is no evidence the district court would likely grant one. Prelim. Resp. 64. We decline to speculate about how the District Court might rule on a motion that has not been filed. On this record, the first factor is neutral.” slip op. at 6
- Parallel petitionsDecided for petitioner
“of two petitions challenging the same claims of the ’389 patent. See Paper 7, 2. As our Consolidated Trial Practice Guide explains, “one petition should be sufficient to challenge the claims of a patent in most situations.” PTAB Consolidated Trial Practice Guide (Nov. 2019) at 59. However, the Trial Practice Guide recognizes that “there may be circumstances in which more than one petition may be necessary,” including “when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Here, there is such a dispute because even though the ’389 patent was filed on May 2, 2002 and does not claim priority to any earlier application, as noted above, Patent Owner contends that some of the challenged claims are entitled to an earlier priority date. See Prelim. Resp. 6–14. Given this apparent priority dispute, we agree with Petitioner that two petitions—one asserting prior art that is vulnerable to the priority dispute and one asserting art that is not—are justified. See Paper 3, 3.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any preliminary response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reason below, we conclude there is a reasonable likelihood that Petitioner would prevail in demonstrating at least one of the challenged claims is unpatentable. Pursuant to § 314, we hereby institute an inter partes review to the challenged claims of the ’389 patent.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“one barrier layer further comprises depositing by shadow mask, sputtering, ink jet deposition, screen printing, [or] evaporation.” Although the word “or” does not appear in the claim, Petitioner proposes we should construe the claim to include the inserted “or” consistent with the file history, which shows an examiner’s amendment intended to replace an original “and” with the missing “or.” Pet. 10 (citing Ex. 1002, 399, 418). Patent Owner does not dispute Petitioner’s proposed construction. See Prelim. Resp. 18–19. For purposes of institution, given the ’389 patent’s file history, we agree with Petitioner’s construction.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,949,389 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Feb 19, 2025 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Final written decision
Claims 1, 2, and 10–13 are unpatentable as obvious over the stated combinations of Holmberg, Battey, Blankenship, and Cowen.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least 1 year of experience related to communication networks or the equivalent.” Pet. 7. Petitioner further contends that “[a]dditional education could substitute for professional experience or significant experience in the field could substitute for formal education.” Id. at 7–8 (citing Ex. 1003 ¶¶ 29–31). Dr. Eldering agrees that one of ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering, computer engineering, or a related field, and at least one year of experience related to communication networks or the equivalent.” Ex. 2001 ¶ 24. According to Dr. Eldering, “[a] person with less relevant practical experience but with additional experience would also qualify.” Id. Patent Owner contends that” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Although Patent Owner disagrees with Petitioner’s construction, it contends “the Board need not resolve this claim construction dispute because Petitioner’s proposed grounds 1-5 are all insufficient under either construction.” PO Resp. 19. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. 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)). For example, we discuss below in Section III.G why we do not reach the claim construction issue presented by Petitioner.” slip op. at 11
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We find that Holmberg expressly contemplates using its wall box within multi-dwelling units, notes that multi-dwelling wall boxes in the prior art were “typically provided” on every floor, and discloses that the multi-dwelling wall boxes would contain optical couplings for each resident on a given floor. Ex. 1004 ¶¶ 7, 34; Pet. Reply 8–10. In view of these disclosures, we credit the testimony of Dr. Kiaei that one of ordinary skill in the art would have sought to use Holmberg’s wall box in multi-dwelling units and would have seen a need to access the area behind spice tray 230 to connect and disconnect subscribers. Ex. 1003 ¶ 92; Ex. 1033 ¶¶ 7–8. Moreover, even if Holmberg were limited to mid-span locations and distributing drop cables, as opposed to distribution cables for individual subscribers, as asserted by Patent Owner, Patent Owner does not dispute that a technician would still need periodic access to the area behind splice tray 230 in these mid-span devices. Tr. 38:3–39:1 (counsel agreeing that one would need to access the area behind splice tray 230 in Holmberg, albeit in “rare occasions”); Ex. 1003 ¶¶ 90–92; Ex. 1033 ¶¶ 7–8. Thus, whether used in the manner contemplated by Petitioner or Patent Owner, Petitioner persuasively demonstrates that access to the space behind splice tray 230 in Holmberg would be necessary. With access behind splice tray 230 required, Petitioner persuasively demonstrates that one of ordinary skill in the art would have seen a benefit to replacing Holmberg’s fasteners or screws with a hinged connection, such as that disclosed in Battey, to allow easier access to the area behind the splice tray. Pet. 41 (citing Ex. 1005 ¶ 39 (disclosing that a rotatable splice tray or shelf would “provide[] full and convenient access to the splice tray”)). First, Petitioner and Dr. Kiaei persuasively demonstrate that once the fibers of Holmberg are routed from behind splice tray 230 and the distribution cables spooled on this tray, a technician could not reasonably access fiber optic cables stored behind splice tray 230 without releasing or opening splice tray 230. Pet. Reply 14–15 (citing Ex. 1023, 60:20–61:15); Ex. 1033 ¶¶ 31–32. Second, Petitioner persuasively demonstrates that without a hinged connection, the technician would have to either hold the splice tray of Holmberg with one hand while performing the necessary routing and splicing steps, two screws would need to remain in place (essentially replicating a hinge), or the tray would have to be left to dangle, supported only by the routed and spliced fibers. Pet. Reply 19–20.” slip op. at 22
- Strike new argumentNew argument consideredDecided for petitioner
“Allegedly New Arguments on Reply Patent Owner contends that Petitioner’s arguments regarding the benefits of a hinged connection when performing the splicing and routing steps should be dismissed or ignored because they were improperly raised for the first time on reply. Sur-reply 19–20. We disagree. The Petition asserts that one of ordinary skill in the art would have sought to add a hinged connection, such as that disclosed in Battey, in Holmberg and would have seen a benefit to so doing. Pet. 40–44. Petitioner did not change its proposed combination or its stated rationale in its Reply. Rather, in response to Patent Owner’s counter-arguments, Petitioner expands upon the benefits of its proposed combination, i.e., the substitution of a hinged connection in place of fasteners. Pet. Reply 15–21. This is permissible, as a reply may properly expand on or extend previously raised arguments relating to the motivation to make the proposed changes to the prior art. See Rembrandt Diagnostics, LP v. Alere, Inc., 76 F.4th 1376, 1385 (Fed. Cir. 2023) (explaining that the reply arguments properly relied on the same legal ground, the same prior art references, and same legal argument—the motivation to make the proposed changes to the prior art reference).” slip op. at 25
Patent outcomesUS 9,008,483 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,008,483 - Apple Inc. v. RJ Technology LLCSome claims unpatentablePTAB · Feb 18, 2025 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Final written decision
Claims 5–10 are unpatentable as obvious; claims 11–14 were not shown unpatentable because the evidence did not establish the claimed capacity retention after 400 cycles.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. 9 The parties here do not address objective evidence of nonobviousness. Patent Owner does not dispute Petitioner’s definition of the ordinarily skilled artisan. PO Resp. 20. We adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the ’641 patent, the prior art of record, and the parties’ arguments.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that the term “charge cut-off voltage” is “the maximum voltage to which the battery is configured to be charged.” PO Resp 21–22; Pet. Reply 1. The parties dispute, however, whether the “charge cut-off voltage” is a “battery property” or “the voltage applied to the battery during charging.” PO Resp. 21–24; Pet. Reply 1–6. We need not resolve the precise meaning of “charge cut-off voltage” because there is no dispute that Yamaki discloses this limitation under either party’s interpretation of the claim term. Upon review of the prior art and the parties’ arguments, we determine that no terms of the ’641 patent require express construction. 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))); Pet. Reply 1 (asserting that the challenged claims are unpatentable under either parties’ construction of “charge cut-off voltage”).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“Patent Owner’s arguments do not persuasively undermine Petitioner’s position. Sakamoto expressly discloses setting the ratio of negative to positive electrode active material in the range of 1.05 to 1.30. Ex. 1005 ¶ 8. Sakamoto also explains why this range is preferable, i.e., if the ratio is roughly equal “the charge-discharge cycle performance is insufficient due to significant deterioration from charging and discharging,” and if the ratio is 10 Citations to the prosecution history of Yamaki are to the page numbers added to the lower right corner of the document. too high “too much of the compound does not participate in charging and discharging.” Id. ¶¶ 6, 8. These disclosures are sufficient to explain why one of ordinary skill in the art would have found it obvious to select the ratios disclosed in Sakamoto in Yamaki. Id. ¶ 8 (providing a secondary battery with a capacity ratio between 1.05 and 1.30 and noting that by setting the ratio within this range the resulting secondary lithium battery is “safe due to low risk of heat being generated and an explosion occurring”). We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We also disagree that Sakamoto teaches away from elevated voltages or from increasing the amount of lithium in circulation. See PO Resp. 29. Contrary to Patent Owner’s arguments, Sakamoto provides no general teaching against using a charge cut-off voltage above 4.2 V, or against increasing the level of lithium in circulation. Nor does Sakamoto “criticize, discredit, or otherwise discourage” the claimed invention. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, Sakamoto warns against setting the reversible capacities of the positive and negative electrode substantially equal as this may result in excess lithium plating on the surface of the electrode. Ex. 1005 ¶¶ 6, 8. We agree with Petitioner that this disclosure would lead one of ordinary skill in the art to design a battery with a higher capacity in the negative electrode active material than the positive electrode active material. Pet. 11–12.” slip op. at 15
Patent outcomesUS 7,749,641 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,749,641 - PTAB · Feb 12, 2025 · IPR2024-01139 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–7, 9, and 14–51 on all petition grounds, finding a reasonable likelihood that the TML6–Fandrianto combination renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“presented art includes art listed on an Information Disclosure Statement (IDS) and “art made of record by the Examiner.” Id. at 7–8. Here, the Petition’s challenges are based on TML6 and Fandrianto. Pet. 2. TML6 is substantially the same as art previously presented to the Office because the ’469 patent discusses TML6. See, e.g., Ex. 1001, 8:43–53, 11:33–13:29. Fandrianto was made of record by the Examiner. Ex. 1002, 310; Ex. 1001, code (56). Thus, the first part of the framework is satisfied, and we must proceed to the second part.” slip op. at 13
- Skill levelOther
“We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 26. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,950,469 - PTAB · Feb 12, 2025 · IPR2024-01140 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–51 and all petition grounds, finding a reasonable likelihood that claims 1–20, 22–42, and 44–51 are obvious over TML6 and Fandrianto, and claims 21 and 43 over those references …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Absent specific evidence, the Board typically “will not attempt to predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Even assuming that evaluating the summary of TML6 in the challenged patent’s background were the same as evaluating the TML6 code, Petitioner has shown under Becton, Dickinson factors (e) and (f) that the Office erred by overlooking the TML6-Fandrianto combination for the reasons discussed below in the analysis of Petitioner’s challenges. See infra Section II.E. That is, we disagree with Patent Owner that Petitioner has failed to meet its burden. Prelim. Resp. 36–37. Thus, none of Becton, Dickinson factors (c), (e), and (f) weigh in favor of denying the Petition under § 325(d). 4. Conclusion We do not exercise our discretion to deny the Petition under § 325(d).” slip op. at 16
- Skill levelOther
“Patent Owner argues that a person of ordinary skill in the art “would be an electrical and/or computer engineer with one to two years of experience relating to video coding hardware and/or software.” Prelim. Resp. 26. We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 27. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,280,599 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Feb 5, 2025 · IPR2024-00920 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–24, 26, 29–33, 35, or 38 were unpatentable over the asserted Koga-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that Petitioner has not established a reasonable likelihood that it will prevail in proving the unpatentability of at least one challenged claim of the ’991 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. at 25–26 (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Based on the ordinary meaning of the phrases, “spatial samples” and “spatial information” must refer to different information. Because the “spatial samples [are] decoded into spatial information,” the decoded “spatial information” must be different than the coded “spatial samples.” If “spatial information” were the same as “spatial samples,” then there would be nothing to decode. That construction is consistent with the claim construction rule that different terms are presumed to have different meanings. See MicroStrategy Inc. v. Bus. Objects Ams., 238 F. App’x 605, 609 (Fed. Cir. 2007) (citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings . . . .”)). Here, we see no evidence that the claim phrases have the same meaning. To the contrary, the ’991 patent uses the term spatial samples to refer to the image’s pixel values. See, e.g., Ex. 1001, 2:65–67 (“the prediction error signal for a single image block is constructed using both transform basis functions and spatial samples (i.e., pixel values)”) (emphasis added); id. at 4:21–26 (same). The spatial information, however, refers to the result of decoding. See, e.g., id. at 3:29–30 (“the plurality of spatial samples are decoded into decoded spatial information”) (emphasis added); id. at 6:53–55 (“the decoded spatial information and reconstructed prediction of the image block are added together to form the decoded representation of the image block”) (emphasis added); id., Fig. 5, 520 (showing “Decoded Spatial Info”). This is consistent with the claim’s plain language. See id. at 10:1–2 (claim 22 reciting “decoding, by a processor, the plurality of spatial samples into decoded spatial information”) (emphasis added). Accordingly, “spatial samples” and “spatial information” do not refer to the same thing.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s argument. Petitioner maps both spatial samples and spatial information to the residual of the prediction error. Compare Pet. 37 (referring to spatial samples as the residual of the prediction error), with id. at 44 (referring to spatial information as the residual of the prediction error). However, because spatial samples and spatial information cannot refer to the same thing, they cannot both be the residual of the prediction error. See Section II.C.1 supra. Accordingly, Petitioner has not sufficiently shown that claim 22, along with dependent claims 23, 24, 26, and 30 would have been obvious over Koga. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”); Pet. 47–63 (relying on the analysis of claim 22 for the spatial samples and spatial information limitations). With regard to independent claim 31, along with dependent claims 32, 33, and 35, Petitioner relies on the same arguments discussed above for limitation 22a and 22c to show that Koga teaches commensurate limitations 31c and 31d. See Pet. 54 (“As explained above, Koga teaches the shared substantive limitations of [22a]–[22d] (supra §§VI.A.1) that correspond to limitations [31b]–[31e].”). Accordingly, for the same reasons discussed above for claim 22, we are not sufficiently persuaded by Petitioner’s arguments that independent claim 31, along with dependent claims 32, 33, and 35 would have been obvious in view of Koga.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - PTAB · Feb 5, 2025 · IPR2024-00921 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5–15, 17–21, and 39 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25–26 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. at 26 (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“1. Spatial Coding Petitioner argues that “spatial coding” means “coding in the spatial domain.” Pet. 28. According to Petitioner, the specification of the ’991 patent “describes spatial coding as the coding (e.g., quantizing and entropy coding) of pixel values in the spatial domain ‘without transform,’ but without limiting it to a particular algorithm or technique.” Id. (citing Ex. 1001, 5:6–23, Fig. 4). “Patent Owner does not contest Petitioner’s construction for the sake of this [Patent Owner Preliminary Response], but reserves the right to challenge this construction in the event of institution.” Prelim. Resp. 21. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“3. “The Difference Signal” (Claims 13 and 14). Petitioner argues that claims 13 and 14 “contain a drafting error that recites ‘the difference signal,’ without antecedent basis.” Pet. 29. According to Petitioner, a person having ordinary skill in the art “would have understood ‘the difference signal’ in these claims to mean ‘a difference signal representing differences between sample values of a predicted block of data and values for an original input block’ as recited in limitation [1a] of claim 1.” Id. For purposes of its Preliminary Response, Patent Owner “agree[d] with Petitioner’s construction of ‘the difference signal’ in Claims 13 and 14.” Prelim. Resp. 24. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - Opticis Co., Ltd. v. Inneos LLCAll claims unpatentablePTAB · Jan 29, 2025 · IPR2023-01256 · APJ Terry J Owens · IPR · Final written decision
Claims 1, 2, 6, 7, and 9 are unpatentable as obvious over Kurita and Lemoff, with the Board declining to reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level board ownDecided for petitioner
“We accept the level of ordinary skill in the art stated by Petitioner and agreed with by Patent Owner with the exception of the open-ended language appears consistent with the ’416 patent and the prior art of record.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“describe elements that are not affirmatively recited in the claims, and in view of the “bedrock principle of patent law that the claims of a patent define the invention,” we conclude that none of the unrecited limitations identified by Patent Owner are required by the claims. See Thorner v. Sony Entm’t Am. LLC, 669 F.3d 1362, 1366 (Fed. Cir. 2012) (explaining that the standard for disavowal is “exacting,” and the use of “the present invention” is not necessarily sufficient to meet this standard).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“art would not have modified Kurita in view of Lemoff because Lemoff positions the signal emitters near the fiber to emulate WDM without the need for an external optical multiplexer or a similar device and discourages using optical wavelength multiplexers for short distances because the complexity of the design is often cost prohibitive (PO Resp. 47–48), Lemoff does not appear to limit the usefulness of the fiber connector to any particular optical signal transmission distance. Petitioner relies upon Lemoff for a suggestion to combine Lemoff’s fiber connector configuration teachings with Kurita’s multiplexer teachings to enable fibers to be plugged Fig. 2) (Pet 29, 31; Reply 17–18). Regarding Patent Owner’s argument that one of ordinary skill in the art would not have combined Lemoff’s receptacle and ferrule with discrete components in Kurita because the fiber would need to be manually fixed and aligned with or without a ferrule and, therefore, would serve no purpose (PO Resp. 48), Lemoff’s fiber connector appears to fix and align the fiber adequately for wavelength division multiplexing without manual fixation or alignment being required (Ex. 1006, 5:65–6:2, Fig. 2; Reply 18). The challenged claims do not require any greater degree of fixing and alignment than that provided by Lemoff’s fiber connector. Regarding Patent Owner argument that Lemoff’s device is not physically combinable with Kurita’s WDM multiplexer due to Lemoff’s device’s small size (PO Resp. 47–48; Reply 17–18), “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art” (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Accordingly, we are not persuaded by Patent Owner’s argument.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“stopped single optical fiber because fixing it in place does not passively align it with the optical components (PO Resp. at 35–37) is not persuasive because fixing Kurita’s fiber (40) in place in accord with Lemoff’s teaching regarding the ferrule (255) inserted until being stopped by the receptacle (260) (Ex. 1006, 5:50–6:15, Fig. 2) would align Kurita’s optical array (20), and lens (30)) (Ex. 1004 Fig. 3) passively in the same manner that Lemoff’s ferrule (255), after being inserted until stopped by the receptacle (260), passively aligns the optical fiber (250) with the optical components (optical imaging element 220 and light emitters within emission apertures 120) (Ex. 1006, 5:50–6:15, Fig. 2; Reply 15–16). Regarding Patent Owner’s argument that the light from each of Kurita’s lasers (11) depicted in Figure 3 cannot pass through a separate focusing lens (30) pie shaped sector because the lasers (11) and collimating lenses (21) are arranged linearly rather than being arranged about a circular axis (PO Resp. at 37–42), we do not agree. Claim 1 requires “focusing means having n separate radial sectors on its surface, and each of said n collimated beams passes through a separate one of said n sectors of said focusing means” (Ex. 1001, 5:34–37), claim 2 requires “four lasers and four collimating lenses are each formed in a two-dimensional, two by two array [centered on the focal axis of lens 30], wherein said focusing means is a single focusing lens, and wherein each radial sector is a pie-shaped quadrant” (id. at 5:41–44), and claim 7 requires “focusing means having four separate quadrants on its surface, and each of said four collimated beams passes through a separate one of said quadrants of said focusing means” (id. at 6:35–38). Kurita meets those claim requirements. Kurita’s two by two array (10A) of lasers (11), collimating lens (21) array (20), and focusing lens (30) are shown in Kurita’s Figure 3 (cropped) as follows: The image is a portion of Kurita’s Figure 3 showing Kurita’s laser array, collimating lens array, and focusing lens (30). Relative to a point at the center of the laser array (10A) or the collimating lens array (20), each laser (11) and each collimating lens (21) is in a separate quadrant that can be a quadrant of a circle (pie-shape) on lens 30 (Reply 12– 13, Ex. 1003 ¶¶ 85–91).” slip op. at 23
Patent outcomesUS 7,198,416 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,198,416 - Samsung Electronics Co., Ltd. / Apple Inc. v. RJ Technology LLCSome claims unpatentablePTAB · Jan 17, 2025 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Final written decision
Claims 2–4 and 6–18 are unpatentable as obvious over Abe and Guyomard, with claims 9–10 also obvious over Iwaizono; claims 1 and 5 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years of experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. (citing Ex. 1002 ¶¶ 50–51). Patent Owner “does not dispute Petitioner’s level of ordinary skill.” PO Resp. 17. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art as it is consistent with the disclosures of the ’641 patent and the prior art of record.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We also agree with Patent Owner that the charge cut-off voltage is not necessarily the applied voltage during charging. PO Resp. 20. Rather, depending on the charging protocol used and when in the charging cycle the voltage is applied, the applied voltage could be higher than the battery voltage. Ex. 2013; Ex. 2006 ¶ 91. For example, as discussed in more detail below with respect to the Uemura grounds, when fast charging using constant current is used and the charging rate is not slow, the applied voltage will be higher than the battery voltage when the constant current charging phase is stopped. Ex. 2006 ¶ 91; Ex. 2013. Likewise, during constant current/constant voltage charging, the applied voltage approximates the battery voltage only when the battery is nearly completely charged. Ex. 2013; Ex. 2006 ¶ 91. Thus, the applied voltage may be, but is not necessarily, the charge cut-off voltage. In view of the foregoing, we construe “charge cut-off voltage” in claims 1 and 5 as “the maximum value to which the battery is configured to be charged.” PO Resp. 18; Ex. 2008, 217:6–11; Pet. Reply 5. Contrary to Patent Owner’s arguments, however, we do not understand the phrase “configured to be charged” to necessarily represent a single voltage for the battery that is determined based on the structure and chemistry of the battery. Pet. Reply 4–5. Rather, the charge cut-off voltage is a selected potential, or voltage, of the battery or cell at the end of charging that is controlled by a circuit or device, such as a charger or control circuit within the battery. Ex. 1001, 9:50–55; Ex. 1048, 2, 7–8; Ex. 1008, 3:9–13. And, for the reasons discussed herein, the charge cut-off voltage may be, but is not necessarily, the same as the applied voltage during charging. PO Resp. 20.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“charge cut-off voltage “greater than 4.2 V but less than 5.8 V” and calculating a specific or theoretic capacity “with a charge cut-off voltage limited to 4.2” (claim 1) or “with a charge cut-off voltage set at 4.2 V” (claim 5). Ex. 1001, 16:56–61, 17:6–11. Although the parties dispute the precise scope of these claim terms, the parties agree that the first use of “charge cut-off voltage” in claims 1 and 5 refers to the potential of the battery as a whole (between the cathode and the anode), and not a half-cell voltage using lithium metal as a counter electrode.10 Tr. 17:1–3 (agreeing 10 With respect to the phrase “as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V,” the parties in fact appear to be in that the first use of “charge cut-off voltage” in claim 5 refers to a full-cell voltage); Sur-reply 5; PO Resp. 22. We need not further construe the claims to resolve the disputes between the parties. See 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) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 16
- Expert testimonyPatent owner expert creditedDecided for patent owner
“Given Mr. Juzkow’s unambiguous testimony that Uemura uses constant current charging that would stop when the applied voltage reached 11 The chart is reproduced from SAFT, Charging your lithium-ion batteries: 5 expert tips for a longer lifespan, (https://www.saft.com/energizing-iot/charging-your-lithium-ion-batteries-5-expert-tips-longerlifespan#:~: text=When%20the%20battery%20provides%20current,This%20restore s%20the%20battery's%20capacity). 4.3 V, as well as Dr. Yao’s persuasive testimony that Uemura’s constant charging rate is not slow, we credit the testimony of Dr. Yao that one of ordinary skill in the art would have understood that the internal voltage to which the battery of Uemura was charged is less than 4.3 V. Ex. 2006 ¶ 119. In particular, Dr. Yao persuasively testifies that one of ordinary skill in the art would have believed that the charge cut-off voltage was no more than 4.2 V, and most likely equal to “about 4 V.” Id. ¶¶ 119–122.” slip op. at 21
Patent outcomesUS 7,749,641 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,749,641
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.