• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Nov 4, 2022 · IPR2021-00662 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1 and 2 are unpatentable as obvious over Yamazaki, Schubert, and Tadatomo; the Board did not reach the other asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts that a person of ordinary skill in the art “would have been knowledgeable regarding conventional designs and fabrication techniques pertaining to LEDs, including LED package designs, and would have had at least 2 years of experience in LED design and fabrication as well as at least a master’s degree in a relevant field (e.g., chemical engineering, materials engineering, or electrical engineering), or alternatively would have an equivalent combination of advanced education and practical experience.” Pet. 10–11 (citing Ex. 1035 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art. See generally PO Resp. We have reviewed Petitioner’s proposal and find it reasonable and consistent with the prior art, and apply 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 14

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

    “Third, and most significantly, Petitioner points to Shimizu, a patent filed in 1999, as repeatedly referring to phosphor as a garnet-based fluorescent material. Reply 3 (citing Pet. 27; Ex. 1013, 10:16–13:50). We agree that Shimizu appears to use the two terms interchangeably. For example, Shimizu states that “[t]he phosphor is specifically garnet fluorescent material” and “the fluorescent material is preferably yttrium- aluminum-garnet fluorescent material (YAG phosphor) activated with cerium.” Ex. 1013, 10:17–30. Patent Owner does not dispute this reading of Shimizu, but argues instead that it is “impermissible to rely on an entirely different reference” in a Reply. See Sur-Reply 4–5 (citing Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015)). For the same reasons discussed above, we do not agree that Petitioner’s use of Shimizu is improper, but is instead a proper response to Patent Owner’s argument that a person of ordinary skill in the art would not have understood Yamazaki to disclose phosphor. Ariosa, relied upon by Patent Owner, confirms that the Board should consider an exhibit “for what it show[s] about the background knowledge that a skilled artisan would have possessed.” Ariosa, 805 F.3d at 1365 (“The Board’s language on its face supports Ariosa’s interpretation of what the Board meant—that the Board was declining to consider Exhibit 1010, even as evidence of the background understanding of skilled artisans as of January 2010, simply because the brochure had not been identified at the petition stage as one of the pieces of prior art defining a combination for obviousness. If that is what the Board meant, the Board erred. Art can legitimately serve to document the knowledge that skilled artisans would bring to bear in reading the prior art identified as producing obviousness.”). The Petition relies on Shimizu to show such background understanding. Pet. 27. Specifically, the Petition states that conventional LEDs “were made using the III-nitride material system, with semiconductor layers formed on sapphire substrates and combined with YAG phosphors to efficiently generate white light output.” Id. (citing Ex. 1013, 10:30–11:35). Thus, Shimizu is properly objective evidence supporting a finding that at least as early as 1999, a person of ordinary skill in the art would have used the terms “phosphor” and “fluorescent material” interchangeably. Moreover, Dr. Schubert’s textbook published in 2018 explicitly references Shimizu. Ex. 1039, 3-4. In this context, we find that Dr. Schubert’s textbook and testimony indicate that a person of ordinary skill in the art, at the relevant time, would have understood the terms to be interchangeable.” slip op. at 20

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

    “Based on the complete record, Petitioner establishes by a preponderance of the evidence that an ordinarily skilled artisan would have found the sapphire growth substrate obvious in light of Yamazaki’s disclosure. Petitioner cites Schubert to show an ordinarily skilled artisan’s knowledge about conventional blue LEDs as disclosed in Yamazaki, i.e., that “conventional blue LEDs were III-nitride-based LEDs that commonly included sapphire growth substrates.” See Pet. 71–72, 76–77; Ex. 1007 ¶ 27 (stating the disclosed light-emitting chip “is of a publicly known structure”); Ex. 1008, 166 (discussing “commonly used sapphire and SiC substrates”). We credit Dr. Dupuis’ testimony that is consistent with the prior art of record. Ex. 1035 ¶¶ 238, 248–251 (citing Ex. 1008, 166); Ex. 1007 ¶ 27; Ex. 1009, 1:10–17, 4:61–67; Ex. 1012, 243; Ex. 2013, 10:30–11:35. We are not persuaded otherwise by the deposition testimony of Dr. Dupuis pointed to by Patent Owner. PO Resp. 44 (citing Ex. 2016, 53:7– 12). This testimony confirms that Schubert does not explicitly discuss whether the sapphire growth substrate is included in an LED package. Id. (citing Ex. 2016, 53:7–12). However, Patent Owner does not dispute that sapphire growth substrates were commonly used (as confirmed by Schubert) or that a person of ordinary skill in the art would have reasonably expected a blue LED to include a sapphire growth substrate. See PO Resp. 42–43 (stating only that sapphire is one among several materials that could be used as a growth substrate); Sur-Reply 9–10 (same). Petitioner is not required to show that the proposed combination would have been preferred over other alternatives. Infineum USA L.P. v. Chevron Oronite Co. LLC, No. 2020-1333, 2022 WL 3147683, at *6 (Fed. Cir. Aug. 8, 2022) (“We have rejected the notion that a patent challenger seeking to demonstrate obviousness must prove that a person of ordinary skill would have been motivated to select one prior art disclosure over another.”); In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”). Instead, the question is whether a person of ordinary skill in the art would have understood the disclosure of Yamazaki, in light of the disclosure in Schubert, to teach or suggest the sapphire growth substrate limitation. As discussed above, persuasive evidence in the record establishes that this is true.” slip op. at 38

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “offered to show that the ’213 patent solved a long-felt, but unresolved need in the field and the merits of the challenged claims. See PO Resp. 67–68. First, Patent Owner has not shown a presumption of nexus because none of the cited evidence involves any particular product. Second, Patent Owner 22 Exhibit 2111 is a redacted version of Exhibit 2105. has not established that the any long-felt need resulted directly from the unique characteristics of the claimed subject matter. Other than a general statement that the technology addressed by the ’213 patent is a continuation of Dr. Nakamura’s prize-winning work (see Ex. 2112 ¶ 231), we see no evidence in the record that the subject matter recited by claims 1 and 2 of the ’213 patent, itself, solved the need for a more efficient LED without a heat sink or mirrors. See PO Resp. 65–66; Sur-Reply 23–24.” slip op. at 46

  Patent outcomesUS 10,644,213 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · Graham
  Patents in suitUS 10,644,213
• Sling TV, L.L.C. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Sep 7, 2022 · IPR2019-01363 · APJ Jennifer S Bisk · IPR · Remand

  On remand, claims 1–3 were held unpatentable as obvious over Li; the Board did not reach the alternative Li and Motte ground.

  RulingsRemand decision

  • RemandOther

    “For the reasons discussed below, after considering the post-remand briefing, as well as the record previously developed during trial and the Federal Circuit’s decision, we conclude that Sling has shown by a preponderance of the evidence that claims 1–3 are unpatentable.” slip op. at 3

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “5 Citing the testimony of Dr. Storer, Sling asserts that a person of ordinary skill in the art for purposes of the ’273 patent “would have had a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in web page and Internet technology or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in web page and Internet technology. A person with less education but more relevant practical experience may also meet this standard.” Pet. 13 (citing Ex. 1002 ¶ 49). Uniloc “does not offer a competing definition for purposes of this proceeding.” PO Resp. 10. Because we find Petitioner’s proposed definition generally consistent with the subject matter of the ’273 patent and cited references, we adopt it for purposes of this analysis. 6 The parties do not address secondary considerations, which, therefore, do not constitute part of our analysis. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). One seeking to establish obviousness based on more than one reference also must articulate sufficient reasoning with rational underpinnings to combine teachings. See KSR, 550 U.S. at 418.” slip op. at 9

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

    “We also agree with Petitioner that the intrinsic record supports a construction that “presentation data representing content” includes content graphics, including thumbnails, and titles. In particular, the ’273 patent describes an embodiment in which content graphics and titles are “organized to indicate individual presentations.” See Ex. 1001, Figs. 2, 3, 5:16–18; see also id. at 5:20–23 (“A user may select such a presentation for display by selecting individual presentation for streaming or downloading, such as by clicking on an indicator 235, 240, or 245”); 6:53–56, 7:36–40, 8:58–61, 11:31–34 (“In certain embodiments, the requested information may include a content title, date, series information and description, akin to that to be displayed in a corresponding indicator 240 (FIGS. 2, 3).”). We understand this disclosure to teach that content graphics 230 and content information 240, including titles, is presentation data that represents content. Patent Owner does not point us to any other disclosure of the ’273 patent describing presentation data that represents content. See PO Remand Response Br. 3–15; PO Remand Reply Br. 1–4. We also find Dr. Storer’s testimony to support a finding that content graphics, as used in the ’273 patent, include thumbnails. Ex. 1002 ¶ 127 (“[l]ike the ’273 Patent, Li discloses particular content graphics (thumbnails) and particular content information (titles) representing the data files (e.g. videos) of the first collection.”). And Patent Owner does not dispute that the term “content graphics” as used in the ’273 patent includes thumbnails. See PO Remand Response Br. 3–15; PO Remand Reply Br. 1–4. Further, we do not agree with Patent Owner’s argument that titles and thumbnails cannot be “presentation data that represents content” because they are metadata. PO Remand Response Br. 10–15. Whether thumbnails and titles not contained in an RSS feed are metadata is immaterial to whether they are “presentation data that represents content.” The Federal Circuit’s holding does not address metadata other than those contained in an RSS feed. Uniloc, 2022 WL 306468. Thus, the Federal Circuit does not explicitly find that metadata are not data representing content. Id. We also do not make such a finding. Because, as discussed above, the only indication from the ’273 patent is that graphics and titles are considered “presentation data that represents content,” we are not persuaded by Patent Owner to limit the term to exclude them.” slip op. at 14

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

    “Patent Owner argues that Li’s thumbnails and titles do not qualify as “presentation data that represents content,” under its proposed construction of the term. Reply 3–5; PO Remand Response Br. 3–15; PO Remand Reply Br. 1–4. However, as explained in detail above, we do not adopt Patent Owner’s construction of this term. Instead, we agree with Petitioner that Li’s thumbnails and titles qualify as “presentation data that represents content.” We also agree that these data represent videos stored in a content library of database 11, which are part of a computer system. Ex. 1006 ¶¶ 41, 64, 113; Ex. 1002 ¶¶ 128–131. Thus, Li teaches the presentation data limitation. Based on the record, we are persuaded by Petitioner’s showing that Li teaches or suggests “storing presentation data that represents content of a first collection of one or more presentations using the computer system.” Accordingly, we determine that Petitioner has established by a preponderance of the evidence that Li teaches the presentation data limitation of claim 1.” slip op. at 19

  Patent outcomesUS 9,721,273 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,721,273
• Sony Interactive Entertainment LLC v. Intellectual Pixels LimitedSome claims unpatentable
  PTAB · Jan 11, 2022 · IPR2020-01248 · APJ Iftikhar Ahmed · IPR · Final written decision

  Claims 1–3 are unpatentable as obvious over Schmidt and Keslin; claim 4 was not shown unpatentable over the asserted grounds.

  RulingsFinal written decision

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 17. Petitioner contends that a person of ordinary skill in the art would have had “at least (1) an undergraduate degree in computer science, electrical engineering, or an equivalent subject, together with two years of post-graduate experience in computer graphics; or (2) a master’s degree in computer science, electrical engineering, or equivalent subject, together with one year of postgraduate experience in computer graphics.” Pet. 18 (citing Ex. 1002 ¶¶ 25–27). Patent Owner agrees with Petitioner but adds that “the experience in computer graphics would include experience with multimedia systems, particularly the delivery of video display information across a network.” PO Resp. 10–11 (citing Ex. 2016 ¶ 26). We determine that Petitioner’s proposed level of ordinary skill is consistent with the ’093 patent and the asserted prior art, and also agree with Patent Owner’s assertion regarding the relevant experience. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Accordingly, we determine that one of ordinary skill in the art at the time of the invention would have had at least (1) an undergraduate degree in computer science, electrical engineering, or an equivalent subject, together with two years of post-graduate experience in computer graphics; or (2) a master’s degree in computer science, electrical engineering, or equivalent subject, together with one year of postgraduate experience in computer” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “1. 3-dimensional graphics (and related terms) The parties inform us of certain terms that were construed in pending district court litigation. See Pet. 17 (citing Ex. 1013, 21); PO Resp. 12–13 (citing Ex. 1013, 12–13). We determine that it is not necessary to expressly construe any of these terms for purposes of our Decision.” slip op. at 9

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

    “unsupported in view of the plain language of claim 1 and the disclosure of the ’093 patent. Inst. Dec. 20–21. We noted that the claim recites “an application, running on a server, which generates 3-dimensional graphics accordingly.” Id. at 20. Rather than Patent Owner’s narrow reading of this limitation, requiring the server to generate 3-dimensional graphics independently from the claimed application, we determined that a more reasonable construction of this limitation is that the server in its entirety, including the application running on the server, generates the 3-dimensional graphics. Id. In other words, the phrase “which generates 3-dimensional graphics accordingly” cannot be read separately from the first two phrases of the limitation in the manner that Patent Owner proposes. Id. Patent Owner argues that our preliminary construction was improper because it “read[s] out the term ‘application’ by lumping together the ‘application’ and the ‘server,’” “effectively re-writ[ing] the limitation ‘sending user input control signals to an application, running on a server, which generates 3-dimensional graphics accordingly . . . .’ as ‘sending user input control signals to a server, which generates 3-dimensional graphics accordingly . . . .’” PO Resp. 54; see also PO Sur-reply 20. We disagree. Claim 1 plainly requires “sending user input control signals to an language, however, does not clearly distinguish between the two components for the purposes of generating the 3-dimensional graphics, and we therefore, gave the limitation its more reasonable interpretation in light of the specification, i.e., not limiting the claim to either the application or the server alone as generating the 3-dimensional graphics.7” slip op. at 20

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “statements about “removing all state and computation from the desktop” and characterization of the SLIM client was a “dumb frame buffer” client suggest that an ordinarily skilled artisan would have found implementing decompression on the SLIM client to be extremely computationally burdensome. Dr. Fuchs testifies that a person of ordinary skill in the art would not have understood “removing all state and computation from the desktop” to mean there can be no decompression on the client, but instead that Schmidt was “referring to the use of the server for application-level state and computation, allowing the user to move from one client to another without loss of application state.” Ex. 1035 ¶ 54 (citing Ex. 1004, 33). Dr. Fuchs quotes Schmidt stating that the servers maintain the true state at all times. Thus, the user is isolated from desktop failures and may move freely between terminals. In our implementation, users can simply present a smart identification card at any desktop, and the screen is returned to the exact state at which it was left. Ex. 1004, 33. Dr. Fuchs further testifies a person of ordinary skill in the art would not have understood Schmidt’s statements about removing state to mean that the client cannot perform any processing whatsoever because the client in Schmidt does perform processing, such as CSCS commands. the client for processing the SLIM commands), 33 (Figure 1 showing the client generates “[m]ouse/keyboard events & other input”), 35 (the “SLIM consoles” include a “100MHz microSPARC-IIep processor”)). We credit Dr. Fuchs’s testimony because it is consistent with our findings of Schmidt’s teachings. Aside from the CSCS command, Schmidt discloses other computational tasks that the SLIM client could handle. For example, Schmidt explains, in comparing its protocol to the X protocol, that if video is scaled to a higher resolution, the X server must perform the operation prior to sending the image to the X client, whereas the Sun Ray 1 console, i.e., Schmidt’s SLIM client, “can do it locally at substantial savings in bandwidth.” Ex. 1004, 45; see also id. at 35 (listing the hardware components of the Sun Ray 1 SLIM client). The record therefore fails to support that a person of ordinary skill in the art would have found the SLIM client to be as computationally underpowered as Patent Owner makes it out to be.” slip op. at 32

  Patent outcomesUS 8,667,093 mixed
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,667,093
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Oct 19, 2021 · IPR2020-00813 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 2, 8–12, and 18–20 are unpatentable: Okamoto anticipates some claims, and the asserted Okamoto- and Miyahara-based combinations render the claims obvious.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Both parties appear to be in general agreement regarding the level of skill, and neither party contends that any differences between their proposals would have any effect on our analysis of Petitioner’s challenges. Although we encouraged the parties (Institution Dec. 7–8) to address any material differences between the two proposals in post-institution briefing, neither party addressed the issue. See generally PO Resp.; Reply; Sur-Reply. We, therefore, adopt a level of ordinary skill that encompasses a person with a degree in mechanical or electrical engineering or a related field and the equivalent of several years of experience in designing semiconductor LED packages.” slip op. at 8

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

    “As detailed below, we determine that Patent Owner has not shown that the term “lead frame,” as recited by the challenged claims, requires that any component lead provide support to the LED chip. Instead, we maintain our construction from the Institution Decision that “lead frame” in this context means a support structure for providing an interface to a semiconductor die, where the lead frame structure, as a whole, provides the support to the semiconductor die.” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We agree that Okamoto shows the claimed lead frame, as a whole, providing support to the LED chip as required by claims 1 and 13. As shown in Okamoto’s Figure 1, reproduced above, “lead frame 8 is attached to the wiring pattern 6 drawn around an end of the glass substrate 2 with a solder material 9.” Ex. 1008 ¶ 29. According to Patent Owner, Okamoto’s transparent plate “supports the lead frame,” (PO Resp. 10) and as agreed upon by the parties, the claimed lead frame includes the transparent plate. Okamoto also discloses that the LED chip is on transparent glass substrate 2. Id. ¶ 27 (stating that LED elements “are disposed in a row on a front face of a light-transmissive glass substrate 2.”). Based on this disclosure, we find Okamoto teaches or suggests a lead frame that includes a transparent plate supporting an LED chip.” slip op. at 23

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

    “In sum, on the complete record, we find that the combination of Okamoto and Shimizu teaches each limitation of claims 1 and 11, and we find that an ordinarily skilled artisan would have had reasons, with rational underpinning, to combine Okamoto and Shimizu.” slip op. at 30

  Patent outcomesUS 9,859,464 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,859,464
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Oct 12, 2021 · IPR2020-00780 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 5–7, 9, 13, 14, 18–20, 22, and 26 are unpatentable based on anticipation by Okamoto or Miyahara and obviousness over the asserted combinations.

  RulingsFinal written decision

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

    “construction requiring at least one lead to provide structural support to the LED chip. First, Patent Owner contends that the plain meaning of the term “lead frame” requires that the leads must form “the structural frame supporting the LED chip.” Sur-Reply 4. According to Patent Owner, “[o]n its face, the meaning is clear” that “‘lead frame’ is a frame formed by leads.” Id. We do not find this conclusory statement helpful in determining whether the leads in a lead frame are required to provide structural support to the LED chip. Patent Owner does not identify any evidence, intrinsic or extrinsic, that the plain meaning of the term “lead frame” requires that any leads provide direct or indirect support to the LED chip. In fact, Patent Owner refers to several dictionary definitions of the term “lead frame,” none of which makes any reference to support. PO Resp. 5 (citing Ex. 1023, 4 (“Lead Frame. The metallic portion of a component package that is used to interconnect with semiconductor die by wire bonding and to provide output terminal leads.”); Ex. 1024, 4 (“lead frame— . . . 2. The metal part of a solid-state device package that achieves electrical connection between the die and other parts of the system of which the IC is a component. . . .); Ex. 1026, 3 (“lead frame the metallic portion of the device package that makes electrical connections from the die to other circuitry.”).” slip op. at 11

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

    “The fundamental error in Petitioner’s argument on this point, however, is that the claims at issue in this proceeding do not require “a lead frame including a transparent plate,” but instead “a lead frame having a transparent plate therein.” Petitioner must do more than show that Okamoto discloses that “the transparent plate is part of the lead frame,” as argued in the Petition. And, as we pointed out in our Institution Decision, Petitioner concedes that “Okamoto’s lead frame sits on its transparent plate, rather than the transparent plate being in the lead frame.” Institution Dec. 17 (citing Pet. 39; Ex. 1008 ¶¶ 34, 36). During the trial, Petitioner did not engage with this issue or provide any reason for us to diverge from our prior conclusion that, because “the plain language of the claims requires that the lead frame have a transparent plate ‘therein’ . . . [b]y Petitioner’s own admission . . . Okamoto does not anticipate.” Id. In other words, because Petitioner concedes that Okamoto’s transparent plate is not in its lead frame, it cannot meet the requirement of claims 1 and 14 that the lead frame have a transparent plate therein. For this reason, we maintain our prior determination that Okamoto does not disclose a lead frame having a transparent plate therein, and as a result, Petitioner has not shown by a preponderance of the evidence that claims 1 and 14 are anticipated.” slip op. at 23

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

    “Patent Owner also asserts that “Petitioner fails to explain how its proposed modification of wrapping the wiring pattern 6 around the ends of the substrate results in a lower-profile.” PO Resp. 17. According to Patent Owner, “Okamoto already provides the alleged lower-profile benefits of Shimizu, as seen by comparing figure 2 of each reference.” Id. at 18. But Dr. Dupuis supports Petitioner’s contention by stating that a person of ordinary skill in the art would know to use a “chip-type” package instead of a “lead-type” package in applications where a lower profile is needed. Ex. 1003 ¶¶ 129–134 (citing Ex. 1017, 8:31–67; Ex. 1016, Fig. 1, 33–35; Ex. 1022, Figs. 1–3, 6–8, 13, ¶¶ 2–14). Also, Okamoto states that Figure 2 is “a planar view of the light source device of” Figure 1. Ex. 1008 ¶ 43. And Figure 1 of Okamoto, reproduced above, clearly shows protruding lead frame 8. Id. at Fig. 1, ¶ 29. Figure 2 of Okamoto, however, does not show lead frame 8. See id. at Fig. 2. Thus, we do not agree with Patent Owner that Figure 2 of Okamoto shows a package with a lower profile. Instead, the record supports Petitioner’s position that the modified device created using the disclosures of Okamoto and Shimizu has a lower profile (i.e., leads wrapped around substrate 2 as opposed to protruding as shown by Okamoto Figures 1 and 8). See Pet. 42–43; Ex. 1003 ¶¶ 138–142. Patent Owner argues that “Petitioner ignores Dr. Schubert’s explanation that Shimizu was directed towards general illumination, while Okamoto is directed towards a signaling light source” so a person of ordinary skill would not combine the two references. Sur-Reply 16 (citing Ex. 1044, 93:15–96:13). Because we do not see this argument in Patent Owner’s Response, nor do we see anything in Dr. Schubert’s declaration to support such an argument, we do not agree that Petitioner improperly failed to respond to an argument. See PO Resp. 12–21; Ex. 2008 ¶¶ 112–120. Moreover, we find that both Shimizu and Okamoto disclose methods of creating white light using an LED and, therefore, the evidence supports a finding that both references are relevant to a consideration of obviousness. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) (“In order to rely on a reference as a basis for rejection of the applicant’s invention, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.”). In sum, on the complete record, we find that the combination of Okamoto and Shimizu teaches each limitation of claims 1 and 14, and we find that a skilled artisan would have had reasons, with rational underpinning, to combine Okamoto and Shimizu.” slip op. at 29

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

    “Upon further review, and in light of the arguments in Petitioner’s Reply (Reply 21–24), we conclude that our preliminary determination in the Institution Decision was in error, to the extent that we agreed with Patent Owner’s arguments that claims 13 and 26 require “all layers” of the LED to be transparent. The claims recite “a plurality of III-nitride layers, including an active region that emits light, wherein all of the layers except for the active region are transparent.” Ex. 1001, 21:46–52. The second half of this phrase, which contains the transparency requirement, recites “the layers,” meaning that it relies on an earlier recitation in the claim for antecedent basis of “layers.” This basis is found in the recitation of “a plurality of III-nitride layers.” In other words, the proper interpretation of “all of the layers” in claims 13 and 26 is that the term refers back to the III-nitride layers, not all of the layers of the LED as a whole (such as, for example, a mirror). And the parties agree that the mirror of a conventional LED is not a III-nitride layer. Tr. 18:15–18; 45:4–13. As a result, our preliminary determination that the non-transparent mirror of the APA LEDs prevented a finding of obviousness was incorrect. We agree with Petitioner that the ’916 patent admits that LEDs having transparent III-nitride layers were conventional in the art, and that these are “all of the layers except for the active region” as required in claims 13 and 26. Notably, during the trial Patent Owner did not attempt to defend against Petitioner’s ground for the same reason it raised in the Preliminary Response; instead, Patent Owner now argues that because of the mirror on conventional LEDs, these devices would not meet the claim limitation that “light is extracted effectively through all the layers.” PO Resp. 21. But this reflects a misunderstanding of Petitioner’s ground of unpatentability, which does not rely on the APA for this limitation. Petitioner’s ground is based on the argument that, while Okamoto discloses an LED without a mirror, it does not “specifically describe the layers of its blue LEDs, other than to say that it is a GaN-based LED.” Pet. 61. Petitioner turns to the APA for this missing information regarding the layers that were conventionally used in LEDs; but notably, the Petition does not rely on the APA’s mirror. Id. All Petitioner concludes from the APA is that a person of skill in the art “would reasonably expect the GaN-based LEDs of Okamoto to include multiple layers, which layers would at least include an active layer sandwiched between a p-side layer and an n-side layer.” Id. (citing Ex. 1003 ¶¶ 203– 205; Ex. 1001, 10:20–31). Patent Owner’s argument that the application of the APA’s layers to Okamoto would have brought along the mirror of the APA LED’s is therefore misguided and unpersuasive. In sum, we agree that a person of ordinary skill in the art would have looked to conventional LEDs, such as those admitted to be prior art in the ’916 patent, when determining the layers of Okamoto’s LED. And according to the ’916 patent, these conventional III-nitride layers would have been understood to be transparent to an emission wavelength. As a result, we conclude that claims 13 and 26 would have been obvious over the combined disclosures of Okamoto and Shimizu in light of the APA.” slip op. at 35

  Patent outcomesUS 10,217,916 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,217,916
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Sep 15, 2021 · IPR2020-00695 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 3, 4, 8–10, 12, 13, 15, 16, 20–22, and 24 are unpatentable, primarily as obvious over the asserted combinations including Okamoto, Shimizu, and Miyahara.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for patent owner

    “been knowledgeable regarding conventional designs and fabrication techniques pertaining to LEDs, including LED package designs, and would have had at least 2 years of experience in LED design and fabrication as well as at least a master’s degree in a relevant field (e.g., chemical engineering, materials engineering, or electrical engineering), or alternatively would have an equivalent combination of advanced education and practical experience.” Pet. 13 (citing Ex. 1003 ¶¶ 26–27). Patent Owner contends that the person of ordinary skill “would have had at least a B.S. degree in mechanical or electrical engineering or a related field, and three years of experience in designing semiconductor LED packages.” Prelim. Resp. 2; Ex. 2006 ¶ 25. Patent Owner adds that “a higher level of education or skill might make up for less experience (for example, an M.S. in any of the above fields and two years of practical experience would qualify one as a [person of ordinary skill in the art] (POSITA).” Id. (citing Ex. 2001 ¶ 67); Ex. 2006 ¶ 25. Both parties appear to be in general agreement regarding the level of skill, and neither party contends that any differences between their proposals would have any effect on our analysis of Petitioner’s challenges. Although we encouraged the parties to explain any material differences between the two proposals in post-institution briefing (see Institution Dec. 8), neither party addressed the issue. See generally PO Resp.; Reply; Sur-Reply. We, therefore, adopt a level of ordinary skill that encompasses a person with a degree in mechanical or electrical engineering or a related field and the equivalent of several years of experience in designing semiconductor LED packages.” slip op. at 7

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

    “As detailed below, we disagree with Patent Owner that the term “lead frame,” as recited in the challenged claims, requires that any component lead provide support to the LED chip. Instead, we maintain our construction from the Institution Decision that “lead frame” in this context means a support structure for providing an interface to a semiconductor die, where the lead frame structure, as a whole, provides the support to the semiconductor die.” slip op. at 10

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

    “would have understood that “white light can be created by combining the three primary colors of light” (PO Resp. 11), we disagree that a person of ordinary skill in the art would not have been motivated to use one of the three disclosed LEDs (the blue LED) with phosphor to create white light as disclosed by Shimizu. Ex. 1017, 4:50–67. We find, based on Petitioner’s evidence, that “it was common well before the priority date of the ’529 patent to use appropriate phosphors in combination with blue LEDs to create white light.” Pet. 31 (citing Ex. 1007, 246, 248; Ex. 1003 ¶¶ 113–114, 117; Ex. 1006); Ex. 1044, 100:23–103:10 (Dr. Schubert acknowledging that using Shimizu’s phosphor technique was well known and commonly used to create white light at the relevant time).” slip op. at 26

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

    “We have reviewed Petitioner’s contentions, the testimonial evidence, and the disclosure of Miyahara, and determine that the record provides substantial evidence supporting Petitioner’s assertions of obviousness of claims 1 and 13 over Miyahara. Because we agree with Petitioner that claims 1 and 13 would have been obvious over Miyahara, we do not address whether the claims are anticipated by Miyahara.” slip op. at 43

  Patent outcomesUS 9,240,529 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 9,240,529
• Satco Products, Inc. v. The Regents Of The University Of CaliforniaAll claims unpatentable
  PTAB · Sep 15, 2021 · IPR2020-00579 · APJ Christopher L Crumbley · IPR · Final written decision

  Claims 1, 3, 5, 9, 12, 13, 15, 18, 28, 29, 31, 33, 37, 40, 41, 43, 47, and 56 are unpatentable based on anticipation and obviousness grounds.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Both parties appear to be in general agreement regarding the level of skill, and neither party contends that any differences between their proposals would have any effect on our analysis of Petitioner’s challenges. Although we encouraged the parties to address any material differences between the two proposals in post-institution briefing (see Institution Dec. 8), neither party addressed the issue. See generally PO Resp.; Reply; Sur-Reply. We, therefore, adopt a level of ordinary skill that encompasses a person with a degree in mechanical or electrical engineering or a related field and the equivalent of several years of experience in designing semiconductor LED packages.” slip op. at 9

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

    “As detailed below, we disagree with Patent Owner that the term “lead frame,” as recited in the challenged claims, requires that any component lead provide support to the LED chip. Instead, we maintain our construction from the Institution Decision that “lead frame” in this context means a support structure for providing an interface to a semiconductor die, where the lead frame structure, as a whole, provides the support to the semiconductor die.” slip op. at 11

  • Expert testimonyPatent owner expert discountedDecided for petitioner

    “between Basin’s device and that of the ’789 patent.14 Because, as above, we see no evidence that the only difference between those two devices is whether or not the leads provide support to the LED chip, we do not find Dr. Schubert’s conclusion persuasive. We, therefore, agree with Petitioner that Basin does not support Patent Owner’s proposed construction. Patent Owner also relies on testimony from Dr. Schubert (PO Resp. 7 (citing Ex. 2006 ¶¶ 63–69, 75–86)) stating that “[t]he leads either directly support the LED chip (in the absence of a transparent plate) or indirectly support the LED chip through the transparent plate (in the presence of a transparent plate).” Ex. 2006 ¶ 86. However, Dr. Schubert does not cite to any evidence, intrinsic or extrinsic, supporting this statement. Id. In fact, earlier in the same section of his testimony, Dr. Schubert states that (1) “[a] lead frame in the context of LEDs is understood by those of skill in the art as a support structure for an LED chip that comprises at least two conductive leads, an anode lead and cathode lead that are structurally stable and do not require support from another component” (Ex. 2006 ¶ 63); (2) “[t]he term ‘lead frame’ is a very commonly used term in the field of LEDs” that “refers to a frame (support structure) for LEDs that includes leads (electrodes) for making electrical connections between an LED and other structures (e.g., an LED driver or power supply)” (id. ¶ 76); and (3) “[i]n the context of the 14 Dr. Schubert also refers to the devices of Shimizu and Ishizaka, which are similar to the device in Basin in that they allegedly use chip-on-board packaging instead of a lead frame. Id. at 69 (citing Ex. 1017, 8:51–54; Ex. 1016 ¶ 33). However, as with Basin, Dr. Schubert does not address the other differences between the devices of Shimizu and Ishizaka or explain why support provided by leads is the relevant factor distinguishing a lead frame package from a chip-on-board package. Id. claims at issue and in light of the specification, the ’789 Patent (and related patents) teach that the transparent plate, with the leads is involved in the support of the LED chip” (id. ¶ 84). However, all of these statements support a finding that the lead frame supports the LED chip, but they do not require that any leads support the LED chip. Dr. Schubert does not explain the logical step between the requirement of the lead frame providing support and the leads of the lead frame providing support except to state that “[i]n the context of the claims at issue and in light of the specification, the ’789 (and related patents) teach that the transparent plate, with the leads, is involved in the support of the LED chip” and “[t]herefore, in my opinion a POSITA reading the ’789 patent would understand that the lead frame recited in the claims include[s] a transparent plate, where both the transparent plate and conductive leads provide [structural] support to the LED.” Id. ¶¶ 84–85. Because this conclusion is not supported by intrinsic or extrinsic evidence, we are not persuaded that Dr. Schubert’s testimony provides significant support to Patent Owner’s proposed construction.” slip op. at 15

  • BurdenFwd all claims unpatentableUnpatentable

    “preponderance of the evidence that claims 1, 3, 5, 9, 12, 13, 15, 18, 28, 29, 31, 33, 37, 40, 41, 43, 47, and 56 of the ‘789 patent are unpatentable. Claims Claims Not 35 Shown Shown Claim(s) U.S.C. § Reference(s) Unpatentable Unpatentable 1, 9, 29, 37 102(b) Nishida 1, 9, 29, 37” slip op. at 43

  Patent outcomesUS 7,781,789 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 7,781,789
• Apple Inc. v. Uniloc 2017 LLCSome claims unpatentable
  PTAB · Jan 15, 2021 · IPR2019-01337 · APJ Jennifer S Bisk · IPR · Final written decision

  Claims 1, 2, 4, 5, 7–10, 13–15, and 17 are unpatentable as obvious; claims 3, 6, 11, 12, and 16 were not shown unpatentable.

  RulingsFinal written decision

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

    “this case, we interpret claims in the same manner used in a civil action under 35 U.S.C. § 282(b) “including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Only terms that are in controversy need to be construed, and then only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7

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

    “We do not agree with Patent Owner that the quoted language of the ’999 patent requires a construction of the term “second link” that excludes any Bluetooth connection that reuses authentication information. Other than the one vaguely worded sentence in the ’999 patent, Patent Owner does not point to any supporting evidence for this interpretation. PO Resp. 25–26; Ex. 1001, 1:47–53). To the contrary, the evidence supports a finding that when two devices reestablish communication after being disconnected, the subsequent Bluetooth link is considered a different link. See Reply 18 (citing Ex. 1004, 151 (“Consequently, once a semi-permanent link key is defined, it may be used in the authentication of several subsequent connections between the Bluetooth units sharing it.”). This understanding is consistent with the ’999 patent, which refers to “initial Bluetooth link[s]” and “subsequent Bluetooth link[s]” (Ex. 1001, 1:49–50, 1:58, 4:40), and discloses that multiple links can be made between two Bluetooth compatible devices (id. at 1:17–20), without any clarification that such links are considered the same if authentication information is reused. Accordingly, we find that claim 13 requires two different links, one of which occurs later in time than the other, but that those links are not required to be of different types. And we do not agree with Patent Owner’s narrow reading, based on one sentence in the ’999 patent, that Bluetooth links that reuse authentication codes are considered the same link.” slip op. at 11

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

    “We find, based on the record, that a person of ordinary skill in the art would have understood using Bluetooth’s authentication mechanism in place of Varadharajan’s described “challenge/response routine,” to be a feasible option. This is based on both the intrinsic evidence and extrinsic evidence, which support such a finding, and a lack of evidence in the record to the contrary.7 See Ex. 1003, 4:62–67 (“Each time the portable computer 50 is in local or direct communication with the desk top computer 48 . . . the identity of the portable computer 50 is authenticated by the desk top computer 48 by a suitable test such as a challenge/response routine as outlined below.”); Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶ 96–123; Ex. 1013 ¶¶ 14–22. We are not persuaded by Patent Owner’s argument that BT Core teaches away from a very long, frequently changed, security key. See PO Resp. 19–20. Nothing in Varadharajan or BT Core may be said to discourage a person of ordinary skill from using the Bluetooth authentication mechanism for the authentication over Varadharajan’s direct link. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). To the contrary, the facts suggest that a person of ordinary skill would have understood Varadharajan to encourage the use of any known, robust, authentication scheme (see Ex. 1003, 4:62–67), and the record shows that a person of ordinary skill would have understood Bluetooth’s authentication mechanism to be such a scheme (see Ex. 1001, 1:11–59, 5:38–41; Ex. 1004, 151–152, 157; Ex. 1006 ¶¶ 100–109; Ex. 1013 ¶¶ 17– 21). Finally, we find Petitioner has sufficiently shown that a person of ordinary skill in the art would have had reason to attempt to use Bluetooth’s authentication mechanism over Varadharajan’s direct link because it was a well-known method of implementing robust short-range communication and doing so would have required only the simple substitution of Bluetooth for infrared, in a similar manner, to achieve predictable results. Pet. 32–36; Reply 8–14; Ex. 1006 ¶¶ 96–123; see KSR v. Teleflex, 550 U.S. 398, 417 (2007).” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “would have understood using Bluetooth’s authentication mechanism in place of Varadharajan’s described “challenge/response routine,” to be a feasible option. This is based on both the intrinsic evidence and extrinsic evidence, which support such a finding, and a lack of evidence in the record to the contrary.7 See Ex. 1003, 4:62–67 (“Each time the portable computer 50 is in local or direct communication with the desk top computer 48 . . . the identity of the portable computer 50 is authenticated by the desk top computer 48 by a suitable test such as a challenge/response routine as outlined below.”); Ex. 1004, 99, 108, 149–154, 169–178, 1043, 1045–1047, 1053; Ex. 1006 ¶¶ 96–123; Ex. 1013 ¶¶ 14–22. We are not persuaded by Patent Owner’s argument that BT Core teaches away from a very long, frequently changed, security key. See PO Resp. 19–20. Nothing in Varadharajan or BT Core may be said to discourage a person of ordinary skill from using the Bluetooth authentication mechanism for the authentication over Varadharajan’s direct link. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). To the contrary, the facts suggest that a person of ordinary skill would have understood Varadharajan to encourage the use of any known, robust, authentication scheme (see Ex. 1003, 4:62–67), and the record shows that a person of ordinary skill would have understood Bluetooth’s authentication mechanism to be such a scheme (see Ex. 1001, 1:11–59, 5:38–41; Ex. 1004, 151–152, 157; Ex. 1006 ¶¶ 100–109; Ex. 1013 ¶¶ 17– 21).” slip op. at 26

  Patent outcomesUS 7,136,999 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,136,999
• Unified Patents Inc. v. Synchview Technologies, LLCRehearing denied
  PTAB · May 28, 2020 · IPR2019-00470 · APJ Monica S Ullagaddi · IPR · Rehearing

  The Board denied rehearing and maintained denial of institution because the record lacked evidence to determine the scope of “DVR” and whether the prior art met that limitation.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5

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

    “In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”). We are unable to conclude, therefore, that there is a reasonable likelihood that Petitioner would prevail in demonstrating the unpatentability of any of the challenged claims.” slip op. at 5

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

    “In summary, the record does not include sufficient information for a determination of the claim scope of “DVR.” It is Petitioner’s burden to show, in the Petition, “[h]ow the challenged claim is to be construed” and “[h]ow the construed claim is unpatentable.” 37 C.F.R. § 42.104(b)(3)–(4). Without such an explanation of Petitioner’s position and supporting evidence, we cannot conduct the necessary factual inquiry for determining whether Petitioner has shown a reasonable likelihood in demonstrating that the prior art meets this limitation. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (reversing the Board’s decision of obviousness because it relied on “what at best are speculative assumptions as to the meaning of the claims”).” slip op. at 5

  Claim construction
  Patents in suitUS 6,788,882
• Samsung Electronics America, Inc. v. Uniloc 2017 LLCAll claims unpatentable
  PTAB · Mar 4, 2020 · IPR2018-01664 · APJ Garth D Baer · IPR · Final written decision

  The Board cancelled claim 22 and denied substitute claim 23 because Petitioner proved it obvious over Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park.

  RulingsFinal written decision

  • 112 supportDecided for patent owner

    “Petitioner contends in response only that “within an operational range” lacks written description support in the original specification. See Mot. Amend Opp. 1–5. We nonetheless agree with Patent Owner that the specification includes written description support for the amended claim language. As Patent Owner notes, the original application discloses “glitch correcting logic 235 further may be used to discard non-human motions” that are nevertheless accurately detectable by the sensor. EX1002, pp. 12-13, ¶ 21. This example is further explained in the context 9 The amended claim also makes several changes addressing clerical issues with original claim 22. See Mot. to Amend, Appendix A (changing “generation motion data” to “generate motion data,” changing “a dominant axis” to “the dominant axis,” and replacing a period in the middle of the claim with “; and.”). of “a device [that] is not being used but is in a moving vehicle.” Id. While the vehicle’s motion is measurable by the sensor, it is considered a glitch that “can be discarded as not fitting the signature of human motion.” Id. Mot. Amend 5; see also Ex. 1001, 3:23–27. In short, we agree with Patent Owner that non-human motions due to a vehicle’s motion would be within the device’s operational range. Petitioner is correct that the specification also includes examples of motion outside the device’s operational range. See, e.g., Ex. 1001, 5:19–23 (describing “a glitch correcting logic which removes abnormal data from the motion data”); id at 6:56–65 (explaining “an excessive number of glitches may indicate a problem with the accelerometer”); id. at 3:33–37 (noting “glitches generally are indicative that the accelerometer or sensor is malfunctioning”). Those examples, however, do not undermine the specification’s additional support for a glitch that is within the device’s operational range. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1331 (Fed. Cir. 2004) (“[P]atentees [are] not required to include within each of their claims all of [the] advantages or features described as significant or important in the written description.”). 3. Responding to a Ground of Unpatentability” slip op. at 11

  • PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part

    “D. MOTION TO AMEND SUMMARY Because the Motion to Amend is non-contingent, we grant Patent Owner’s motion as to cancellation of issued claim 22. After reviewing the entire record, we determine Patent Owner has satisfied the predicate requirements for considering a motion to amend as to substitute claim 23. However, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over the combination of Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park. We therefore deny Patent Owner’s Motion to Amend as to proposed substitute claim 23. Because Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park, we do not need to determine whether substitute claim 23 would have been obvious over Petitioner’s alternate asserted grounds involving McMahan in place of Hyatt and Marvit in place of Fabio. In summary: Motion to Amend Outcome Claim(s) Original Claims Canceled by the Amendment 22 Substitute Claims Proposed in the Amendment 23 Substitute Claims: Motion to Amend Granted Substitute Claims: Motion to Amend Denied 23 Substitute Claims: Not Reached IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that Patent Owner’s Motion to Amend is denied as to proposed substitute claim 23; FURTHER ORDERED that claim 22 of the U.S. Patent No. 8,872,646 B2 is cancelled; and” slip op. at 28

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

    “Reason to Combine Pasolini and Goldman Petitioner further asserts it would have been obvious to one skilled in the art to modify Pasolini’s device to include Goldman’s enhanced accelerometer techniques as a known method “to distinguish static acceleration (due to gravity) from dynamic acceleration (due to movement) when calculating acceleration.” Id. at 20–21 (citing Ex. 1010 ¶¶ 68–72). Petitioner explains, with relevant support from its expert, Dr. Essa, that “when analyzing acceleration signals, it is beneficial to factor in calibration, sampling rates, and tilt,” as Goldman teaches, “because the results are more accurate.” Id. at 21 (citing Ex. 1010 ¶ 71). Thus, Petitioner explains, combining Pasolini’s device with Goldman’s accelerometer techniques amounts to no more than “using the known techniques of Goldman to improve the similar device of Pasolini in the same way.” Id. at 22. Patent Owner does not challenge Petitioner’s assertions in this regard. We conclude Petitioner has articulated sufficient reasoning with rational underpinning to support the legal conclusion that its proffered combination of Pasolini and Goldman would have been obvious to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).” slip op. at 18

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

    “In sum, for the foregoing reasons, we determine that Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over the combination of Pasolini, Goldman, Hyatt, Mizell, Park, and Fabio. D. MOTION TO AMEND SUMMARY Because the Motion to Amend is non-contingent, we grant Patent Owner’s motion as to cancellation of issued claim 22. After reviewing the entire record, we determine Patent Owner has satisfied the predicate requirements for considering a motion to amend as to substitute claim 23. However, we determine Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over the combination of Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park. We therefore deny Patent Owner’s Motion to Amend as to proposed substitute claim 23. Because Petitioner has demonstrated by a preponderance of the evidence that the subject matter of substitute claim 23 would have been obvious over Pasolini, Goldman, Hyatt, Fabio, Mizell, and Park, we do not need to determine whether substitute claim 23 would have been obvious over Petitioner’s alternate asserted grounds involving McMahan in place of Hyatt and Marvit in place of Fabio.” slip op. at 28

  Patent outcomesUS 8,872,646 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 8,872,646

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.